Embotelladora Aga Del Pacifico, S.A. de C.V.v.Jose Alfonso Serrano Gonzalez

Trademark Trial and Appeal BoardOct 18, 2012

No. 91202371 (T.T.A.B. Oct. 18, 2012)

Goodman Mailed: October 18, 2012 Opposition No. 91202371 Embotelladora Aga Del Pacifico, S.A. de C.V. v. Jose Alfonso Serrano Gonzalez Before Zervas1, Wellington and Kuczma, Administrative Trademark Judges. By the Board: This case now comes up on opposer’s motion, filed June 22, 2012, for reconsideration of the Board’s order of May 24, 2012, denying opposer’s motion for summary judgment on the grounds of res judicata, and opposer’s “alternative motion for summary adjudication of issues already decided and for summary judgment.” Applicant has opposed the motions. Reconsideration We turn first to the motion for reconsideration. A motion for reconsideration under Trademark Rule 2.127(b) provides an opportunity for a party to point out any error the Board may have made in considering the matter 1 Judge Zervas has been substituted for Judge Grendel who was on the panel for the Board’s order issued May 24, 2012. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91202371 2 initially. It is not for purposes of introducing additional evidence or argument nor should it be a reargument of the points presented in the original motion or response to the motion. TBMP Section 518 (3d ed. rev. 2012). Opposer seeks reconsideration of its motion for summary judgment based on claim preclusion arguing that the Board should have granted its motion on claim preclusion because the facts in the present case are more aligned to the facts as set forth in the Miller Brewing Company v. Coy International Corporation, 230 USPQ 675 (TTAB 1986) than to the facts as set forth in Institut National Des Appellations d’ Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998). In response, applicant argues that opposer provides mere reargument of the earlier motion and that opposer attempts “to distinguish certain cases in the Board’s ruling but fails to address the evidence considered by the Board.” We find no error in our decision denying the motion for summary judgment based on claim preclusion. Accordingly, reconsideration is denied. “Summary Adjudication and Summary Judgment We now turn to opposer’s “alternative motion for summary adjudication of issues already decided and for summary judgment” on the priority and likelihood of confusion grounds. Opposition No. 91202371 3 Opposer seeks a finding that issue preclusion (partial summary judgment) applies with regard to the following likelihood of confusion issues: “1) that CABALLITOS is the dominant portion of the mark [sic]; 2) the two marks are substantially similar in appearance, sound, meaning and commercial impression” and that “‘purchasers of the parties’ goods are not likely to exercise more than ordinary care in their purchasing decisions.’” In order for issue preclusion to apply, the following requirements must be met: 1) the issue to be determined must be identical to the issue involved in the prior litigation; 2) the issue must have been raised, litigated and actually adjudged in the prior action; 3) the determination of the issue must have been necessary and essential to the resulting judgment; and 4) the party precluded must have been fully represented in the prior action. Mother's Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 397 (Fed. Cir. 1983). We find issue preclusion inapplicable with regard to the similarities or dissimilarities of the parties’ marks in their entireties as to appearance, sound, connotation, and commercial impression (du Pont factor no. 12) and with regard to whether CABALLITOS is the dominant portion of the parties’ marks. In considering the priority and likelihood Opposition No. 91202371 4 of confusion ground in the earlier Board proceeding (Opposition No. 91175952) the Board considered the similarities or dissimilarities of opposer’s pleaded Registrations Nos. 1594478 and 3320565 for the following marks: with applicant’s standard character mark CABALLITO CERRERO. The priority and likelihood of confusion claim in the current proceeding, on the other hand, requires the Board to consider the similarities and dissimilarities of opposer’s pleaded Registration Nos. 1594478, 3320565 and 3896866 (standard character mark CABALLITOS) with applicant’s mark. We find that in view of the differences between applicant’s standard character CABALLITO CERRERO mark and the involved mark, which includes stylized lettering and design elements, as well as the pleading of an additional registration, CABALLITOS in standard character 2 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Opposition No. 91202371 5 form, the issues to be determined in this opposition proceeding are not identical to the issues determined in the prior Board opposition proceeding. Therefore, issue preclusion is not available with regard to the similarity or dissimilarity of the parties’ marks, du Pont factor no. 1, and whether CABALLITOS is the dominant portion of the parties’ marks. We do find, however, that issue preclusion is available with respect to du Pont factor no. 4, the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful sophisticated purchasing, namely that “purchasers of the parties’ goods are not likely to exercise more than ordinary care in their purchasing decisions.” Just as the conditions of sale was an issue in the prior opposition proceeding, it is also an issue in the present opposition proceeding. We find that the issue of conditions of sale is an identical issue in both opposition proceedings; that applicant was fully represented in the prior opposition proceeding; and that the issue of conditions of sale was raised, litigated and adjudged in the prior action and necessary and essential to the resulting judgment. Accordingly opposer’s motion for partial summary judgment on the basis of issue preclusion is granted in part with respect to du Pont factor no. 4 and denied in part with Opposition No. 91202371 6 respect to du Pont factor no. 1 and whether CABALLITOS is the dominant portion of the parties’ marks. We now turn to opposer’s motion for summary judgment on the priority and likelihood of confusion grounds. A party is entitled to summary judgment when it has demonstrated that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for summary judgment, the evidentiary record and all reasonable inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). Opposer argues that the Board has already found issue preclusion with regard to the similarity of the parties’ goods, (du Pont factor no. 2) and that if the Board finds issue preclusion as to the dominant portion of the parties’ marks, the similarity of the parties’ marks with respect to appearance, sound, meaning and commercial impression, and that purchasers do not exercise more than ordinary care in purchasing the parties’ goods, then there is “no real triable issue of fact to litigate” and summary judgment should be granted in its favor. Inasmuch as we found no issue preclusion with respect to whether CABALLITOS is the dominant portion of the Opposition No. 91202371 7 parties’ marks, and whether the parties’ marks are substantially similar in appearance, sound, connotation and commercial impression, we find that genuine disputes of material fact remain at least with regard to the similarities or dissimilarities of the parties’ marks.3 Accordingly, opposer’s motion for summary judgment is denied on the priority and likelihood of confusion grounds. Proceedings are resumed. Dates are reset as follows: Expert Disclosures Due 1/10/2013 Discovery Closes 2/9/2013 Plaintiff's Pretrial Disclosures Due 3/26/2013 Plaintiff's 30-day Trial Period Ends 5/10/2013 Defendant's Pretrial Disclosures Due 5/25/2013 Defendant's 30-day Trial Period Ends 7/9/2013 Plaintiff's Rebuttal Disclosures Due 7/24/2013 Plaintiff's 15-day Rebuttal Period Ends 8/23/2013 In each instance, a copy of the transcript of testimony, together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.l25. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.l29. 3 The fact that we have identified and discussed a certain genuine dispute of material fact as a sufficient basis for denying opposer’s motion for summary judgment should not be construed as a finding that this is necessarily the only issue which remains for trial.