Louis E. Kempv.Trident Seafoods Corp. Trident Seafoods Corp. v. Louis E. Kemp

Trademark Trial and Appeal Board

Sep 19, 2011

No. 91159912 (T.T.A.B. Sep. 19, 2011)

THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.

DUNN
Mailed: September 19, 2011

Opposition No. 91159912
Opposition No. 91162015
Cancellation No. 92042289
Louis E. Kemp
v.
Trident Seafoods Corporation1
Opposition No. 91167653
Opposition No. 91167827
Opposition No. 91167846
Opposition No. 91167857
Trident Seafoods Corporation
v.
Superior Seafoods, LLC2

1 Throughout this order, we will use “Trident” as a shorthand
reference to Trident Seafoods Corporation and its various
predecessors. As more specifically set forth in Assignment
Branch records, after an initial transfer in 1989 of ownership of
the mark LOUIS KEMP and variations to Oscar Mayer Foods
Corporation, which filed the applications underlying the subject
registrations, the marks were assigned first to Tyson Foods,
Inc., then Bumble Bee Seafoods, Inc. (which filed the opposed
applications), ConAgra Foods Packaged Foods Company, Inc., and
Trident Seafoods Corporation.
2 Louis E. Kemp, an individual, and Superior Seafoods, LLC, a
California company of which Louis Kemp is president, are
represented by the same counsel and stipulated to consolidation
of these proceedings involving rights to marks including the name
LOUIS KEMP. On September 5, 2006, the Board approved the
stipulation and consolidated all proceedings listed at the top of
this order.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91159912 (parent)
2
Before Seeherman, Taylor, and Lykos, Administrative
Trademark Judges:

By the Board:

This consolidated case comes up on Trident Seafood
Corporation’s (hereafter, Trident) September 1, 2006 motion
for summary judgment, filed in the three cases in which
Trident is defendant, namely Opposition Nos. 91159912 and
91162015 and Cancellation No. 92042289. The motion is
brought pursuant to the doctrine of claim preclusion. After
a lengthy suspension period, the motion for summary judgment
is fully briefed.3

INVOLVED REGISTRATIONS AND APPLICATIONS
Trident owns the four registrations and two
applications shown below, all of which include the
statement, “The name LOUIS KEMP identifies a living
individual whose consent is of record.” Kemp filed a single
petition to cancel against Trident’s four registrations.
Trident’s registration
or application

Mark Goods

Reg. No. 1859815
issued October 25, 1994
(Can. No. 92042289)

LOUIS KEMP
surimi seafood, processed
fish or imitation seafood

3 After Trident moved for summary judgment on the ground that
the prior district court judgment should be given preclusive
effect, the Board learned that Kemp had filed a Fed. R. Civ. P.
60(d) motion for relief from the judgment with the district
court. On November 23, 2010, having been notified that both the
district and appellate courts had issued their final orders, the
Board resumed proceedings and ordered supplementary briefing.
Opposition No. 91159912 (parent)
3

Reg. No. 1859816
issued October 25, 1994,
(Can. No. 92042289)

surimi seafood, processed
fish or imitation seafood
Reg. No. 1859817
issued October 25, 1994
(Can. No. 92042289)

surimi seafood, processed
fish or imitation seafood
Reg. No. 1879931
issued February 21, 1995
(Can. No. 92042289)

surimi seafood, processed
fish or imitation seafood
App. Serial No. 76454734
filed October 2, 2002
(Opp. No. 91159912)

LOUIS KEMP
SEAFOOD CO.
frozen, prepared and
refrigerated meals and
entrees consisting primarily
of seafood or imitation
seafood; shellfish; seafood-
based dips; and seafood-
based cocktails

sauces and marinades

App. Serial No. 76454609
filed October 2, 2002
(Opp. No. 91162015)

LOUIS KEMP
frozen, prepared and
refrigerated meals and
entrees consisting primarily
of seafood or imitation
seafood; shellfish; seafood-
based dips; and seafood-
based cocktails

sauces and marinades

The papers filed by the parties in support of and
opposition to the motion for summary judgment show that
there is no genuine dispute as to the following history:

COURT PROCEEDINGS
A. First district court action (Civ. No. 96-173)
Opposition No. 91159912 (parent)
4
On May 28, 1996, Louis E. Kemp (hereafter, Kemp) filed
a complaint against Trident in Minnesota state court.4
Kemp’s complaint alleged that he sold his surimi seafood
business, including the right to use and to register his
name, to Trident’s predecessor Oscar Mayer Foods
Corporation, and that under the sales agreement the right
was limited and not-assignable, and thus was abandoned when
Oscar Mayer Foods Corporation sold the business to Trident’s
predecessor Tyson Foods, Inc., so that Trident’s continued
use of LOUIS KEMP was “without the permission, authority or
consent of Plaintiff Louis E. Kemp.” The complaint sought a
declaratory judgment determining Kemp’s right to use the
LOUIS KEMP marks because Trident objected to Kemp’s use of
the LOUIS KEMP marks for a line of wild rice food products.
The complaint also alleged tortious interference with
contract, and unfair competition based on Trident’s attempts
to block Kemp’s use. Trident removed the action to the
United States District Court for the District of Minnesota.
Louis Kemp, Superior Seafoods, Inc. and Quality Finer Foods,
Inc. v. Tyson Foods, Inc. and Bumble Bee Seafoods, Inc.,
Civ. No. 96-173 (USDC-Minn).
Trident’s answer denied the salient allegations of the
complaint, and asserted counterclaims which sought a

4 Kemp was joined as plaintiff by two business entities of
which he is president: Superior Seafoods, Inc., predecessor to
Superior, and Quality Finer Foods, Inc.
Opposition No. 91159912 (parent)
5
declaratory judgment that Trident “is the owner of all
right, title, and interest in and to the trademarks LOUIS
KEMP and LOUIS KEMP SEAFOOD CO. for use on and in connection
with food and related products” and that its registrations
“are valid, subsisting and enforceable,” and which alleged
trademark infringement by Kemp of Trident’s federally
registered LOUIS KEMP marks.
On March 31, 2001, the court addressed the declaratory
judgment claim concerning the parties’ contractual rights to
the LOUIS KEMP marks, and denied cross-motions for summary
judgment. The court found that under the contracts between
the parties Trident “acquired only a limited right to use
and register LOUIS KEMP and LOUIS KEMP SEAFOOD COMPANY in
connection with surimi-based seafood and related products.”
The parties then entered into a stipulation and consent
judgment which was approved by the District Court judge on
May 21, 2001. Inasmuch as this decision is the basis for
the defense of claim preclusion, its provisions are
summarized and/or set forth below.
After noting the court’s jurisdiction (¶1), clarifying
defendant’s entity (¶2), and describing the case as
involving trademark infringement and unfair competition as
more particularly set forth in the pleadings (¶3), the court
noted that the parties were involved in a number of related
litigations in federal, state, and bankruptcy courts (¶4),
Opposition No. 91159912 (parent)
6
that the instant proceeding had been suspended pending the
resolution of the several litigations (¶5), and that the
litigations were resolved by means of a demurrer and grant
of summary judgment in favor of Trident, coupled with a
settlement agreement signed by the parties to those
litigations and the parties to the present litigation, and
approved by the bankruptcy court (¶6). The court then held:
7. Pursuant to the doctrine of res judicata, the
Court finds that [Trident] owns all right, title,
and interest in and to the LOUIS KEMP Marks, and
[Trident] owns U.S. Trademark Registration Nos.
1,859,815 and 1,859,816 (for the mark LOUIS KEMP)
and U.S. Trademark Registration Nos. 1,859,817 and
1,879,931 (for the mark LOUIS KEMP SEAFOOD CO.).
Accordingly, the Court hereby grants judgment to
[Trident] on its claim for declaratory judgment
(Am. Ans., Aff. Def. & Ctrcls., Ctrcl. 1 ¶¶ 32-
36).

8. [Trident’s] LOUIS KEMP Marks are valid,
enforceable, and in full force and effect.

9. Based on the findings in paragraphs 7 and 8
above, the Court hereby dismisses with prejudice,
pursuant to the doctrine of res judicata, all
claims advanced by Kemp against [Trident] related
to ownership of the Marks: (1) declaratory
judgment (Compl. ¶¶VI-IX); (2) unfair competition
(Compl. ¶XIII); (3) cancellation of federal
registrations (Reply to Ctrcls. (“Additional
Claims”) ¶¶38-44); ((4) trademark dilution (Reply
to Ctrcls. (“Additional Claims”) ¶45); (5)
deceptive trade practices (Reply to Ctrcls.
(“Additional Claims”) ¶ 46); and (6) unfair
competition (Reply to Ctrcls. (“Additional
Claims”) ¶47).

10. On March 31, 2001, the Court granted
[Trident’s] motion for summary adjudication of
plaintiffs’ claims for tortious interference with
contract and unfair competition and thereby
dismissed with prejudice Counts II and III of the
Complaint (Compl. ¶X-XIII).
Opposition No. 91159912 (parent)
7

11. Accordingly, the only issues remaining in the
present litigation are whether the use by Kemp of
the trademark LOUIS KEMP or any formative of this
mark in connection with rice products, including
without limitation “seasoned wild rice, chicken
wild rice soup, and wild rice with stir fried
vegetable” as well as “southwestern white and wild
rice, cooked and seasoned white and wild rice and
wild and white rice stir fry” (all as identified
by Kemp in response to [Trident’s] Interrogatory
no. 1) infringes and/or dilute [Trident’s] rights
in the LOUIS KEMP marks.

12. The Court shall retain jurisdiction over this
matter and the parties for the purpose of
enforcing this Consent Judgment.

13. The parties each waive their right to appeal
from this Consent Judgment.

On September 30, 2002, following trial, the court
entered judgment for Kemp on the remaining issues, finding
no infringement or dilution.
Thereafter, Kemp, pursuant to the federal provision for
relief based on a declaratory judgment, sought to enjoin use
by Trident of the mark LOUIS KEMP on smoked salmon because
it was not a surimi-based product. The court held it had
jurisdiction because it had expressly retained jurisdiction
over the settlement agreement between the parties, and thus
had ancillary jurisdiction to enforce the agreement. The
court noted that Kemp confirmed at the hearing “that he is
essentially asking the Court to clarify the effect of the
Consent Judgment in light of the Summary Judgment order.”
Opposition No. 91159912 (parent)
8
On March 30, 2004, the district court denied Kemp’s
requested injunction.5 The court held that the summary
judgment order was superseded by the consent judgment, which
referred to related proceedings and an underlying settlement
agreement, which in turn was based in part on Kemp’s
bankruptcy proceeding. The court noted that on behalf of
Kemp’s estate, the bankruptcy trustee sold to Trident “all …
right, title and interest in claims … relating to past and
future use of the ‘Louis Kemp’ name by [Trident], as well as
any right, title and interest the Kemp estate had relating
to the use and registration of the trademarks ‘Louis Kemp’
and ‘Louis Kemp Seafood Company.’” The court concluded that
the consent judgment placed no restrictions on Trident’s
registration, ownership, or use of the LOUIS KEMP and LOUIS
KEMP SEAFOOD CO. marks; could not be read to limit the scope
of the consent judgment to surimi-based products; and that,
while Kemp may be entitled to use his name, this “does not
also grant him the right to prevent or otherwise police
[Trident’s] use of its trademarks.”
On February 23, 2005, the United States Court of
Appeals for the Eighth Circuit reversed the district court’s
2002 order, and found Kemp’s use of LOUIS KEMP in connection

5 The court’s decision was issued by the same judge who had
decided the summary judgment motions, approved the consent
judgment, and issued the final order on the infringement claim.
Opposition No. 91159912 (parent)
9
with wild rice food products infringed Trident’s LOUIS KEMP
marks.

B. Second district court action (06:-cv-02443)
In 2006, Kemp and his companies Superior and Quality
Finer Foods, Inc. brought another action against Trident in
the United States District Court for the District of
Minnesota (06:-cv-02443). Kemp sought to set aside the May
22, 2001 consent judgment for fraud on the court and
mistake. On March 31, 2009, the court denied Kemp’s motion
for summary judgment and granted Trident’s motion for
summary judgment, finding “nothing that occurred here
corrupted the Court’s decision-making”; that the evidence of
21 months of negotiation which preceded execution of the
consent judgment, including discussion of now-disputed
provisions, precludes a finding that the consent judgment
was entered by mistake; and that Kemp was not without fault
and thus was not entitled to equitable relief.
On September 3, 2010, the United States Court of
Appeals for the Eighth Circuit affirmed the district court
decision. The appellate court found that while Kemp had
desired language in the consent agreement limiting the
rights of Trident in the LOUIS KEMP marks, the consent
agreement did not include the desired language; that there
was no allegation that Kemp or his attorney was deceived
Opposition No. 91159912 (parent)
10
regarding the contents of the agreement; that Kemp’s counsel
advised him that the desired language was not present but
recommended accepting the consent agreement; and that Kemp’s
attorney signed the agreement and delivered it to the court,
and the court entered the consent judgment based on the
consent agreement. The appellate court also found that Kemp
did not challenge the consent judgment when it issued in
2001, nor when the judge specified that the rights of
Trident’s predecessor in the LOUIS KEMP marks were not
limited to surimi-related products in 2004, nor during the
infringement trial or appeal which ended in 2005. The
appellate court agreed with the district court that the
parties’ 2001 consent agreement resolved the previously
undecided declaratory judgment issues concerning the
parties’ relative contractual rights in the LOUIS KEMP
marks.

PROCEEDINGS BEFORE THE BOARD
On July 10, 2003, Kemp filed Cancellation No. 92042289;
on March 22, 2004, Kemp filed Opposition No. 91159912; and
on September 2, 2004, Kemp filed Opposition No. 91162015.
Each pleading, featuring largely identical allegations,
essentially makes the same argument made by Kemp to the
district court in seeking a preliminary injunction. Each
pleading alleges that the earlier order by the district
Opposition No. 91159912 (parent)
11
court denying summary judgment recognized limits to
Trident’s rights which Trident exceeded by filing the
applications which resulted in the subject registration and
opposed applications.
More specifically, the petition to cancel and the two
notices of opposition allege that Kemp was the first user of
KEMP marks for fish and seafood products; that he sold his
surimi business to Trident, including all trademarks used in
connection with the business; that the sales agreement was
amended to allow Trident to use and register LOUIS KEMP
marks; that the written agreements between Kemp and Trident
transferring rights to use the KEMP and LOUIS KEMP marks did
not convey all rights to use and register LOUIS KEMP marks
but were limited to surimi-based seafood products and such
other seafood and fish accessory products within the natural
zone of product line expansion; that Kemp “never signed a
consent or agreed to the use or registration by [Trident] of
the LOUIS KEMP marks for any products beyond those
specifically listed in the Amendment”; that in the district
court action between the parties, the court ruled in
connection with a summary judgment motion that Trident
acquired only a limited right to use and register the LOUIS
KEMP marks; that Trident has taken action to “expand use of
the LOUIS KEMP marks to other products outside the scope of
the consent given by [Kemp]”; that the four registrations
Opposition No. 91159912 (parent)
12
and the two opposed applications expand the scope of the
LOUIS KEMP marks outside the consent judgment; and that, at
the time the applications were filed, Trident “was fully
aware” of the district court order limiting its use to
“surimi based seafood and related products.” 6
Trident’s answers deny the salient allegations of the
pleadings and assert the affirmative defense of claim
preclusion, contending that the contract issues between the
parties were the subject of a district court consent
judgment; that the consent judgment held that Trident is
owner of the LOUIS KEMP marks; that Kemp’s consent to
Trident’s use and registration of the LOUIS KEMP marks is
implicit in the transfer of ownership; and that Kemp is
barred by the prior judgment from raising the issue of
Trident’s ownership of the LOUIS KEMP marks or alleging a
lack of consent.

MOTION FOR SUMMARY JUDGMENT

6 While neither the petition to cancel nor the notices of
opposition specify a statutory ground, we construe the notices of
opposition as bringing a claim under Trademark Act 2(c) that
Trident did not obtain the necessary consent from the living
individual LOUIS KEMP for registration of his name, and fraud
based on the statement made in the application that the consent
was of record. As for the petition to cancel, since the subject
registrations are more than five years old, the Section 2(c)
ground is unavailable, and we construe the petition to cancel as
bringing only the fraud claim, which can be brought against a
registration at any time.

Opposition No. 91159912 (parent)
13
Summary judgment is appropriate where there are no
genuine disputes of material fact, thus allowing the case to
be resolved as a matter of law. Fed. R. Civ. P. 56(a). The
party seeking summary judgment bears the burden of
demonstrating the absence of any genuine dispute as to any
material fact, and that it is entitled to a judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986). All doubts as to whether any particular
factual issues are genuinely in dispute must be resolved in
the light most favorable to the non-moving party. See Olde
Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d
1542 (Fed. Cir. 1992).
Under the doctrine of claim preclusion, the entry of a
final judgment “on the merits” of a claim (i.e., cause of
action) in a proceeding serves to preclude the relitigation
of the same claim in a subsequent proceeding between the
parties or their privies, even in those cases where the
prior judgment was the result of a default or consent. See
Chromalloy American Corp. v. Kenneth Gordon, Ltd., 736 F.2d
694, 222 USPQ 187, 189 (Fed. Cir. 1984); John W. Carson
Foundation v. Toilets.com Inc., 94 USPQ2d 1942, 1946 (TTAB
2010). A second suit is barred by claim preclusion if (1)
the parties (or their privies) are identical; (2) there has
been an earlier final judgment on the merits of a claim; and
(3) the second claim is based on the same set of
Opposition No. 91159912 (parent)
14
transactional facts as the first. See Jet, Inc. v. Sewage
American Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed.
Cir. 2000).
Here, there is no dispute that the parties are in
privity. Kemp was a party bound by the May 21, 2001 consent
agreement, and the parties’ July 5, 2006 stipulation for
substitution of defendant specified that Trident is the
successor to ConAgra, Tyson Foods, Inc. and Bumble Bee
Seafoods, Inc., and that Kemp and “these various
predecessors in interest have previously engaged in multiple
litigation proceedings.” The stipulation referred the Board
to, among other court documents, the May 22, 2001 consent
judgment.
It also is undisputed that the May 22, 2001 consent
judgment was a final judgment. See Lawlor v. National
Screen Service Corp., 349 U.S. 322, 327 (1955)(holding that
a lawsuit, dismissed with prejudice pursuant to a settlement
agreement, “bars a later suit on the same cause of action”);
Foster v. Hallco Mfg. Co., 947 F.2d 469, 20 USPQ2d 1241,
1248 (Fed. Cir. 1991) (“there is no dispute that … claim
preclusion principles apply to a consent judgment”); Zoba
International Corp. v. DVD Format/LOGO Licensing
Corporation, 98 USPQ2d 1106, 1110 (TTAB 2011)(“courts have
long held that judgments on consent give rise to claim
preclusion.”). In his initial opposition to the motion for
Opposition No. 91159912 (parent)
15
summary judgment, Kemp merely contended that the judgment
could not be said to be final for preclusive purposes while
subject to a pending motion to vacate, a matter no longer at
issue since the appellate court affirmed the district
court’s denial of vacatur.
Accordingly, we turn to the third factor for claim
preclusion, and address whether the same transactional facts
underlying Kemp’s claims in the civil action are the basis
for Kemp’s present claims. The Board’s primary reviewing
court defines “transaction” in terms of “the same nucleus of
operative facts”, and held that a common set of
transactional facts is to be identified “pragmatically.”
Jet, Inc. v. Sewage American Systems, 223 F.3d 1360, 55
USPQ2d 1854, 1856 (Fed. Cir. 2000).
The operative facts underlying both the district court
claims and the claims in this consolidated proceeding
concern the contractual right to use and to register the
LOUIS KEMP and LOUIS KEMP SEAFOOD CO. marks.7 As set forth
above, Kemp sought a declaratory judgment from the district
court that the contracts included a reservation of rights of
Kemp to the LOUIS KEMP marks except for Trident’s right to
use the LOUIS KEMP marks with surimi-based seafood products,

7 The courts have found, and Kemp does not dispute, that Kemp
did not use LOUIS KEMP in connection with his business before
selling the business and trademarks to Trident, and Kemp does not
assert common law trademark use.

Opposition No. 91159912 (parent)
16
and Trident sought declaratory judgment that the contracts
included broad rights of Trident to use the LOUIS KEMP marks
with food and related products, and that its registrations
for LOUIS KEMP marks, which include more than surimi-based
seafood, are valid. In his petition to cancel and notices
of opposition, Kemp alleges that the same contractual
reservation of rights supports his claim that Trident’s
registrations and applications for LOUIS KEMP marks exceed
the scope of Kemp’s consent.
The contractual rights of the parties to the LOUIS KEMP
marks were determined by the district court’s May 21, 2001
consent judgment, in which the court “dismisses with
prejudice, pursuant to the doctrine of claim preclusion, all
claims advanced by Kemp against [Trident] related to
ownership of the Marks: (1) declaratory judgment (Compl.
¶¶VI-IX)” (¶9) and “Pursuant to the doctrine of claim
preclusion, the Court finds that [Trident] owns all right,
title, and interest in and to the LOUIS KEMP Marks, and
[Trident] owns U.S. Trademark Registration Nos. 1,859,815
and 1,859,816 (for the mark LOUIS KEMP) and U.S. Trademark
Registration Nos. 1,859,817 and 1,879,931 (for the mark
LOUIS KEMP SEAFOOD CO.). Accordingly, the Court hereby
grants judgment to [Trident] on its claim for declaratory
judgment.” (¶7). Thus, Kemp’s claim of a reservation of
contract rights to the LOUIS KEMP marks for all goods
Opposition No. 91159912 (parent)
17
excepting surimi-based seafood products was dismissed with
prejudice, and Trident’s claim of ownership of the LOUIS
KEMP marks for food and related products, including its four
registrations, was granted.
Kemp’s opposition to summary judgment contends that
Trident’s acquisition of ownership of the LOUIS KEMP marks
does not include Kemp’s implicit consent to registration;
that the district court’s judgment addressed only Trident’s
right to use the LOUIS KEMP marks and not Trident’s right to
register the LOUIS KEMP marks; and that there can be no
preclusive effect with respect to Trident’s applications
filed after issuance of the court’s judgment. For the
reasons below, we find none of these arguments persuasive,
nor do Kemp’s papers raise a genuine dispute that would
preclude the entry of summary judgment.
Kemp’s argument that the district court’s consent
judgment addressed only Trident’s right to use the LOUIS
KEMP marks and not Trident’s right to register the LOUIS
KEMP marks lacks record support. The May 21, 2001 consent
judgment, which addressed not only Trident’s rights acquired
by contract but Trident’s rights acquired in Kemp’s
bankruptcy proceeding and other litigation, found Trident
owns all right, title, and interest to the LOUIS KEMP marks,
and Trident’s registrations to be “valid, enforceable, and
Opposition No. 91159912 (parent)
18
in full force and effect.” Moreover, the district court’s
March 30, 2004 construction of the consent judgment states:
There are no restrictions placed on [Trident’s]
registration, ownership, or use of the LOUIS KEMP
and LOUIS KEMP SEAFOOD CO. marks. This language
is unambiguous and simply cannot be read to
include the possibility that the scope of
[Trident’s] marks continued to be limited to
surimi-based products. (Emphasis added).

Thus, we find that Trident’s right to both use and
registration of the LOUIS KEMP marks was the subject of the
consent judgment.
Finally, we reject Kemp’s argument that the preclusive
effect of the consent judgment does not apply to Kemp’s
claims against Trident’s applications because the
applications had not been filed when the district court
entered the consent judgment. In fact, Kemp brings the
identical claims against the registrations and applications,
and the preclusive effect of the consent judgment is the
same.
The district court judgment granted Trident’s
declaratory judgment claim that Trident is the “owner of all
right, title, and interest in and to the trademarks LOUIS
KEMP and LOUIS KEMP SEAFOOD CO. for use on and in connection
with food and related products.” Both Trident’s
registrations and applications list goods which are not
surimi-based seafood products. Kemp does not argue that the
goods listed in either the registrations or the applications
Opposition No. 91159912 (parent)
19
are not “food or related products.” The notices of
opposition allege that the applications impermissibly
include goods which are not limited to surimi-based
products, the same assertion made against Trident’s
registrations in the petition to cancel, and the same
argument rejected by the district court. The court’s March
30, 2004 clarification order addressing the scope of the
consent judgment stated that it “simply cannot be read to
include the possibility that the scope of [Trident’s] marks
continued to be limited to surimi-based products.”
Because both the consent judgment and the March 30,
2004 clarification order determined that Trident has the
right to use and register LOUIS KEMP marks for food and
related products, and specifically found Trident’s
registrations, which list food items beyond surimi-based
seafood products, to be valid and enforceable, we find that
Kemp may not bring his claims against either Trident’s
registrations or its applications, which also list food
items beyond surimi-based seafood products. With respect to
both the claims to the LOUIS KEMP marks brought by Kemp’s
petition to cancel and the claims to the LOUIS KEMP marks
brought by Kemp’s notices of opposition, Kemp attempts
relitigation of claims dismissed with prejudice in the
district court action.
Opposition No. 91159912 (parent)
20
In sum, because the district court judgment recognized
Trident’s trademark ownership and extinguished claims
related to the rights of the parties regarding the LOUIS
KEMP marks for food and related products, Kemp is barred by
the doctrine of claim preclusion from bringing these actions
to cancel Trident’s registrations and to oppose its
applications for LOUIS KEMP marks for food and related
products on the grounds of lack of consent under Trademark
Act Sec. 2(c) and fraud based on misrepresentations
regarding that consent. Accordingly, there are no genuine
disputes as to any material fact and entry of judgment as a
matter of law is appropriate. Trident's motion for summary
judgment is granted; in Cancellation No. 92042289, the
petition to cancel is denied; and in Opposition Nos.
91159912 and 91162015, the notices of opposition are
dismissed.8
Proceedings herein are resumed with respect to
remaining consolidated Opposition Nos. 91167653, 91167827,
91167846, and 91167857. Dates are reset below:9

DISCOVERY PERIOD TO CLOSE: December 16, 2011

Thirty-day testimony period March 15, 2012

8 This order should be the last paper in this proceeding file.
With the disposition of the three earliest filed cases in this
consolidated proceeding, Opposition No. 91167653 becomes the
parent case.
9 Because this consolidated proceeding commenced prior to
November 1, 2007, it is not subject to the amended Trademark
Rules and no disclosures are required.
Opposition No. 91159912 (parent)
21
for party in position of
plaintiff to close:

Thirty-day testimony period May 14, 2012
for party in position of
defendant to close:

Fifteen-day rebuttal testimony June 28, 2012
period to close:

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.
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