Sealtite Building Fastenersv.Larry Joseph Bogatz and B&B Hardware, Inc.

Trademark Trial and Appeal Board

Jul 1, 2002

No. 92026016 (T.T.A.B. Jul. 1, 2002)

Greenbaum
7/1/02 Cancellation No. 26,016

Sealtite Building
Fasteners

v.

Larry Joseph Bogatz
d/b/a B&B Hardware and
B&B Hardware, Inc.,
joined as party
defendant1

Before Quinn, Hairston and Rogers, Administrative
Trademark Judges.

By the Board.
Now ready for consideration are several
communications from the parties, which we construe as
cross-motions for summary judgment.
As background for the construed motions, on June 2,
1998, respondent’s successor-in-interest, B&B Hardware,
Inc. (“B&B”), filed a complaint in the U.S. District
Court for the Eastern District of Arkansas, Western
Division, against Hargis Industries, Inc., d/b/a Sealtite

1 Respondent recorded the assignment of the involved
registration in the Assignment Division of the PTO Office of
Public Records on August 19, 1999, Reel 1949/Frame 0882.
Inasmuch as the involved registration was assigned after the
present proceeding commenced, B&B Hardware, Inc. is joined as a
party defendant. See authorities cited in TBMP Section 512.01.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 26,016
2
Building Fasteners (“Hargis”).2 B&B based the complaint
in the civil action on several grounds, including
infringement of the mark SEALTIGHT, U.S. Registration No.
1,797,509, the subject of the instant cancellation
proceeding.3 Hargis
pleaded several defenses, including that the mark
SEALTIGHT was merely descriptive of the goods identified
in the registration, and had not acquired secondary
meaning.
Following a jury trial in the civil action, the judge
entered a “Judgment on Jury Verdict” on May 18, 2000. The
judgment held that B&B’s mark SEALTIGHT was merely
descriptive and that it had not acquired secondary meaning.
The judge concurrently dismissed the civil action with
prejudice.
B&B appealed to the U.S. Court of Appeals for the
Eighth Circuit. On June 11, 2001, the Court of Appeals
affirmed the trial court’s judgment.4 B&B did not file a
petition for rehearing or rehearing en banc, and did not

2 In the second amended petition, discussed infra, petitioner
identified itself as a wholly owned division of Hargis
Industries, Inc., a Texas corporation.
3 Registration No. 1,797,509 issued October 12, 1993. Section 8
affidavit accepted.
4 We note that neither the district court nor the appellate
court ordered the Board to cancel the involved registration.
Cancellation No. 26,016
3
file a petition for issuance of a writ of certiorari in
the U.S. Supreme Court.
The Board resumed proceedings at petitioner’s
request by order dated December 6, 2001.5 In that order,
the Board noted that the decision in the civil action had
no preclusive effect on this cancellation proceeding
because the amended petition to cancel set forth claims
of abandonment and likelihood of confusion, but did not
include
a claim of descriptiveness. Accordingly, the Board
allowed petitioner until January 5, 2002 to file a second
amended pleading that set forth a claim of
descriptiveness under Section 2(e)(1) of the Trademark
Act, or to submit a stipulation that dismissed this
proceeding.
Petitioner submitted a second amended petition to
cancel on December 26, 2001, based on the preclusive
effect of the decision in the civil action with regard to
the descriptiveness of respondent’s mark. Specifically,
after reciting in more detail the events discussed above,
the second amended complaint makes the following
allegation in paragraph 11:

5 The Board suspended this proceeding on December 9, 1998,
pending a final determination in the civil action.
Cancellation No. 26,016
4
[a]s a consequence, a Court of proper jurisdiction
in an action between the petitioner and respondent
here has by final decision held that respondents’
mark SEALTIGHT is merely descriptive and has not
acquired secondary meaning. That holding is adverse
to respondents’ right to maintain the mark on the
Register under 15 U.S.C. 1065, and is res judicata
between petitioner and respondent here.

On December 28, 2001, respondent filed a
“communication” in response to the December 6, 2001 Board
order, which communication seeks to dismiss the petition
to cancel because the involved mark became incontestable
during the pendency of the instant proceeding, among
other things. Petitioner filed a response thereto on
January 11, 2002, which requests that we grant the
petition to cancel because the issue of descriptiveness
is res judicata.6
Because both parties seek judgment in their favor on
the issues raised in their respective “communications,”
because the parties have fully briefed the issues, and
because the parties essentially have treated the
communications as motions for summary judgment, we
construe the communications as cross-motions for summary

6 In our discretion, we have considered both parties’ replies.
See Trademark Rule 2.127(a). In addition, we note that the
second amended pleading sets forth a well pleaded allegation of
res judicata based on the resolution of the descriptiveness
issue in the civil action. In the interests of equity and
justice, the December 6, 2001 order is modified to allow
petitioner to assert res judicata based on resolution of the
descriptiveness issue in the civil action.
Cancellation No. 26,016
5
judgment without need for further briefing on the issues
raised therein.7 See authorities cited in TBMP Section
528.04
As grounds for respondent’s summary judgment motion,
respondent alleges that: “the SEALTIGHT mark was
registered on October 12, 1993,” and “has been in use
since 1990 and has remained in continuous use through the
present”; “by statute, a petition to cancel a
registration based on an allegation of mere
descriptiveness must be filed within five-years of the
date of registration”; petitioner “did not raise the
issue of mere descriptiveness as a grounds for
cancellation of the SEALTIGHT registration prior to the
five-year anniversary of that registration”; “since the
issue of descriptiveness was not pleaded by [petitioner]
prior to the five-year anniversary date (either before
the Board or in the Arkansas case), [petitioner] is
barred from now raising that issue”; “the Lanham Act
provides that a registered mark is prima facie evidence

7 Although petitioner’s testimony period opened several years
ago for a short period, and we ordinarily would deny as untimely
a summary judgment motion that was filed after petitioner’s
testimony period had opened, we have exercised our discretion to
so construe these papers because petitioner’s summary judgment
motion involves both claim preclusion and issue preclusion. See
Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1300 fn. 2 (TTAB
1986), aff’d unpublished opinion, 87-1187 (September 18, 1987);
Cancellation No. 26,016
6
of the registrant’s exclusive right to use the mark”;
“such a mark becomes incontestable if it has been in
continuous use for five consecutive years subsequent to
its registration and is still in use”; “once a mark is
incontestable, ‘its registration shall be conclusive
evidence . . . of the registrant’s exclusive right to use
the registered mark’”; petitioner “did not raise the
issue of descriptiveness in any context until mid-1999,
almost six years after registration was granted,” and,
therefore, “the mark is

see also Foodland, Inc. v. Foodtown Super Markets, Inc., 138
USPQ 591, 593 (TTAB 1963), and TBMP Section 528.02.
Cancellation No. 26,016
7
incontestable and the registration is conclusive evidence
of B&B’s ‘exclusive right to use’ the mark.”8
In response, petitioner maintains that the involved
registration is not incontestable because petitioner
filed the petition to cancel on March 5, 1997,
approximately 3½ years after the registration issued, and
that respondent therefore never was in a position to meet
one of the necessary requirements for incontestability
under Section 15, i.e., respondent never was able to
assert at least five continuous years of use of the
registered mark subsequent to registration, and that
there are no proceedings involving the registration not
finally decided.
In addition, as grounds for the cross-motion for
summary judgment, petitioner alleges that issue
preclusion applies because the issue of mere
descriptiveness was tried, and a jury rendered a verdict
thereon, in the civil action. Petitioner further alleges

8 It appears that petitioner’s second amended petition to cancel
crossed in the mail with respondent’s construed summary judgment
motion. Thus, respondent makes additional arguments that
pertain to the grounds set forth in the earlier versions of the
petition to cancel, but which do not pertain to the second
amended petition to cancel. As a party may not seek summary
judgment on an unpleaded issue, and because we accept the second
amended petition for reasons discussed hereinafter, respondent’s
summary judgment motion is denied to the extent that it seeks
summary judgment on the issues of priority and abandonment,
Cancellation No. 26,016
8
that claim preclusion applies because the judge in the
civil action dismissed the case with prejudice. In
response, respondent maintains that because petitioner,
as defendant in the civil action, “did not raise the
issue of mere descriptiveness as a ground for
cancellation of the SEALTIGHT registration prior to the
five-year anniversary of the registration,” said issue
was not properly before the U.S. District Court in
Arkansas, and, accordingly, the District Court “did not
have jurisdiction to consider the issue of mere
descriptiveness.” Respondent further maintains that
“because the Arkansas Court did not have jurisdiction to
consider the issue, the decision reached by the jury has
no preclusive effect.”9
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material facts, and that it is entitled to judgment as a

which are not raised by the second amended petition. See Fed.
R. Civ. P. 56, and authorities cited in TBMP Section 528.07(a).
9 We note that respondent raised this argument in abridged form
in a footnote in its summary judgment motion. We also note that
respondent contends that the claim of mere descriptiveness
cannot “relate back” to the original grounds for cancellation
under Fed. R. Civ. P. 15(c). Inasmuch as we accept the second
amended pleading for reasons discussed hereinafter, without need
to relate the amended pleading to the earlier pleading,
respondent’s argument is irrelevant and will be given no further
consideration.

Cancellation No. 26,016
9
matter of law. Fed. R. Civ. P. 56(c). The evidence must
be
viewed in a light favorable to the nonmoving party, and
all justifiable inferences are to be drawn in the
nonmovant’s favor. Opryland USA Inc. v. The Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992).
We turn first to respondent’s motion for summary
judgment, which raises issues related to whether filing a
petition to cancel a registration tolls the five-year
period for determining the grounds on which a
cancellation action may be brought under Section 14 of
the Lanham Act. We note in passing, however,
respondent’s great reliance on the “incontestability” of
its mark. Respondent has never filed an affidavit or
declaration of incontestability with the Office.
Therefore, respondent’s claim that its mark is
incontestable is in error. More importantly, the issue
is one of tolling, rather than whether respondent’s mark
is incontestable.
In this regard, we note that the grounds on which a
cancellation action may be brought under Section 14 are
limited five years subsequent to the date of registration

Cancellation No. 26,016
10
of the mark, regardless of whether the respondent has
filed for incontestability under Section 15. Id.
However, the Board has never addressed the related issue
of whether the filing of a petition to cancel a
registration, filed within five years of the issuance of
the registration, tolls the running of the five-year
period for purposes of determining what grounds for
cancellation exist under Section 14.
We consistently have held that in situations where a
plaintiff files a notice of opposition or a petition to
cancel before the five-year anniversary of plaintiff’s
pleaded registration, such filing tolls the time for the
defendant to file a counterclaim to cancel plaintiff’s
pleaded registration. See Willimson-Dickie Manufacturing
Co. v. Mann Overall Company, 359 F.2d 450, 149 USPQ 518
(CCPA 1966); UMC Industries, Inc. v. UMC Electronics Co.,
207 USPQ 861 (TTAB 1980); Humble Oil & Refining Co. v.
Sekisui Chemical Company Ltd. of Japan, 165 USPQ 597
(TTAB 1970); and Sunbeam Corp. v. Duro Metal Products
Co., 106 USPQ 385 (Comm’r 1955). Similarly, we have held
that an amendment of an application to a concurrent use
application, before the five-year anniversary of the
registrations which registrant named as exceptions in the
concurrent use application, tolls the running of the
Cancellation No. 26,016
11
five-year incontestability period for registrant’s
registrations with regard to applicant’s concurrent
rights. See Arman’s Systems, Inc. v. Armand’s Subway,
Inc., 215 USPQ 1048 (TTAB 1982);
We now extend this principle, and conclude that the
filing of a cancellation petition tolls the five-year
period with regard to additional grounds for cancellation
of a defendant’s registration under Section 14, if the
plaintiff was unaware of the existence of the basis for
the additional grounds when the plaintiff filed the
petition to cancel, or if the plaintiff was aware of the
possibility of additional grounds when the plaintiff
filed the petition to cancel, but could not, in good
faith and pursuant to the requirements Fed. R. Civ. P.
11, plead the additional grounds until a later date.
Of course, as with any motion to amend a pleading, a
party which learns of grounds for a new claim cannot
delay too long before raising the claim. See Fed. R.
Civ. P. 15(a); Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and
Trans Union Corp. v. Trans Leasing International, 200
USPQ 748 (TTAB 1978). In this regard, we note that when
respondent filed the motion to suspend this proceeding in
June 1998, respondent’s discovery responses to petitioner
Cancellation No. 26,016
12
were still outstanding. However, instead of responding
to the outstanding discovery, respondent filed a civil
action, and moved to suspend this case. We further note
that in September 1998, the Board entered judgment in
favor of petitioner, and in December 1998, the Board set
aside that judgment and suspended this proceeding pending
a final determination of the civil action. In short, we
do not find plaintiff to have unduly delayed in raising,
before us, the issue of descriptiveness. Before the
events of June 1998 through December 1998 transpired,
discovery was not complete, and trial had not yet
commenced. During the ensuing civil action, the issue of
descriptiveness was fully aired.10 We have no basis on
which to find that petitioner,
prior to the civil action, and still waiting for
discovery from respondent, unduly delayed seeking to
amend its pleading.

10 The district court apparently allowed Hargis, as defendant in
the civil action, to raise an affirmative defense of
descriptiveness, rather than require the issue to be addressed
in a counterclaim. The Board typically would require a
defendant to raise the issue of descriptiveness as a
counterclaim, or else bar consideration of that issue as a
collateral attack on the registration. To the extent
respondent’s argument that the district court lacked subject
mater jurisdiction is rooted in this discrepancy between the
district court’s approach and the standard Board approach, we
simply will not consider the argument, as respondent should have
raised the issue of the district court’s jurisdiction with the
district court, rather than with the Board.
Cancellation No. 26,016
13
Accordingly, we accept the second amended petition
to cancel, and deny respondent’s motion for summary
judgment.
We turn next to petitioner’s cross-motion for
summary judgment. Petitioner bases its cross-motion on
the doctrine
of res judicata because of the final decision on the
merits in federal court, adverse to respondent as
plaintiff therein, regarding the mere descriptiveness of
respondent’s mark. The cross-motion also relies on the
assertion of descriptiveness in the second amended
petition to cancel, so that there is an identity of
issues between this case and the civil action.
Under the doctrine of claim preclusion, the entry of
a final judgment “on the merits” of a claim (or cause of
Cancellation No. 26,016
14
action) in a proceeding will preclude the relitigation of
the same claim in a later proceeding that involves the
same parties or their privies. Claim preclusion extends
to those claims or defenses that were, or could have
been, raised in the prior action. See Jet, Inc. v.
Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854
(Fed. Cir. 2000), reh’g and reh’g en banc denied, 2000
U.S. App. LEXIS 26699 (Fed. Cir. 2000); Flowers
Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580
(TTAB 1987); and Chromalloy American Corp. v. Kenneth
Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir.
1984).
Claim preclusion ordinarily does not apply between
Board cases and civil actions, as the claims raised in
each venue differ. See Treadwell’s Drifters Inc. v.
Marshak, 18 USPQ2d 1318, 1321 (TTAB 1990). Moreover,
even if this were not so, claim preclusion would not
apply in this case. Petitioner, as defendant in the
civil action, only raised the issues of descriptiveness
and lack of secondary meaning as affirmative defenses,
and did not assert them as counterclaims against
respondent, as plaintiff in the civil action. Thus,
petitioner did not pursue a claim in the civil action,
and the principles of claim preclusion simply do not
Cancellation No. 26,016
15
apply. Therefore, if the judgment in the prior
proceedings has any preclusive effect on the issues of
descriptiveness and lack of secondary meaning in this
case, the effect must be one of issue preclusion.
Under the doctrine of issue preclusion, issues which
are actually and necessarily determined by a court of
competent jurisdiction are normally conclusive in a
subsequent suit involving the parties to the prior
litigation. See Mother’s Restaurant, Inc. v. Mama’s
Pizza, Inc., 723 F.2d 1566, 221 USPQ 394 (Fed. Cir.
1983); and International Order of Job’s Daughters v.
Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017 (Fed. Cir.
1984). Issue preclusion may be invoked against a party
to the prior
action unless it appears that the party against whom the
doctrine is asserted did not have a full and fair
opportunity to litigate the issue, or unless the court
finds that it is otherwise unfair to permit the use of
estoppel. See Perma Ceram Enterprises Inc. v. Preco
Industries Ltd., 23 USPQ2d 1134 (TTAB 1992).
Because the parties in the civil action are the same
as, or successors in interest to, the parties in this
cancellation proceeding, and because in the civil action,
the parties litigated the issues of whether respondent’s
Cancellation No. 26,016
16
involved mark is merely descriptive, and, if so, whether
it has attained secondary meaning, the principles of
issue preclusion apply in this case. We therefore find
that there are no material issues of fact that remain to
be resolved in this case, and that petitioner is entitled
to judgment as a matter of law.
Accordingly, petitioner’s cross-motion for summary
judgment is granted, judgment is hereby entered against
respondent, the petition for cancellation is granted, and
Registration No. 1,797,509 will be cancelled in due
course.