Sharp Kabushiki Kaisha a/k/a Sharp Corporationv.Dell Inc.

Trademark Trial and Appeal Board

Jul 2, 2012

No. 91154103 (T.T.A.B. Jul. 2, 2012)

DUNN

Mailed: July 2, 2012

Opposition No. 91154103
Sharp Kabushiki Kaisha a/k/a
Sharp Corporation

v.

Dell Inc.

Before Seeherman, Bergsman, and Shaw, Administrative
Trademark Judges:

By the Board:

This case comes up on cross-motions for summary
judgment under the doctrine of claim preclusion. The
motions are fully briefed.
Applicant filed an application to register the mark
ULTRASHARP for computer monitors under Section 1(b) of the
Trademark Act of 1946 (Serial No. 78098848). In its notice of
opposition filed October 29, 2002, opposer pleads priority of
use and likelihood of confusion and dilution based on its
common law rights and ownership of fourteen registrations for
the mark SHARP for various electronic goods and services,
including computer monitors. The proceeding has been suspended
since 2008 pending the disposition of the civil action between
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 T.T.A.B.
Opposition No. 91154103
2
the parties, Sharp Corporation v. Dell Inc. (Civil Action No.
08-CV-05088) in the United States District Court for the
District of New Jersey. The pleadings in the civil action are
discussed below. On June 14, 2011, the district court approved
the parties’ stipulation of dismissal with prejudice. The
instant motions reflect the parties’ disagreement as to the
impact of the court’s order on this proceeding.
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
Opposition No. 91154103
3
187, 189 (Fed. Cir. 1984). 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
transactional facts as the first. See Jet, Inc. v. Sewage
Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed.
Cir. 2000). Here, there is no dispute that the parties are
identical and that the dismissal with prejudice entered in the
civil action is a final judgment on the merits. 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.”).
Accordingly, we turn to the third factor for claim
preclusion, and address whether the same transactional facts
underlying opposer's claims in the civil action are the basis
for opposer's claims in this opposition. 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,
Opposition No. 91154103
4
Inc. v. Sewage Aeration Systems, 55 USPQ2d at 1856. See also
Restatement (Second) of Judgments Section 24 (1982) (defining
“claim” as encompassing rights and remedies arising out of the
same set of transactional facts).
Here, opposer filed the notice of opposition against
Dell’s application, filed the complaint in district court
including many of the same allegations, and filed the parties’
stipulation to suspend the opposition because the district
court action could have a bearing on the opposition. Opposer’s
complaint in the district court action pleaded “common
allegations” for each claim, including the facts surrounding
applicant’s efforts to register its ULTRASHARP mark. Complaint
¶¶ 15-18. Opposer pleaded claims of state and federal
trademark infringement, false designation of origin, dilution,
and unfair competition. Opposer sought, in addition to damages
and enjoinder of use, that “Dell be further permanently
enjoined from obtaining a registration in the ‘Ultrasharp’ name
from the U.S. Patent and Trademark Office or in any manner
whatsoever.” Complaint, Prayer for Relief, Section A. In sum,
the civil action did not feature only the rights and remedies
arising from the conflicting use of the parties’ respective
marks but applicant’s attempt to register its ULTRASHARP mark.
As stated, the civil action ended after the parties agreed
to dismissal with prejudice, and the court entered judgment
approving their stipulation. Opposer now moves for summary
Opposition No. 91154103
5
judgment on the ground that the district court judgment was
based on different transactional facts than are present in the
opposition, and thus opposer is not barred from challenging
applicant’s attempt to register its ULTRASHARP mark. Applicant
also moves for summary judgment, contending that opposer’s
claims to the district court were based on allegations
regarding the opposed ULTRASHARP application and opposer sought
an injunction barring applicant’s registration, and since
opposer agreed to dismissal of its claims with prejudice,
opposer is barred from again challenging applicant’s ULTRASHARP
application.
The Board’s primary reviewing court has held that for
preclusion purposes, an infringement action in district court
generally differs from an opposition or cancellation proceeding
before the Board. Jet, Inc. v. Sewage Aeration Systems, 55
USPQ2d at 1857 (“the overall transactional facts are simply too
distinct to allow claim preclusion from an infringement action
to bear on a subsequent cancellation claim.”).1 In Jet, the
Federal Circuit held that “(1) infringement requires the

1 The Board notes that the Federal Circuit differentiated
infringement cases from Board proceedings for preclusion
purposes, but there is no general rule that a district court
judgment will not bar a Board proceeding. See Zoba International
Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106 (TTAB
2011) (district court judgment on fraud and abandonment claims
bars fraud and abandonment claims in Board proceeding); John W.
Carson Foundation v. Toilets.com Inc., 94 USPQ2d 1942 (TTAB 2010)
(district court judgment finding mark violated right of publicity
bars registration); Enterprise Rent-A-Car Co. v. Advantage Rent-
A-Car Inc., 62 USPQ2d 1857 (TTAB 2002) (district court judgment
on dilution claim bars dilution claim in Board proceeding).
Opposition No. 91154103
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plaintiff to have a valid registered mark, cancellation does
not; (2) infringement requires the defendant to have used the
allegedly infringing words or symbols in commerce and in
connection with the sale or promotion of goods or services,
cancellation requires none of these; (3) cancellation requires
the respondent (i.e., the party in the position of defendant)
to hold a federally registered mark, infringement does not; and
(4) cancellation requires inquiry into the registrability of
the respondent's mark, infringement does not.” Id. at 1857.
See J.T. McCarthy, McCarthy on Trademark and Unfair
Competition, § 32:82 at 32:143 (4th ed. 2004) (“A claim for
infringement is not the same as an inter partes claim for
opposition or cancellation against another's registration of a
mark. Thus, an opposer would not necessarily be barred by the
rule of claim preclusion when it lost a previous infringement
claim in court.”).
However, the instant case differs because opposer did not
split its claims to challenge applicant’s use in court and to
challenge applicant’s registrability before the Board. Opposer
sought all possible remedies from the court; its allegations
regarding the opposed application were a common basis for each
of its claims; and its prayer for relief specified a permanent
injunction barring applicant from registering its ULTRASHARP
mark. There is no question that if the district court had
granted judgment on opposer’s claims and granted the requested
Opposition No. 91154103
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relief in the civil action, applicant would be unable to
register the opposed mark.
Because of the differences in relevant facts, those cases
in which a defendant’s ability to register its mark formed no
part of the claim before the court are distinguishable from the
present situation because the court’s judgment in those cases
did not bar a subsequent Board proceeding to determine
registrability. See Mayer/Berkshire Corp. v. Berkshire
Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1313 (Fed. Cir.
2005) (“The issue litigated in the district court action was
whether the marketing by Berkshire Fashions of specific
products with either the BERKSHIRE mark or the Berkshire
Fashions trade name was likely to cause confusion with
Mayer/Berkshire's registered BERKSHIRE trademarks.”); Jet, Inc.
v. Sewage Aeration Systems, 55 USPQ2d at 1855 (“Jet sought to
amend its complaint to, inter alia, add a claim for
cancellation of the AEROB-A-JET mark. The district court denied
the amendment.”); Zachry Infrastructure LLC v. American
Infrastructure Inc., 101 USPQ2d 1249, 1253 (TTAB 2011) (“the
civil action focused on the respective uses and rights to use,
whereas the oppositions focus on the right of applicant to
register its mark.”); Treadwell's Drifters, Inc. v. Marshak, 18
USPQ2d 1318, 1321 (TTAB 1990) (“[t]he civil action was based on
a claim of injury resulting from respondent's use of his mark
in commerce; the instant claim, however, is a claim that
Opposition No. 91154103
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petitioner believes it is damaged by registration of
respondent's mark”); American Hygienic Labs., Inc. v. Tiffany &
Co. , 228 USPQ 855, 857 (TTAB 1986) (“a claim of infringement
before the court and a claim of priority and likelihood of
confusion before this Board are different claims. The former
claim is, in essence, a claim of injury resulting from
applicant's use of its mark in commerce; the latter claim, in
essence, is a claim that opposer believes it would be damaged
by registration of applicant's mark.”).
In sum, because the district court’s judgment dismissed
with prejudice opposer’s claims regarding both applicant’s use
and registration of its ULTRASHARP mark, opposer is barred by
the doctrine of claim preclusion from bringing this action to
oppose applicant’s application. Accordingly, there are no
genuine disputes as to any material fact and entry of judgment
as a matter of law is appropriate. Opposer’s motion for
summary judgment is denied; applicant's motion for summary
judgment is granted; and the notice of opposition is dismissed.