STMicro-electronics, Inc.v.Nartron Corporation

Trademark Trial and Appeal Board

May 17, 2005

No. 92042527 (T.T.A.B. May. 17, 2005)

Mailed: May 17, 2005

Cancellation No. 92042527

STMicroelectronics, Inc.

v.

Nartron Corporation

Before Hairston, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
This petition for cancellation was filed on September 9,
2003 to cancel Registration No. 1190527 for SMART-POWER, in typed
form, for use in connection with “electrical power circuits in
combination with electrical logic circuits and parts thereof,” in
Class 9.1 As grounds for its petition, petitioner alleges that:
(1) petitioner “manufactures and supplies semiconductors [that]
combine power and intelligence on a single integrated-circuit
chip”; (2) petitioner “[l]ike the rest of the semiconductor
industry...has used the term ‘smart power’ for many years to
refer generally to this type of technology that combines power

1 Registration No. 1190527 registered on February 23, 1982, Section 8
affidavit accepted, Section 15 affidavit acknowledged, and Section 9
renewal granted, and claiming April 30, 1978 as the date of first use
and use in commerce.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
P.O. BOX 1451
Alexandria, Virginia 22313-1451
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92042527
2
transistors and control circuitry on a single integrated
circuit”; (3) respondent, in 1998, brought a civil action against
petitioner alleging, inter alia, infringement of its registered
mark; (4) petitioner, as defendant, in the civil action,
asserted, inter alia, the affirmative defense that the SMART-
POWER mark is generic; (5) the court in the civil action, on
January 25, 2001, granted petitioner’s cross motion on summary
judgment and held that respondent’s “mark was generic”; (6) the
District Court’s opinion was upheld on appeal to the Sixth
Circuit; (7) respondent filed for bankruptcy on December 19,
2002; and (8) on September 9, 2003, petitioner sought and
received from the bankruptcy court relief from the automatic stay
provisions of the U.S. Bankruptcy Code, 11 U.S.C. § 362, for the
purpose of filing this cancellation proceeding to “permit
[petitioner] to move forward in its efforts to correct the public
record” inasmuch as “[t]hose records are not correct in that the
District Court has determined that the mark is generic.”2 On the
basis of the prior court decision, petitioner requests that the
registration be cancelled because the mark has become the generic
name for the goods for which it is registered.
Respondent, in its answer, denies the salient allegations of
the petition to cancel.

2 In re Nartron Corp., No. SG 02-14263, slip op. at 2 (Bankr. W.D.
Mich. Sept. 8, 2003).
Cancellation No. 92042527
3
This case now comes up on the parties’ cross motions for
summary judgment.3 The motions have been fully briefed.
In support of its motion, petitioner argues that respondent
is collaterally estopped from asserting that SMART-POWER is not
generic when used in conjunction with the combined power and
logic circuits identified in respondent’s registration.
Specifically, petitioner argues that under the doctrine of issue
preclusion the Board should find that the term SMART-POWER is
generic for respondent’s identified goods on the basis of the
finding by the United States District Court for the Eastern
District of Michigan, Southern Division in a bench ruling in
Nartron Corporation v. STMicroelectronics, Inc., Civil Action No.
98-CV-75607-DT (hereinafter Nartron Corp. v, STM), as affirmed by
the United States Court of Appeals for the Sixth Circuit in
Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 403-04,
64 USPQ2d 1761, 1765 (hereinafter Nartron appeal), that
respondent’s mark is generic. Petitioner concludes that it is
entitled to judgment as a matter of law.
Petitioner’s motion is supported by (1) a copy of the
complete transcript of the oral argument and District Court
ruling addressing the parties’ cross motions in the civil action
(Nartron Corp. v. STM, Transcript of Hearing on Parties’ Cross

3 As background, on September 29, 2004, the Board denied respondent’s
motion for discovery under Fed. R. Civ. P. 56(f) in view of the fact
that petitioner’s motion is based on issue preclusion, the
applicability of which is a matter of law. See Jet, Inc. v. Sewage
Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000).
Cancellation No. 92042527
4
Motions (September 18, 2000)) (hereinafter Transcript), (2) a
copy of the District Court’s order granting petitioner’s, as
defendant in the civil action, motion for summary judgment
(Nartron v. SMT, Order Granting Motion for Summary Judgment
(January 25, 2001)), (3) a declaration by Bruce S. Sostek,
counsel for petitioner, attesting to these documents, and (4) a
copy of the decision issued by the Court of Appeals for the Sixth
Circuit affirming the District Court’s grant of summary judgment.
In response to petitioner’s motion for summary judgment,
respondent cross moves that claim preclusion is the doctrine that
applies here and not issue preclusion. Respondent essentially
argues that petitioner had the opportunity to request
cancellation of the involved registration at the time it filed
its summary judgment motion in the civil action under Section 37
of the Trademark Act, 15 U.S.C. § 1119, and thus is precluded now
from requesting such relief from the Board under Section 14 of
the Trademark Act, 15 U.S.C. § 1064. Specifically, respondent
argues that “[t]he doctrine of claim preclusion bars
[petitioner’s] afterthought claim to cancel the [subject]
registration, as genericness is the basis in both the civil
action and this cancellation proceeding.” Respondent further
argues that “if [petitioner] thought [the subject] registration
should have been cancelled, it could have asked the District
Court in the civil action to cancel the [subject] registration
under authority of Lanham Act § 37” and “[h]aving failed to seek
Cancellation No. 92042527
5
cancellation in the civil action, [petitioner’s] new claim before
the TTAB is now barred.” Respondent argues that the parties to
the prior civil action are identical, that there is an earlier
judgment and that the claims are based on the same set of
“transactional facts.”
Summary Judgment Standard
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issues of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56(c). A genuine issue with respect to
a material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any factual issues are genuinely in
dispute must be resolved against the moving party and all
inferences must be viewed 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).
Respondent’s Assertion of Claim Preclusion
Claim preclusion, put simply, bars a second suit based on
the same cause of action. Parklane Hosiery Co. v. Shore, 439
U.S. 322, 326 n. 5, 99 S. Ct. 645 (1979). A second suit will be
barred by claim preclusion if (1) there is identity of parties;
(2) there has been an earlier final judgment on the merits of a
Cancellation No. 92042527
6
claim; and (3) the second claim is based on the same set of
transactional facts as the first. Jet Inc. v. Sewage Aeration
Systems, 223 F.3d 1360, 1362, 55 USPQ2d 1854, 1856 (Fed. Cir.
2000).
Here, the identity of the parties and existence of a final
judgment are not in dispute. The only question is whether
petitioner’s affirmative defense of genericness in an
infringement suit is the same as a claim of genericness brought
offensively under Section 14(3) seeking cancellation of a
registration. We believe the core issue of registrability in the
cancellation proceeding presents a different set of
“transactional facts” for purposes of claim preclusion here.
Specifically, as stated by the Federal Circuit, “cancellation
requires inquiry into the registrability of the respondent’s
mark.” See Jet Inc., 55 USPQ2d at 1857. See also, Treadwell’s
Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1321 (TTAB 1990)
(“claim preclusion not applicable because “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
petitioner believes it is damaged by registration of respondent’s
mark.”) The affirmative defense of genericness in the civil
action asserted against the infringement claim did not address
the registrability of respondent’s mark. Moreover, while Section
37 of the Trademark Act empowers courts to provide litigants with
the remedy of canceling a registered mark, the Board has
Cancellation No. 92042527
7
concurrent jurisdiction under Sections 14 and 18. Petitioner was
not obliged to seek the remedy of cancellation under Section 37
during its defense against an infringement action and is within
its rights to come before the Board under Sections 14 and 18.4
In view of the foregoing, we find that the doctrine of claim
preclusion is not applicable in this case and respondent’s cross
motion for summary judgment is denied.
Petitioner’s Assertion of Collateral Estoppel
As noted above, petitioner argues that respondent is
collaterally estopped from asserting that SMART-POWER is not
generic when used in conjunction with the combined power and
logic circuits identified in respondent’s registration.
Under the doctrine of collateral estoppel, or issue
preclusion, if an issue is actually and necessarily determined
against a party by a court of competent jurisdiction, that
determination is conclusive in a subsequent suit involving the
same issue and party. The requirements which must be met for
issue preclusion are:
(1) the issue to be determined must be identical
to the issue involved in the prior action;

4 Frankly, to find otherwise would lead to the absurd result that a
term deemed to be generic by a Federal court would remain on the
Principal Register until such time that another plaintiff asserted
issue preclusion against respondent, thus defeating one of the main
purposes underlying the res judicata doctrines, to promote judicial
economy by preventing needless litigation. See Wright, Miller &
Cooper, 18 Federal Practice and Procedure: Juris.2d § 4403 (2004).
Moreover, petitioner, is, in essence, seeking to effect relief based
on a prior judgment and in that regard, that relief can only be
effected by the United States Patent and Trademark Office whether
under Section 18 or Section 37.
Cancellation No. 92042527
8
(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.

See, e.g., Mother’s Restaurant Inc. v. Mama’s Pizza, Inc., 723
F.2d 1566, 221 USPQ 394, 397 (Fed. Cir. 1983); and Larami Corp.
v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1843-1844 (TTAB
1995), citing Lukens Inc. v. Vesper Corporation, 1 USPQ2d 1299
(TTAB 1986), aff’d Appeal No. 87-1187 (Fed. Cir. Sept. 18, 1987).
Additionally, under the principles of collateral estoppel, a
court decision regarding trademark issues may bind a party in
later administrative proceedings before the Trademark Trial and
Appeal Board.
Respondent, as plaintiff in the civil action, brought an
infringement suit against petitioner, as defendant in the civil
action, alleging that petitioner “willfully infringed its
federally registered trademark in the mark Smart Power.” Nartron
Appeal at 1763. Petitioner, as defendant in the civil action,
moved for summary judgment based on, inter alia, its affirmative
defense that respondent’s mark is generic, such that respondent
“is not entitled to prevent the defendant’s use of the term.”
Nartron Appeal at 1764. In support of its summary judgment in
the civil action, petitioner specifically argued that SMART POWER
Cancellation No. 92042527
9
is the “generic term for an integrated circuit that combines
power and logic on a chip.” Transcript . 74.
At the conclusion of the oral argument the court granted
petitioner’s “motion for summary judgment to the defense on the
issues of laches and genericness.” The District Court found on
the issue of genericness that “a good showing has been made
enough to render the fact undisputed, particularly when ignorance
is all that the plaintiff offers the Court [and] [a] good showing
has been made that SMART POWER became a generic term over the 20
years of use in the industry.” Transcript p. 99. These findings
of fact and conclusions of law, issued from the bench during oral
argument, were incorporated into the January 25, 2001 written
order issued by the court granting petitioner’s motion for
summary judgment. Further, the Court of Appeals for the Sixth
Circuit stated that petitioner in the civil action had
demonstrated “pervasive uses of ‘smart power’ to identify devices
that utilize a certain type of technology, particularly
integrated circuits that combine both power and logic.” Nartron
Appeal at 1767.
We find that the issue involved in the prior civil
proceeding, whether the term SMART POWER is generic for
respondent’s goods, is identical to the issue to be determined in
this Board proceeding, namely, whether the term SMART-POWER has
become generic for “electrical power circuits in combination with
electrical logic circuits and parts thereof.” Although neither
Cancellation No. 92042527
10
party addressed this issue, we find that the addition of the
hyphen in the registered mark is an insignificant difference
which does not avoid the preclusive effect of the prior decision.
Further, the District Court made findings as to the issue of
genericness based on the record presented by the parties and,
based on those findings, granted petitioner’s motion for summary
judgment and dismissed respondent’s infringement action. In view
thereof, the issue of genericness was actually raised, litigated
and adjudged, it was necessary and essential to the litigation,
and respondent was fully represented in the prior action.5
Inasmuch as the requirements for the application of issue
preclusion have been met, we find that the term SMART-POWER is
generic as used in connection with petitioner’s identified goods.
Accordingly, petitioner has met its burden on summary
judgment. There is no genuine issue as to any fact that would be
material to the question of genericness, and petitioner is
entitled to judgment on this question as a matter of law.
Petitioner’s motion for summary judgment is, therefore, granted,
and judgment is entered against respondent on the ground of
genericness.

5 The fact that the District Court held the term SMART POWER to be
generic in the context of infringement rather than registrability is
not controlling for purposes of issue preclusion. Treadwell's
Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1321 (TTAB 1990) citing
International Order of Job's Daughters v. Lindeburg & Co., 727 F.2d
1087, 220 USPQ 1017 (Fed. Cir. 1984) (“Issue preclusion serves to
preclude the relitigation...whether or not the prior proceeding
involved the same claim as the subsequent proceeding” emphasis added).
Further, summary judgments are decisions on the merits for purposes of
Cancellation No. 92042527
11
In view thereof, the petition to cancel is granted and
Registration No. 1190527 will be cancelled in due course.
* * *

issue preclusion. See Wright, Miller & Cooper, 18A Federal Practice
and Procedure: Juris.2d § 4444 (2004).