Cancellation Nos 92051714 92051790 and 92051821 2identical in each of - PDF document

1 Cancellation Nos. 92051714, 92051790 and
Cancellation Nos. 92051714, 92051790 and 92051821 2identical in each of the registrations sought to be cancelled in this consolidated proceeding: As grounds for cancellation, petitioner asserts claims of fraud and abandonment. In lieu of filing answers, respondent 2 Respondent’s Motions based on Res Judicata DVD FLLC reque

2 sts that the Board dismiss Zoba’s fraud
sts that the Board dismiss Zoba’s fraud and abandonment claims in each proceeding on the basis that said claims are barred by the doctrine of res judicata (or claim preclusion). In support of its motion, DVD FLLC asserts, inter alia, that the instant claims are virtually identical to petitioner’s counterclaims that were previou

3 sly dismissed with prejudice by stipulat
sly dismissed with prejudice by stipulation and order in a prior civil action 3 In support of its motions, DVD FLLC 2its February 9, 2010 order, petitioner filed a separate response 3 Zoba International Corp., d/b/a CD Digital Card, Case No. 09-CV-5461 brought in the United States District Court, Southern

4 A party moving for summary judgment ha
A party moving for summary judgment has the burden of Cancellation Nos. 92051714, 92051790 and 92051821 6claim; 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, 55 USPQ2d 1854, 1857 (Fed. Cir. 2000), reh’g and reh’g en banc denied (Se

5 pt. 28, 2000), citing Parklane Hosiery C
pt. 28, 2000), citing Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979). Before addressing whether there is any genuine dispute as to relevant facts and if the doctrine of res judicata bars Zoba’s claims, we find it necessary to comment on whether, as Nasalok Coating Corp. v. Nylok Corp.5 is controlling with respect

6 to whether petitioner’s claims are barre
to whether petitioner’s claims are barred by claim preclusion. We thus first briefly review that decision. In Nasalok, the Court of Appeals for the Federal Circuit reviewed the Board’s determination that Nasalok’s claim of trademark invalidity as set forth in its petition to cancel Nylok’s trademark registration was barred by r

7 es judicata. As background, the salient
es judicata. As background, the salient facts were that in a civil action between the same parties prior to the Board proceeding, the 5 Cancellation Nos. 92051714, 92051790 and 92051821 8those in the cases at bar. “Having bargained for, and received, dismissal of the district court lawsuit with relies on

8 Nasalok to argue that defendant preclus
Nasalok to argue that defendant preclusion bars Zoba’s claims. Specifically, DVD FLLC asserts that Zoba’s claims therein “could have [been] brought when it asserted Respondent’s reliance on Nasalok in all three motions is misplaced. In regard to Cancellation Nos. 92051714 and 92051790, Zoba asserted its counterclaims as a cou

9 nterclaim-plaintiff in the prior civil a
nterclaim-plaintiff in the prior civil action. Thus, the traditional doctrine of plaintiff claim preclusion is applicable to the instant cancellations involving the counterclaims in the prior See Nasalok, 86 USPQ2d at 1372 (“Typically, claim preclusion is applied against a plaintiff who brings a second action related to an earl

10 ier action”). See also J. Thomas McCart
ier action”). See also J. Thomas McCarthy, MCC § 32:82 (4claim preclusion to operate against a plaintiff versus a In view thereof, with respect to Cancellation Nos. 92051714 and 92051790, the analysis in Jet Inc. v. Sewage Aeration Systems applies here. As to Cancellation Nos. 92051714, 92051790 and 92051821 10courts have l

11 ong held that judgments on consent give
ong held that judgments on consent give rise to res judicata. See, e.g., Lawlor v. National Screen Service Corp., 349 U.S. at 327 (holding that a lawsuit, dismissed with prejudice pursuant to a settlement agreement, “bars a later Foster v. Hallco Mfg. Co., 947 F.2d 469, 20 USPQ2d 1241, 1248 (Fed. Cir. 1991) (“there is no disput

12 e that … claim preclusion principles app
e that … claim preclusion principles apply to a Zoba does not explicitly dispute that the stipulated order of dismissal in the civil action is a final judgment. Nasalok to petitioner’s claims (discussed supra), Zoba contends that its claims do not amount to a collateral attack on the stipulated dismissal by the district court;

13 that “here, i.e., U.S. Reg. Nos. 229572
that “here, i.e., U.S. Reg. Nos. 2295726 and 2318677] were obtained and/or renewed on the false and fraudulent basis that DVD FLLC was using the DVD LOGO” (¶112); that the specimens of use submitted by DVD FLLC to renew its trademark registrations were not specimens evidencing its own use of the DVD LOGO for its own goods, but

14 were specimens used by other entities (¶
were specimens used by other entities (¶111); and that “DVD FLLC does not actually use the DVD LOGO as a trademark for its own goods” (¶112). Similarly, Zoba asserts in the cancellation proceedings We now consider whether Zoba’s abandonment claims in the In the civil action, Zoba alleged the following in its Cancellation

15 Nos. 92051714, 92051790 and 92051821 1
Nos. 92051714, 92051790 and 92051821 16No. 92051790).8 Although Zoba has identified these allegations in its petitions for cancellation as “abandonment” claims, and did single source for the goods with which the mark is used. See Section 45(2) of the Trademark Act, 15 U.S.C. § 1127.9 See also MCC at § 18:48

16 8abandonment claims, namely, that
8abandonment claims, namely, that respondent does not exercise the 9of conduct of the owner, … causes the mark to become the generic Cancellation Nos. 92051714, 92051790 and 92051821 18FLLC’s license agreements (see ¶84 answer and counterclaim) relate largely to Zoba’s counterclaims asserting antitrust allegations regar

17 ding DVD FLLC’s licensing regime, viz.,
ding DVD FLLC’s licensing regime, viz., those asserting uncontrolled use, failure to police the use of the DVD LOGO by respondent’s licensees, and misuse of the mark, proceeding. See Nasalok, 86 USPQ2d at 1371 (“claim preclusion refers to ‘the effect of foreclosing any litigation of matters that never have been litigated, becau

18 se of a determination that they should h
se of a determination that they should have been advanced in an earlier suit’” (emphasis added)). See also Vitaline Corp., 13 USPQ2d at 1174 (the court determined that claim preclusion barred Vitaline from asserting abandonment in a separate and subsequent plausibly argued there was a statutory presumption of abandonment” (emph

19 asis in original)); and Int’l Nutrition
asis in original)); and Int’l Nutrition v. Horphaq, 55 USPQ2d at 1494-95 (“the differences between the two pleadings are not sufficient to differentiate the claims res judicata purposes, particularly since there was nothing in the cancellation petition that could not have been alleged in the opposition”). Unlike the other pe

20 titions for cancellation discussed Canc
titions for cancellation discussed Cancellation Nos. 92051714, 92051790 and 92051821 22fraud and abandonment claims based on the doctrine of res judicata. In the civil action, DVD FLLC pleaded ownership of only the two registrations that are the subject of Cancellation Nos. 92051714 and 92051790. Since DVD FLLC chose In view

21 of the foregoing, both precedent and fa
of the foregoing, both precedent and fairness dictate our finding that Zoba’s fraud and abandonment claims claim preclusion. See, e.g., Sharp v. Thinksharp Inc., 79 USPQ2d 1376, 1379 (Fed. Cir. 2006) (“when a party did not have an opportunity to litigate disputed issues, a decision to permit such litigation is favored”); and M

22 ayer/Berkshire Corp., 76 USPQ2d at 1314
ayer/Berkshire Corp., 76 USPQ2d at 1314 (“The public policy underlying the Cancellation Nos. 92051714, 92051790 and 92051821 24sets forth a fraud or abandonment claim upon which relief can be granted, and to reset the trial schedule in that proceeding Decision Respondent’s motions for summary judgment with respect to Cance

23 llation Nos. 9205714 and 92051790 on the
llation Nos. 9205714 and 92051790 on the ground of res judicata are granted ; and Cancellation Nos. 9205714 and 92051790 are dismissed with prejudice.Respondent’s motion for summary judgment on the ground of res judicata with respect to Cancellation No. 92051821 is denied . appealed to the Court of Appeals f

24 or the Federal Circuit or to a U.S. Dist
or the Federal Circuit or to a U.S. District Court with appropriate jurisdiction. See Trademark Act Sections 21(a)(1) and 21(b)(1), 15 U.S.C. §§ 1071(a)(1) and nature; therefore, any appeal thereof can be raised only after final disposition of this proceeding. See Copeland’s Enterprises Inc. v. CNV Inc., 12 USPQ2d 1562 (Fed. C