Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different corporate identity and the marks, goods and services at issue in the opposition proceeding were different from the marks, goods and services at issue in the cancellation proceeding.
The Urock Network, LLC (“UNL”) sought to cancel the registration of the mark “UROCK” owned by Umberto Sulpasso (“Sulpasso”) for digital media and entertainment. In its petition to cancel, UNL pled ownership of an application for the mark “THE UROCK NETWORK” used in connection with downloadable MP3 files, MP3 recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring music, audio books in the field of music and news broadcasts. UNL alleged that the continued registration of the “UROCK” mark created confusion among consumers and specifically sought cancellation on the basis of priority of first use and the likelihood of confusion for goods and services under Section 2(d) of the Trademark Act.
In response, Sulpasso filed a motion to dismiss based on res judicata or claim preclusion grounds, which the TTAB converted into a motion for summary judgment. In his motion, Sulpasso asserted that he won a prior proceeding – Opposition No. 91197690 (the “‘690 Opposition”) involving the same parties and based on the same claim. Specifically Sulpasso asserted that John Kevin Timothy (“Timothy”), the Opposer in the ‘690 Opposition and the acting manager of UNL, was in privity with UNL and that Timothy unsuccessfully asserted claims of likelihood of confusion under Section 2(d) against the underlying application that became Sulpasso’s registration for “UROCK” based on Timothy’s prior use of the mark “UROCK RADIO.” UNL admitted that it was the same party as the Opposer in the ‘690 Opposition, but argued that claim preclusion did not apply because the ‘690 Opposition was decided on a technical procedure and that UNL’s marks, goods and services at issue in the ‘690 Opposition earlier proceeding were different from the marks, goods and services at issue in the cancellation proceeding.
In order for claim preclusion to apply there must be: (1) identity of parties (or their privies); (2) an earlier final judgment on the merits of a claim; and (3) a second claim based on the same set of transactional facts as the first. With respect to the first factor, UNL conceded that it and the Opposer in the ‘690 Opposition were the same person.
With respect to the second element, the ‘690 Opposition was dismissed with prejudice because Timothy failed to produce any testimony or evidence in support of his opposition. Although UNL argued that claim preclusion was inapplicable because the ‘690 Opposition was ended by a “technical procedure”, for purposes of claim preclusion, it constituted a final judgment on the merits
Finally, the TTAB determined that the cancellation proceeding and the ‘690 Opposition involved the same transactional facts. The complaint in the ‘690 Opposition alleged priority of use and likelihood of confusion based on common law rights in “UROCK” and various URLS, including but not limited to urockradio.net, the urocknetwork.com, urocknetwork.net, urock.info and urocradio.net. Additionally, in his motion for summary judgment in the ‘690 Opposition, Timothy specifically asserted rights in “THE UROCK NETWORK” mark based on prior use. Thus, UNL’s argument that the ‘690 Opposition was only focused on rights in the mark “UROCK RADIO” was unpersuasive. Not only did UNL and its alter ego, Timothy, have the facts necessary to bring a claim of likelihood of confusion relating to alleged priority rights in the mark “THE UROCK NETWORK” based on prior use at the time of filing the 690 Opposition, but Timothy actually included “THE UROCK NETWORK” in the 690 Opposition. Thus there was no genuine dispute that claim preclusion barred UNL’s current cancellation proceeding.
As has been made previously clear by the Supreme Court’s decision in B&B Hardware, think through the downstream consequences of TTAB proceedings before embarking on the journey.