DFC Expo LLCv.Brian Coyle

Trademark Trial and Appeal Board

Mar 29, 2016

No. 92062323 (T.T.A.B. Mar. 29, 2016)

CME Mailed: March 29, 2016

Cancellation No. 92062323
DFC Expo LLC
v.
Brian Coyle

Before Bergsman, Wellington, and Heasley,
Administrative Trademark Judges.

By the Board:

This case now comes up on Respondent’s motion, filed November 9, 2015, for
partial summary judgment on the ground that Petitioner’s likelihood of confusion
claim is barred by res judicata or claim preclusion. The motion is fully briefed.
Background
1. Current Action
Petitioner seeks cancellation of Registration No. 4714577 for the mark set forth
below for “mobile beverage cart services featuring self-serve gourmet soda” in
International Class 35:1

1 Registered April 7, 2015 based on an application filed on October 16, 2012.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92062323

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In its petition to cancel, Petitioner alleges prior common law use of the mark SODA
CITY FIRE DEPT.2 and the same design mark subject to the involved registration for
“mobile beverage cart services featuring self-serve gourmet soda.”3 As grounds for
cancellation, Petitioner alleges likelihood of confusion, fraud and abandonment.
Although not identified as a claim in the ESTTA cover sheet, the body of the petition
to cancel also includes allegations that Respondent is not the owner of the involved

2 In the petition to cancel, Petitioner’s mark appears both as SODA CITY FIRE DEPT. (with
a period) and SODA CITY FIRE DEPT (without a period). For consistency purposes, we refer
to Petitioner’s mark as SODA CITY FIRE DEPT. (with a period) unless quoting directly from
Petitioner’s filings.
3 In the ESTTA cover sheet to the petition to cancel, Petitioner asserts ownership of
application Serial No. 86746768 for the mark for
“concession stands featuring mugs, sodas and souvenirs.” The filing date of the application
(September 3, 2015) and alleged dates of first use and first use in commerce (April 12, 2015)
are later than the filing date of the involved registration (October 16, 2012), and Petitioner
has not expressly alleged in the body of the petition to cancel that it has prior rights in this
mark. Accordingly, Petitioner has not adequately pleaded a claim of priority and likelihood
of confusion based on this design mark.
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mark. More specifically, Petitioner alleges that it developed and first used the
involved mark and that Respondent “took” the mark from it. Petition, ¶¶ 4-5.
2. Prior Action
On April 23, 2013, Petitioner filed Opposition No. 91210358 against the
application underlying the registration involved here (the “Prior Action”). 5
TTABVUE 18-23. In the Prior Action, Petitioner pleaded prior common law use of the
mark SODA CITY FIRE DEPT. and the same design mark subject to the involved
application, both for “mobile beverage cart services featuring self-serve gourmet
soda.” Id. As grounds for opposition, Petitioner pleaded likelihood of confusion and
non-ownership. Id. On February 27, 2015, the Board issued an order entering
judgment against Petitioner for failure to prosecute pursuant to Trademark Rule
2.132(a) and dismissing the Prior Action with prejudice. 5 TTABVUE 73.
Motion for Summary Judgment
Respondent seeks partial summary judgment in his favor on the ground that
Petitioner is barred from bringing a claim of priority and likelihood of confusion
because of the judgment in the Prior Action.
Summary judgment is appropriate only where there are no genuine disputes as to
any material facts, 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 of material fact, and that he is
entitled to a judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting, 833 F.2d 1560, 4 USPQ2d
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1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record,
a reasonable fact finder could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed
in a light most favorable to the non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The
Board may not resolve genuine disputes as to material facts; it may only ascertain
whether genuine disputes as to material facts exist. See Lloyd’s Food Prods., 25
USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544.
Under the doctrine of res judicata or claim preclusion, “a judgment on the merits
in a prior suit bars a second suit involving the same parties or their privies based on
the same cause of action.” Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d
1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326
n.5 (1979)). Thus, claim preclusion will bar a second suit if: (1) there is identity of the
parties (or their privies); (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. Jet, 55 USPQ2d at 1856; Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448
F.3d 1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006); URock Network, LLC v. Sulpasso,
115 USPQ2d 1409, 1411 (TTAB 2015). The bar against re-litigation extends to claims
that were raised or could have been raised in an earlier action. Allen v. McCurry, 449
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U.S. 90, 94 (1980); see also Migra v. Warren City School Dist. Bd. of Educ., 465 U.S.
75, 77 n.1 (1984) (“Claim preclusion refers to the effect of a judgment in foreclosing
litigation of a matter that never has been litigated, because of a determination that
it should have been advanced in an earlier suit.”); Aspex Eyewear Inc. v. Marchon
Eyewear Inc., 101 USPQ2d 2015, 2020 (Fed. Cir. 2012) (“‘claim splitting’ … is
forbidden by the principles of res judicata.”); Perma Ceram Enters. Inc. v. Preco Indus.
Ltd., 23 USPQ2d 1134, 1138 (TTAB 1992).
Petitioner has not presented any arguments in response to Respondent’s assertion
that claim preclusion forecloses its likelihood of confusion claim,4 and we find that
there are no genuine disputes of material fact that each element of claim preclusion
has been met with respect to this claim. The parties in both actions are identical, and
the Prior Action resulted in a final judgment on the merits. See Int’l Nutrition Co. v.
Horphag Research, Ltd., 220 F.2d 1325, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000) (a
party “cannot avoid the bar of res judicata on the ground that [its] … opposition was
abandoned and dismissed for failure to prosecute”); URock Network, 115 USPQ2d at
1411-12 (holding dismissal for failure to prosecute was a final judgment giving rise
to claim preclusion); Orouba Agrifoods Processing Co. v. United Food Import, 97
USPQ2d 1310, 1313 (TTAB 2010). Moreover, in both cases, Petitioner has alleged

4 Petitioner argues only that there are genuine disputes of material fact regarding its claim
of fraud and allegations that Respondent has not used the involved mark. Such arguments
are not responsive to Respondent’s motion, which seeks summary judgment only on the claim
of likelihood of confusion.
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priority and likelihood of confusion based on common law rights in the mark SODA
CITY FIRE DEPT and the involved design mark.5
Because there are no genuine disputes of material fact that Petitioner’s claim of
priority and likelihood of confusion is barred by claim preclusion, Respondent’s
motion for partial summary judgment is GRANTED.
Petitioner’s Remaining Claims
1. Non-ownership
In both proceedings, Petitioner has pleaded a claim for non-ownership on the
ground that it owns the involved mark rather than Respondent. See Petition, ¶¶ 4-5;
5 TTABVUE 21. Respondent has not moved for summary judgment on Petitioner’s
non-ownership claim; however, pursuant to Fed. R. Civ. P. 56(f) the Board may
“consider summary judgment on its own after identifying for the parties material
facts that may not be genuinely in dispute.” Accordingly, Petitioner is allowed until
TWENTY DAYS from the mailing date of this order to show cause as to why
judgment should not be entered against it with respect to its claim of non-ownership
on the ground that the claim is barred by claim preclusion.

5 To the extent Petitioner intended to plead priority and likelihood of confusion based on the
design mark , subject to pleaded application Serial
No. 86746768, any such claim would have been available as of the filing date of the Prior
Action, and as such, also would be barred by claim preclusion.
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2. Fraud
Fraud in procuring a trademark registration occurs when an applicant for
registration knowingly makes a specific false, material representation of fact in
connection with an application to register, with the intent of obtaining a registration
to which he is otherwise not entitled. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
1938, 1939 (Fed. Cir. 2009); Qualcomm Inc. v. FLO Corp., 93 USPQ2d 1768, 1770
(TTAB 2010). A claim of fraud must set forth all elements of the claim with a
heightened degree of particularity in compliance with Fed. R. Civ. P. 9(b). See Asian
and W. Classics B.V. v. Selkow, 92 USPQ2d 1478, 1478-79 (TTAB 2009). As such,
“allegations based ‘on information and belief’ must be accompanied by a statement of
facts upon which the belief is founded.” Id. at 1479. In addition, intent to deceive the
USPTO is a specific element of a fraud claim, and must be sufficiently pleaded. In re
Bose, 91 USPQ2d at 1939-1940; Asian and W. Classics, 92 USPQ2d at 1479.
As the basis for its claim of fraud, Petitioner alleges:
• “On information and belief, Registrant obtained the federal registration for
the SODA CITY FIRE DEPT mark fraudulently by representing that he was
using the mark, when in fact Registrant was not using the SODA CITY FIRE
DEPT trademark as he fraudulently claimed in the Statement of Use filed
with the United States Patent and Trademark Office.” Petition, ¶ 6.

• “Respondent registered his mark SODA CITY FIRE DEPT fraudulently, and
this Board should cancel his registration as a direct result of said fraudulent
acts.” Id. at ¶ 14.

Petitioner has not supported its allegation made on “information and belief” with
any specific factual allegations, nor has it alleged that Respondent acted knowingly
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and with an intent to deceive the USPTO. As such, Petitioner has fallen short of
stating a claim for fraud upon which relief can be granted.
Although we often allow parties an opportunity to re-plead an insufficient claim,
we decline to do so here, as Petitioner’s theory of fraud is either factually implausible
or based on facts in existence at the time Petitioner filed the Prior Action. Petitioner’s
attempted claim of fraud is based on the allegation that Respondent was not using
his mark as of the filing date of his “Statement of Use.” Respondent, however, never
filed a statement of use. Rather, he filed the underlying application based on an
allegation of use pursuant to Section 1(a) of the Trademark Act. To the extent
Petitioner is attempting to allege non-use as of the date Respondent filed his use-
based application, such alleged facts, if true, would have existed at the time Petitioner
filed the Prior Action.6 7 TTABVUE 10-11.
Accordingly, Petitioner’s attempted claim of fraud is STRICKEN WITH
PREJUDICE.
3. Abandonment
To assert a claim of abandonment, a petitioner must allege either “a prima facie
case of abandonment by a pleading of at least three consecutive years of non-use or
must set forth facts that show a period of non-use less than three years coupled with

6 Petitioner asserts that it was only after the Prior Action that it learned that Respondent
had “obtained his trademark because he claimed that he was already using his trademark in
interstate commerce.” 7 TTABVUE 9-10, ¶ 3. This assertion strains credulity, as the ESTTA
cover sheet to the complaint in the Prior Action clearly refers to Respondent’s alleged dates
of first use. But even if this statement were true, the fact that Respondent filed his
application based on a claim of use existed at the time Petitioner filed the Prior Action, and
Petitioner should have been aware of it.
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an intent not to resume use.” Otto Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861,
1863 (TTAB 2007) (internal citation omitted). Although the ESTTA cover sheet to the
petition to cancel identifies abandonment as a claim, the only allegation in the
petition to cancel possibly relating to abandonment is the allegation that Respondent
was not using his mark as of the date he filed a “Statement of Use.” Petition, ¶ 6. As
noted above, this allegation is factually implausible, and in any event, is insufficient
on its own to set forth a claim of abandonment. Nevertheless, Petitioner’s summary
judgment evidence suggests that Petitioner may be able to allege a prima facie claim
of abandonment that may not be barred by claim preclusion.
Petitioner has filed the declaration of Peter Coyle, one of its partners, who attests
that “none of the partners or employees of [Petitioner] have ever seen [Respondent]
using his trademark or making any sales of soda throughout the relevant geographic
areas where [Respondent] would be doing business.” 7 TTABVUE 10-11. Allegations
that a defendant has never used his mark for the identified goods or services may
form the basis for a claim of abandonment. ShutEmDown Sports, Inc. v. Lacy, 102
USPQ2d 1036, 1042 (TTAB 2012) (abandonment may be based on the theory that the
defendant has never used his mark). As of February 27, 2015 – the date the Prior
Action was terminated – a prima facie claim of abandonment was not available
because three years had not yet passed from the filing date of the underlying
application (October 16, 2012). See ShutEmDown Sports, 102 USPQ2d at 1042 (for a
registration that issues from an application based on Section 1(a) of the Trademark
Act, the three-year period of nonuse for abandonment is measured from respondent’s
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filing date). As such, Petitioner may have a basis for pleading a claim of abandonment
that may not be barred by claim preclusion.7 See Aspex Eyewear, 101 USPQ2d at 2021
(“If the claim did not exist at the time of the earlier action, it could not have been
asserted in that action and is not barred by res judicata.”).
Accordingly, Petitioner is allowed until TWENTY DAYS from the mailing date of
this order to file an amended petition to cancel pleading a claim of abandonment, if
the facts so warrant, failing which the existing allegation pertinent to a claim of
abandonment will be given no further consideration.
Summary
In sum:
1. Respondent’s motion for partial summary judgment is GRANTED with
respect to Petitioner’s claim of priority and likelihood of confusion, which is
DISMISSED WITH PREJUDICE;
2. Petitioner’s attempted claim of fraud is STRICKEN WITH PREJUDICE;
3. Petitioner is allowed until TWENTY DAYS from the mailing date of this order
to show cause as to why judgment should not be entered against it with respect
to its claim of non-ownership; and
4. Petitioner is allowed until TWENTY DAYS from the mailing date of this order
to file an amended complaint alleging a claim of abandonment, if the facts so
warrant.

7 Claim preclusion still might foreclose a claim of abandonment if Respondent is able to
demonstrate that grounds for an abandonment claim based on non-use for less than three
years and an intent not to resume were available during the Prior Action.
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Proceedings otherwise remain suspended.
***