American Rice, Inc.v.Dunmore Properties S.A.

Trademark Trial and Appeal Board

Jan 9, 2009

No. 92047008 (T.T.A.B. Jan. 9, 2009)

Wolfson

Mailed: January 9, 2009

Cancellation No. 92047008

American Rice, Inc.

v.

Dunmore Properties S.A.

Before Quinn, Holtzman and Walsh,
Administrative Trademark Judges.

By the Board:

This case now comes before the Board for consideration
of respondent’s motion for summary judgment. The motion is
fully briefed.1
A motion for summary judgment is a pretrial device,
intended to save the time and expense of a full trial when a
party is able to demonstrate, prior to trial, that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
TBMP § 528.01 (2d ed. rev. 2004); Celotex Corp. v. Catrett,
477 U.S. 317 (1986); and Opryland USA Inc. v. Great American
Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.

1 Respondent initially moved to dismiss this action under Fed. R.
Civ. P. 12(b)(6) on March 12, 2007. The Board noted respondent’s
reliance on materials outside the pleadings and informed the
parties that the motion would be treated as a motion for summary
judgment. Each party was provided the opportunity for
supplemental briefing, which has now been completed.

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.
Cancellation No. 92047008
2
1992). The Board may not resolve issues of material fact,
but can only ascertain whether genuine disputes exist
regarding such issues. The Board views the evidence 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 Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, supra.
In the case at hand, respondent contends that the
doctrine of res judicata bars petitioner from bringing an
action to cancel respondent’s registration,2 because in
2003, petitioner filed a petition to cancel the registration
and the Board dismissed the petition with prejudice.3
The starting place for any analysis of res judicata is
for the Board to determine whether the party raising the
issue is asserting “claim preclusion” or “issue preclusion.”
See Chromalloy American Corporation v. Kenneth Gordon (New
Orleans, Ltd.), 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984).
Here, the species of res judicata involved is claim
preclusion, rather than issue preclusion, inasmuch as no
issues were actually litigated in the prior opposition
proceeding, which was dismissed with prejudice following
petitioner’s voluntary withdrawal of the petition after

2 Registration No. 2532912 for the mark BINT ALARAB for “rice;”
issued January 22, 2002; Section 8 (6 year) declaration accepted.

3 Cancellation No. 92041652; dismissed with prejudice on May 28,
2004.
Cancellation No. 92047008
3
answer and without respondent’s written consent. See
Mother’s Restaurant Incorporated v. Mama’s Pizza Inc., 723
F.2d 1566, 221 USPQ 294 (Fed. Cir. 1983); Chromalloy
American, supra, 726 USPQ at 189; and Institut National Des
Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875
(TTAB 1998).
Under the doctrine of 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 Systems, 223 F.3d 1360, 55 USPQ2d
1854 (Fed. Cir. 2000), quoting The Parklane Hosiery Co. v.
Shore, 439 U.S. 322, 326 n. 5 (1979). Thus, claim preclusion
will bar a party in a second suit if: (1) there is identity of
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 USPQ at 1856; see also Lawlor v. National Screen
Service Corp., 349 U.S. 322 (1955); and Flowers Industries,
Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987).
Over the years, the doctrine has come to incorporate
common law concepts of merger and bar, extending to those
claims or defenses that could have been raised, even if they
were not, in the prior action. See Perma Ceram Enterprises
Inc. v. Preco Industries Ltd., 23 USPQ2d 1134, 1138 (TTAB
1992); see also Jet, 55 USPQ2d at 1856 (“Claim preclusion
Cancellation No. 92047008
4
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.”)
In the case at hand, there is no dispute that the
parties are identical in both actions, and that the prior
cancellation resulted in a final judgment on the merits.
Thus, two of the three prongs upon which claim preclusion
may be found have been satisfied. The third prong requires
that the claims be based on the same set of transactional
facts, including claims that should have been, but were not,
advanced in the earlier action. For the reasons discussed
below, we find that petitioner is foreclosed from bringing
by this action both the likelihood of confusion and dilution
claims, as well as the fraud claim against respondent’s
registration.
The petition that was filed in 2003 alleged priority
and likelihood of confusion under Section 2(d) of the
Trademark Act, based on petitioner’s claim of ownership of
the mark ABU BINT for rice,4 and dilution of petitioner’s
allegedly famous mark ABU BINT. The petition filed herein
(specifically, on the five-year anniversary date of the
registration) presents virtually identical allegations of

4 Registration No. 1195316 for the mark ABU BINT for “rice;”
issued May 11, 1982; renewed (10 year) on October 31, 2001.

Cancellation No. 92047008
5
priority and likelihood of confusion and dilution. Now, as
then, petitioner alleges that it has priority based on use
and ownership of a registration for the mark ABU BINT for
“rice” and that respondent’s mark BINT ALARAB so resembles
petitioner’s mark as to be likely to cause confusion and
lead to deception among customers. Petitioner further
alleges, now as then, that its mark is famous and became
famous prior to the date respondent first started using its
mark, and that respondent’s use of its mark causes dilution
of the distinctive quality of petitioner’s mark. While
petitioner argues that there "may be" changed circumstances
since the filing of the first petition and thus, its claims
of likelihood of confusion or dilution "could be" based on a
different set of transactional facts in this action,
petitioner has not alleged that any changed circumstances
have occurred, and petitioner has not stated any different
facts in the present petition. To the contrary, petitioner
has reasserted the identical set of facts that formed the
basis of its claims under Sections 2(d) and 43(c) in 2003.
Moreover, petitioner has not presented any evidence that
even suggests changed circumstances. The claims of
likelihood of confusion and dilution are barred in this
action.
Cancellation No. 92047008
6
Moreover, petitioner’s newly added5 fraud claim is also
barred under the doctrine of claim preclusion.
Specifically, petitioner alleges that respondent falsely
executed the declaration in the application for the BINT
ALARAB mark by claiming it had the exclusive right to use
the mark despite its knowledge of petitioner’s prior rights,
and that respondent falsely stated in the statement of use
for its application that the mark was used in commerce
between the U.S. and the Kingdom of Saudi Arabia on
September 14, 2000.
There is nothing in the record to suggest that
petitioner was not fully aware of the set of facts
supporting petitioner’s allegations of fraud at the time it
filed the 2003 action. To the contrary, petitioner alleged
in both actions that respondent was aware of petitioner’s
use of the mark ABU BINT since 1983; that a federal court
has held the mark BINT AL-ARAB, owned by an alleged privy of
respondent, to be confusingly similar to petitioner’s ABU
BINT mark and that the registration for the BINT AL-ARAB
mark was cancelled as a result of the lawsuit. These facts
form the basis of petitioner’s allegation that respondent
committed fraud in the execution of the declaration. These

5 The petition as originally filed in this case (on January 22,
2007) did not plead fraud. The Board granted petitioner’s motion
for leave to amend its pleading to assert fraud and the amended
pleading was filed on June 19, 2007.

Cancellation No. 92047008
7
same facts were alleged in the 2003 petition to cancel.
Although fraud was not pleaded at that time, no new facts
have been stated in this action that were not presented
earlier. Petitioner is therefore precluded from claiming
fraud in the execution of the declaration supporting
respondent’s application for the mark BINT ALARAB.
Petitioner could have raised this claim in the prior action.
Petitioner's second count of fraud, pertaining to
respondent’s allegedly false statement of the first date of
use in commerce of its mark, is barred as well. This claim
also could have been raised in the prior action, as it is
based on facts that occurred in 2001, when respondent filed
the allegedly false statement of use. Petitioner has not
presented any new facts or facts occurring subsequent to the
filing of the statement of use on May 25, 2001, that would
give rise to a claim of fraud in the execution of the
document. Thus, petitioner’s claim was extinguished in the
judgment entered in the 2003 action.6
In sum, petitioner is barred by the doctrine of claim
preclusion from bringing this action to cancel respondent’s

6 In any event, this claim would fail on the merits. It is well
established that errors in the date of first use in commerce of
marks do not constitute fraud so long as use of the mark precedes
the filing date of the application that matures to a
registration, or, as in this case, so long as use of the mark
precedes the filing date of the statement of use. See Standard
Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d
1917, 1926 (TTAB 2006); Colt Industries Operating Corp. v.
Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983).

Cancellation No. 92047008
8
registration for the mark BINT AL-ARAB on the grounds of
priority and likelihood of confusion, dilution, and fraud.
Accordingly, there are no genuine issues of material fact in
dispute and entry of judgment as a matter of law is
appropriate. Respondent’s motion for summary judgment is
granted and the petition to cancel is denied.