Anderson-L’Carttier, Inc.v.George G. Speer, III

Trademark Trial and Appeal Board

Feb 3, 2005

No. 92043657 (T.T.A.B. Feb. 3, 2005)

THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

Mailed: February 2, 2005

Cancellation No. 92043657

Anderson-L’Carttier, Inc.,
d/b/a Arise & Shine Herbal
Products

v.

George G. Speer, III

Before Seeherman, Quinn, and Bucher,
Administrative Trademark Judges

By the Board:

George G. Speer, III owns U.S. Registration No.
2,783,501 for the mark CLEANSE AND PURIFY.COM and Design,1
as shown below,

for “on-line retail store services featuring dietary
supplements, vitamins, mineral and herbal supplements” in
International Class 35. On August 30, 2004, Anderson-
L’Carttier, Inc., d/b/a Arise & Shine Herbal Products, filed
a petition to cancel the registration, claiming a likelihood
Cancellation No. 92043657
of confusion with its U.S. Registration No. 2,480,013 for
the mark THE CLEANSE THYSELF PROGRAM2 for “healthcare
counseling and planning utilizing herbal, nutritional,
mineral and dietary supplements to aid in the removal of
toxins and waste material produced in the body” in
International Class 42.
This case now comes up on respondent’s motion for
summary judgment filed October 13, 2004. As grounds for his
motion, respondent alleges res judicata or claim preclusion.
Petitioner filed its opposition to respondent’s motion for
summary judgment on November 3, 2004, and respondent filed a
reply.3
In support of his motion for summary judgment,
respondent asserts Opposition No. 91150364, “Arise & Shine
Herbal Products, Inc. v. George G. Speer, d/b/a New Horizons
Body, Mind & Spirit”, as the basis for the claim of res

1 Issued November 18, 2003, claiming dates of first use and
first use in commerce of September 18, 1999, and September 30,
1999, respectively.
2 Issued August 21, 2001, claiming dates of first use and first
use in commerce of December 1, 1996.

3 The parties have also filed supplemental submissions.
Respondent filed a motion to strike petitioner’s exhibits to its
opposition to the motion for summary judgment, as they were not
supported by an affidavit. Petitioner subsequently filed a
surreply that is being treated as a response to the motion to
strike. In its response, petitioner points out that it had filed
an affidavit. However, the supporting affidavit does not
properly introduce petitioner’s exhibits, and therefore the
exhibits have not been considered by the Board. Even if the
Board had considered the exhibits, the result would be the same,
as they do not address the issue of claim preclusion before the
Board. The motion to strike is denied.
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Cancellation No. 92043657
judicata. Respondent argues that the previous opposition
involved the same claim, namely a likelihood of confusion
between the same marks; that while the prior proceeding was
dismissed for failure to prosecute, judgment by default is
just as conclusive for purposes of res judicata; and that
petitioner had a full opportunity to litigate the same claim
and an adverse final judgment was entered. To establish his
allegation that the claims involved are identical,
respondent compares the allegations in Opposition No.
91150364 with the current petition to cancel, and concludes
that the issues presented in the prior proceedings are the
same as the ones raised here. To establish his allegation
that the parties, in particular, the party in the position
of plaintiff, are identical or in privity with petitioner,
respondent provides copies of articles of incorporation for
Anderson-L’Carttier, Inc., articles of merger with Arise &
Shine Herbal Products, Inc., and the plan of merger, all
executed on July 1, 2003.
In its opposition to the motion for summary judgment,
petitioner argues that “the doctrine of issue preclusion
requires a prior and valid final judgment ‘on the merits’”
(Br. at 5), and because the prior opposition was based on a
motion for judgment for failure to prosecute, the issue of

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Cancellation No. 92043657
“likelihood of confusion was ‘never actually litigated and
necessary to the judgment’ of dismissal”. (Br. at 6).
The ground for respondent’s motion for summary judgment
rests upon an issue of law: whether petitioner is precluded
from bringing this action based on res judicata. Res
judicata is a doctrine of claim preclusion that operates
between the parties simply by virtue of a final judgment on
the merits by one court that merges the claim if the
plaintiff prevails, or works as an absolute bar to a later
identical suit, if the defendant prevails. See, Wright,
Miller & Cooper, Federal Practice and Procedure:
Jurisdiction § 4402. For the doctrine to apply, the final
judgment must be entered on the merits, and the second suit
must involve the same parties or their privies and the same
cause of action. The doctrine applies even in those cases
where the prior judgment was the result of a default or
consent. See International Nutrition Co. v. Horphag
Research Ltd., 220 F.2d 1325, 55 USPQ2d 1492, 1494 (Fed.
Cir. 2000). On the other hand, collateral estoppel, or
issue preclusion, differs from res judicata. Under
collateral estoppel, an issue must be determined by a court
of competent jurisdiction; it does not apply when a default
judgment issues.
A review of the evidence in this proceeding shows that
the previous opposition and this cancellation involve the
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Cancellation No. 92043657
same claim. Both proceedings challenged Mr. Speer’s
eligibility to register the CLEANSE & PURIFY.COM mark based
on a likelihood of confusion with petitioner’s THE CLEANSE
THYSELF PROGRAM registration. The evidence further shows
that opposer, Arise & Shine Herbal Products, Inc., was
merged into petitioner Anderson-L’Carttier, Inc., d/b/a
Arise & Shine Herbal Products, on July 1, 2003, during the
litigation of Opposition No. 91150364, the final decision in
that case having issued on August 21, 2003. And finally,
the opposition resulted in final judgment against opposer,
Arise & Shine, and in favor of respondent herein, George G.
Speer III. Thus, respondent has established that there was
a final judgment on the merits in the prior proceeding, and
the second suit involves the same parties or their privies
and the same cause of action. Thus, under the doctrine of
claim preclusion, the second suit is barred or the judgment
merged.
Based on our finding that the parties involved in
Opposition 91150364 and this proceeding are the same, that
the act or occurrence involved in both cases is the same,
and that judgment has been entered in the prior proceeding
in favor of defendant, respondent is entitled to judgment as
a matter or law based on the doctrine of claim preclusion
and, accordingly, his motion for summary judgment is hereby
granted.
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Cancellation No. 92043657
The petition to cancel is hereby dismissed.
.o0o.
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