Calavo Growers, Inc.v.Luis Calvo Sanz, S.A.

Trademark Trial and Appeal Board

Apr 11, 2007

No. 91170990 (T.T.A.B. Apr. 11, 2007)

Lykos Mailed: April 11, 2007

Opposition No. 91170990

Calavo Growers, Inc.

v.

Luis Calvo Sanz, S.A

Before Walters, Rogers, and Cataldo, Administrative
Trademark Judges.

By the Board:

This case now comes up for consideration of opposer’s
motion (filed January 12, 2007) for summary judgment on its
claim of res judicata. The parties have fully briefed the
motion.1
The Board has carefully reviewed the parties’
respective arguments and accompanying exhibits, although the
Board has not repeated the parties’ arguments in this order.
I. Background
By way of background, on November 19, 2004, applicant
applied to register the mark displayed below

1 Opposer has submitted a reply brief which the Board has
exercised its discretion to consider. See Trademark Rule
2.127(a).

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.

for “fish and canned fish” in International Class 29.2
Calavo Growers, Inc.3 has opposed registration of
applicant’s mark on the grounds that applicant's applied-for
mark (1) so resembles opposer's previously used and
registered marks that it is likely to cause confusion,
mistake, or deceive prospective consumers under Section 2(d)
of the Lanham Act; (2) will dilute the distinctive quality
of opposer's marks under Section 43(c) of the Lanham Act as
amended; (3) is primarily merely a surname within the
meaning of Section 2(e)(4) of the Lanham Act; and (4) is
barred by the doctrine of res judicata based on the Board’s
determination in a prior proceeding involving opposer’s
predecessor in interest and applicant, Opposition No.

2 Application Serial No. 76621293, alleging a bona fide intention
to use the mark in commerce. The color(s) blue and white is/are
claimed as a feature of the mark with the following description:
“The mark includes three shades of the color blue. The darkest
shade of blue appears beneath the word "CALVO", while a lighter
shade of blue surrounds the word "CALVO" and the lightest shade
of blue is in the outermost top portion. The word "CALVO"
appears in white letters surrounded by shading.”

3 In the notice of opposition, opposer has alleged that it is the
successor-in-interest of Calavo Growers of California.

91122583, Calavo Growers of California v. Luis Calvo Sanz,
S.A..
The previous opposition involved applicant’s
application to register the mark displayed below

for “meat, fish, poultry and game; meat extracts; preserved,
dried and cooked fruits and vegetables; jellies, jams; eggs,
milk; edible oils; canned preserved meat and fish” in
International Class 29.4 In that case, opposer asserted
claims of likelihood of confusion, dilution, and that
applicant’s mark is primarily merely a surname. See
Opposer’s Amended Notice of Opposition. On May 17, 2002,
the Board entered default judgment against applicant,
pursuant to Fed. R. Civ. P. 55(b) for applicant’s failure to
answer the amended notice of opposition.
On November 30, 2006, the Board, noting that the
doctrine of res judicata serves to preclude in appropriate

4 Application Serial No. 75769566, filed August 6, 1999. The
application contains the statement that the English translation
of the term "CALVO" is "BALD" and that the drawing is lined for
the color blue.
cases the relitigation of matters previously litigated,
invited the parties to address this issue by way of a motion
for summary judgment limited to the claim of res judicata.
Opposer then filed the motion for summary judgment which is
the subject of this order.
II. Opposer’s Motion for Summary Judgment
We will now discuss whether summary judgment is
warranted in this case. Summary judgment is an appropriate
method of disposing of cases in which there are no genuine
issues of material fact in dispute, thus leaving the case to
be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317,
106 S.Ct. 2548 (1986). The nonmoving party must be given
the benefit of all reasonable doubt as to whether genuine
issues of material fact exist, and the evidentiary record on
summary judgment, and all inferences to be drawn from the
undisputed facts, must be viewed in the light most favorable
to the nonmoving party. See Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992). When the moving party's motion is
supported by evidence sufficient to indicate that there is
no genuine issue of material fact, and that the moving party
is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
evidence showing the existence of a genuine issue of
material fact for trial.
For the reasons explained below, we find that the
doctrine of res judicata applies to this case.
Under the doctrine of res judicata (or claim
preclusion), the entry of a final judgment "on the merits"
of a claim (i.e., cause of action) in a proceeding serves to
preclude the relitigation of the same claim in a subsequent
proceeding between the parties or their privies, even in
those cases where the prior judgment was the result of a
default or consent. See Lawlor v. National Screen Service
Corp., 349 U.S. 322, 75 S.Ct. 865, 99 L.Ed. 1122 (1955);
Chromalloy American Corp. v. Kenneth Gordon, Ltd., 736 F.2d
694, 222 USPQ 187 (Fed. Cir. 1984); and Flowers Industries,
Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987).
A second suit is barred by res judicata or claim preclusion
if
(1) the parties (or their privies) are identical;
(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, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55
USPQ2d 1854, 1856 (Fed. Cir. 2000).
A. The Parties (or Their Privies) are Identical
No genuine issue of material fact exists regarding the
first factor of the res judicata analysis -- that the
present opposition involves the same parties or their
privies as the prior opposition. Opposer has submitted
evidence in the form of a declaration from Bruce Spurrell,
Director of Purchasing and Risk Management for opposer,
attesting that opposer is the successor-in-interest of
Calavo Growers of California, the plaintiff in the prior
case. Specifically, Mr. Spurrell asserts that opposer
acquired all the rights, title, and interest of the Calavo
Growers of California (including the CALAVO trademark
registrations and applications) pursuant to a merger and
reorganization of the companies. Para. 3, Spurrell
Declaration. Applicant has submitted no evidence to rebut
the assertions contained therein.
B. There Has Been an Earlier Final Judgment on the
Merits of a Claim

With regard to the second factor of the res judicata
analysis, there is no genuine issue of material fact that
there has been an earlier final judgment on the merits of a
claim. As noted inter alia, the Board entered default
judgment against applicant in the prior opposition. It is
well established that a default judgment can operate as a
final judgment on the merits for res judicata. See
International Nutrition Co. v. Horphag Research Ltd., 55
USPQ2d 1492 (Fed. Cir. 2000) and cases cited therein; see
generally Wright, Miller & Cooper, 18A Federal Practice and
Procedure Civil 2d § 4440 (1999).
C. The Second Claim is Based On the Same Set of
Transactional Facts as the First

It is undisputed that the subsequent claims are based
on the same set of transactional facts as the first.
There is no genuine issue of material fact that the claims
asserted by opposer in both proceedings are identical.
In addition, it is undisputed that the literal element
of the marks at issue are identical. Applicant’s slight
modification to the design element of its current
application cannot serve to avoid res judicata. Miller
Brewing Company v. Coy International Corporation, 230 USPQ
675 (TTAB 1986) (“Miller Brewing”) provides an apt
illustration of this principle. In Miller Brewing, the
Board found that the doctrine of res judicata applied to an
applicant's second mark because the second mark differed
from the first mark only insignificantly, and applicant had
abandoned the application for the first mark resulting in a
judgment against the applicant. In reaching its
determination, the Board emphasized that it did not “wish to
encourage losing parties to insignificantly modify their
marks after an adverse ruling and thereby avoid the res
judicata effect of the prior adjudication." See also
Aromatique Inc. v. Lang, 25 USPQ2d 1359 (TTAB 1992).
Lastly, there is no genuine issue of material fact that
the goods of applicant’s present application are merely a
narrowed version of the goods from applicant’s prior
application. Applicant cannot avoid the estoppel effect of
a prior decision by filing a second application that
contains a narrower definition of the goods that were “fully
encompassed” in the previous application. See J.I. Case Co.
v. F.L. Industries, Inc., 229 USPQ 697 (TTAB 1986).
In sum, there is no genuine issue of material fact that
the requisite elements for res judicata have been satisfied.
In view thereof, opposer’s motion for summary judgment is
granted on its claim of res judicata. The opposition is
sustained, and registration of applicant's mark is refused.
The Board notes, however that applicant, in its answer
to the notice of opposition, counterclaimed to cancel five
of opposer’s pleaded registrations on the grounds that the
mark CALAVO has become generic for the goods and services
identified therein, and that the registrations were
fraudulently procured from the USPTO.
In view thereof, applicant is allowed until twenty (20)
days from the mailing date of this order to indicate whether
it would like to proceed on the counterclaims, failing which
said counterclaims shall be dismissed.