GE Osmonics, Inc.v.Osmosis Technology, Inc.

Trademark Trial and Appeal Board

Sep 29, 2009

No. 91184968 (T.T.A.B. Sep. 29, 2009)

Winter
Mailed: September 29, 2009

Opposition No. 91184968

GE Osmonics, Inc.

v.

OSMOSIS TECHNOLOGY, INC.

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

By the Board:

Osmosis Technology, Inc. (hereafter “applicant”) seeks
to register the term OSMOTECH for use in connection with
“reverse osmosis separation and ultra filtration systems for
water purification for residential and commercial and
industrial use consisting of filter membranes, housings for
filter membranes and connection fittings for housings.”1
GE Osmonics, Inc. (hereafter “opposer”) opposes
registration of the applied-for mark on the ground of
likelihood of confusion. In support of its claim, opposer
essentially alleges priority based on common law rights
accruing from more than thirty-five years of assertedly
continuous use of the trademark OSMO in connection with

1 Application Serial No. 76681931, filed September 17, 2007,
based on applicant’s alleged bona fide intent to use the mark in
commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91184968
2
“reverse osmosis solvent separation units, including, but not
limited to reverse osmosis separation equipment and
components thereof for water purification and the like”
(notice of opp., ¶1). Opposer also pleads ownership of two
registrations for the mark OSMO for, respectively, “reverse
osmosis solvent separation units”2 and “equipment for
treating water and other liquids, namely, filters, filter
cartridges, reverse osmosis membranes, and reverse osmosis
membrane units.”3 Opposer also alleges that applicant’s
predecessor had previously agreed to change its corporate
name from “Osmotech” and had ceased using that corporate
name. Additionally, opposer alleges that the registration of
the mark involved in this proceeding is barred by the
doctrine of res judicata as a result of a previous decision
of the Board in Opposition No. 91117751, in which opposer’s
opposition to registration of applicant’s previous
application for the mark OSMOTECH, application Serial No.
75721083, was sustained.
In its answer,4 applicant has essentially denied the
allegations set forth in the notice of opposition.

2 U.S. Reg. No. 978588, issued on February 12, 1974; Sections 8 &
15 affidavit accepted and acknowledged March 24, 1980; renewed
January 6, 2006.

3 U.S. Reg. No. 3424216, issued on May 6, 2008.

4 We note that in the Board’s order mailed September 8, 2008, the
due date for applicant’s answer was reset to September 10, 2008,
but that the answer was not filed until October 31, 2008. In
Opposition No. 91184968
3
This case now comes up on opposer’s fully briefed motion
(filed June 16, 2009) for summary judgment in its favor on
the basis that registration of applicant’s mark is barred by
the doctrine of res judicata.5
Preliminary Matter
At the outset, we note that opposer’s motion was filed
with the Board after the commencement of opposer’s testimony
period as last reset in the Board’s order mailed September 8,
2008 (see footnote 4 supra). Specifically, opposer’s
testimony period was reset to close on July 7, 2009;
therefore, the testimony period commenced on June 8, 2009.
See Trademark Rule 2.121(c), 37 C.F.R. § 2.121(c). However,
as noted, the subject motion was not filed until June 16,
2009. In view thereof, before addressing the merits of the
motion for summary judgment, we must decide whether the Board
should exercise its discretion under Trademark Rule
2.127(e)(1) to consider said motion or to deny it as
untimely. See Trademark Rule 2.127(e)(1), 37 C.F.R. §
2.127(e)(1).
Opposer does not address the timeliness of its motion
for summary judgment in its motion. Instead, the issue of

view of our decision herein, applicant’s technical default is
moot.

5 In the alterative to the motion for summary judgment, opposer
requests that the Board “extend” (i.e. reopen) all discovery and
trial dates in this matter by sixty days. In view of the
Opposition No. 91184968
4
timeliness is raised by applicant in its brief in opposition
to the summary judgment motion. Applicant first argues that
the motion is untimely because opposer did not first serve
its initial disclosures on applicant as required under
Trademark Rule 2.127(e)(1). Applicant next argues that the
subject motion is untimely because it was filed after the
beginning of opposer’s trial period. In view of the alleged
failure of opposer to follow “any of the Board’s deadlines,”
applicant argues “there is no valid reason for the Board to
allow this Motion to proceed” (opposition brief, p. 4).
Following these arguments, applicant responds on the merits
to the motion for summary judgment.
In reply, opposer points out that it was not required to
serve initial disclosures prior to filing its motion for
summary judgment because the basis for the motion is res
judicata. In regard to the filing of the motion subsequent
to the commencement of its testimony period, opposer argues
that the Board should exercise its discretion to consider its
summary judgment motion because the basis for the motion is
res judicata, applicant has responded on the merits, and, if
granted, the need for trial would be eliminated, “thereby
conserving the resources of the Board and the parties”
(reply, p. 4).

disposition of the motion for summary judgment, the alternative
motion is moot.

Opposition No. 91184968
5
Trademark Rule 2.127(e)(1) sets forth the procedural
guidelines for the filing of a motion for summary judgment,
in relevant part, as follows:
A party may not file a motion for summary judgment until
the party has made its initial disclosures, except for a
motion asserting claim or issue preclusion or lack of
jurisdiction by the Trademark Trial and Appeal Board. A
motion for summary judgment, if filed, should be filed
prior to the commencement of the first testimony period,
as originally set or as reset, and the Board, in its
discretion, may deny as untimely any motion for summary
judgment filed thereafter.

Trademark Rule 2.127(e)(1), 37 C.F.R. § 2.127(e)(1)
[emphasis in bold].

However, the Board has considered motions for summary
judgment filed after the commencement of the first testimony
period when the motion involves a matter of res judicata or
collateral estoppel, was submitted by agreement of the
parties (prior to the taking of any testimony), or was not
opposed by the nonmoving party on the issue of untimeliness.
See TBMP § 528.02 (2d ed. rev. 2004) and cases cited therein.
Here, the basis for the subject motion is res judicata,
therefore, applicant’s argument that opposer’s motion is
untimely because opposer did not serve its initial
disclosures on applicant is unsupported by the rules. As to
the filing of the motion after the commencement of opposer’s
trial period, we note that applicant has responded to the
motion on its merits and that the delay in filing was
relatively short, that is, the motion was filed nine days
Opposition No. 91184968
6
late. Further, under the circumstances of this case wherein
we find infra that the involved application is indeed barred
by the doctrine of res judicata, we also find it to be in the
interest of judicial economy to exercise our discretion to
not deny the subject motion for summary judgment as untimely
and to consider it on its merits. See Trademark Rule
2.127(e)(1), 37 C.F.R. § 2.127(e)(1). See also 18 Fed. Prac.
& Proc. Juris.2d § 4403 (2009) (“The Supreme Court has
observed that res judicata “has the dual purpose of
protecting litigants from the burden of relitigating an
identical issue with the same party or his privy and of
promoting judicial economy by preventing needless
litigation”).
Motion for Summary Judgment
Opposer argues that the OSMOTECH mark in the involved
application is barred from registration as a result of a
previous disposition of the Board on its merits,
specifically, in Opposition No. 91117751, pertaining to
application Serial No. 75721083 for the mark OSMOTECH,
wherein the Board sustained the opposition. Opposer contends
that the application involved in the first proceeding was for
the identical mark, OSMOTECH; that said application described
the same goods identified in the application involved in this
proceeding; and that the prior proceeding was based on the
same grounds, i.e. likelihood of confusion, and involved the
Opposition No. 91184968
7
same parties. Opposer clarifies that it is the successor-in-
interest to the opposer in the prior proceeding. In support
of its arguments, opposer has submitted with its motion,
inter alia, the declaration of its counsel, Paul J.
Robbennolt of Dorsey & Whitney LLP, the declaration of
Barbara Toop, the Assistant Secretary for GE Osmonics, Inc.,
copies of the registration certificates for opposer’s two
pleaded registrations, and a copy of the Board’s order in
Opposition No. 91117751. In response to applicant’s
objections, opposer has submitted with its reply brief
photocopies of USPTO TARR and TESS printouts of opposer’s
pleaded registration for OSMO supported by a second
declaration of opposer’s counsel.
In opposition to opposer’s motion, applicant essentially
argues that the facts involved in the two proceedings are
different and, therefore, res judicata is not applicable.
For instance, applicant mentions that (i) opposer has pleaded
a new registration for OSMO in this proceeding that did not
exist at the time of the previous proceeding, which
registration issued under Section 2(f), and that (ii) opposer
has not pleaded, as it did in the prior proceeding, a
registration for the mark OSMO and design.6 Applicant also

6 U.S. Reg. No. 932228 issued April 11, 1972 for “reverse
osmosis solvent separation units”; expired January 18, 2003 (see
Board’s order mailed January 29, 2004, pages 2-3, footnote 4;
Exh. G, motion).

Opposition No. 91184968
8
asserts that the Trademark Office did not cite opposer’s OSMO
mark against applicant’s application for the mark OSMOTIK.7
Further, applicant objects to the declarations submitted by
opposer’s counsel and opposer’s officer as using an improper
declaration form and as hearsay.
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). The purpose of
summary judgment is one of judicial economy, that is, to save
the time and expense of a useless trial where no genuine
issue of material fact remains and more evidence than is
already available in connection with the summary judgment
motion could not reasonably be expected to change the result.
Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222
USPQ 741, 743 (Fed. Cir. 1984).
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 judgment as a matter of law.
Fed. R. Civ. P. 56(c); and Celotex Corp. v. Catrett, 477 U.S.
317, 106 S. Ct. 2548 (1986). Additionally, the evidence must

7 The Board notes applicant’s Exhibit 3, a copy of a USPTO TESS
printout regarding its registration for OSMOTIK for “reverse
osmosis separation or ultra filtration systems for water
purification for residential and commercial and industrial use
consisting of filter membranes, housings for filter membranes and
connection fittings for housings,” U.S. Reg. No. 2110601, issued
Opposition No. 91184968
9
be viewed in a light favorable to the non-movant, and all
justifiable inferences are to be drawn in the non-movant’s
favor. The Board may not resolve issues of material fact; it
may only ascertain whether such issues are present. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Before we consider the merits of the motion for summary
judgment, we must first consider the question of whether
genuine issues exist as to opposer’s standing to bring this
opposition proceeding. Standing is a threshold issue that
must be proven by a plaintiff in every inter partes case.
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999) and Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982). The purpose of the
standing requirement, which is directed solely to the
interest of the plaintiff, is to prevent litigation when
there is no real controversy between the parties. Lipton
Industries, 213 USPQ at 189.
We note that opposer attached to its reply brief a
current printout of information from the TESS and TARR

on November 4, 1997. Sections 8 & 15 affidavit accepted and
acknowledged on July 29, 2004; renewed June 17, 2008.

Opposition No. 91184968
10
electronic database records of the USPTO showing the current
status and title of its pleaded registration for the mark
OSMO (see footnote 2, supra). See Trademark Rule
2.122(d)(1), 37 C.F.R. § 2.122(d)(1). Further, opposer’s
previous opposition to the registration of the involved mark
was sustained in the prior proceeding. In view thereof, we
find that there is no genuine issue of material fact as to
opposer’s standing. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Jewelers
Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021 (Fed. Cir. 1987).
We turn now to the merits of the motion for summary
judgment. Under the doctrine of claim preclusion or res
judicata, 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 prior judgment was the result of a default
or consent. See Lawlor v. National Screen service Corp., 349
U.S. 322 (1955); and Chromalloy American Corp. v. Kenneth
Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984).
Thus, “a second suit will be barred by claim preclusion 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
Opposition No. 91184968
11
transactional facts as the first.” See Parklane Hosiery Co.
v. Shore, 439 U.S. 322, 327 n.5 (1979); Jet, Inc. v. Sewage
Aeration Systems, 223 F.3d 1360, 1362, 55 USPQ2d 1854, 1856
(Fed. Cir. 2000).
Here, there is no dispute that all three conditions have
been met for res judicata to bar registration of the involved
mark. Applicant does not argue that opposer in this
proceeding is not the same as the opposer in the previous
proceeding; and the Board’s order in the prior proceeding
(see Board’s order mailed January 29, 2004, page 1, footnote
1; Exh. G, motion) indicates that the Board recognized the
change of ownership through merger and subsequent name change
of opposer. In fact, the final decision references the
current opposer, GE OSMONICS, INC.
There is also no dispute that there was a final judgment
in Opposition No. 91117751. The opposition was sustained
(see Id. at page 18) on January 29, 2004 and applicant has
offered no evidence of an appeal regarding that decision.
As to the third requirement for claim preclusion, we
find that opposer has shown that there is an absence of a
genuine issue of material fact as to whether the second claim
in this proceeding is based on the same set of transactional
facts as the first proceeding. Applicant’s marks, OSMOTECH,
are identical; and the described goods are virtually
Opposition No. 91184968
12
identical.8 Further, this opposition is based on the grounds
of likelihood of confusion and opposer’s claim of priority
based on rights accrued at common law and on its pleaded
registration for the mark OSMO (U.S. Reg. No. 932228); and in
Opposition No. 91117751, the Board determined that “priority
is also clearly established” based on U.S. Reg. No. 978588
and on “opposer’s use since 1970 of the registered mark OSMO
…” (Id. at page 13). The Board also concluded in the prior
proceeding that applicant’s mark OSMOTECH is “sufficiently
similar to both of opposer’s OSMO marks that, if used on the
identical and closely related goods … confusion as to source
is likely” (Id. at pages 17-18). In view thereof, we find
that there is no genuine issue of material fact as to whether
the proceedings at issue are based on the same set of
transactional facts.
When a moving party’s motion for summary judgment is
supported by evidence sufficient to indicate that there is no
genuine issue of material fact and the moving party is
entitled to judgment, the burden shifts to the nonmoving

8 The described goods in application Serial No. 75721083 were
“reverse osmosis separation or ultra filtration systems for water
purification for residential and commercial and industrial use
consisting of filter membranes, housings for filter membranes and
connection fittings for housings” (see Board’s order mailed
January 29, 2004, pages 1-2; Exh. G, motion). The involved
application uses the term “and” instead of “or”. An applicant
cannot avoid the estoppel effect of the decision of a prior
disposition by insignificantly changing its identification of
goods. See J.I. Case Co. v. F.L. Indus., Inc., 229 USPQ 697
(TTAB 1986); and Domino’s Pizza Inc. v. Little Caesar Enterprises
Inc., 7 USPQ2d 1359, 1365 n.10 (TTAB 1988).
Opposition No. 91184968
13
party to demonstrate the existence of at least one genuine
issue of material fact that requires resolution at trial.
The nonmoving party, however, may not rest on the mere
allegations of its pleadings and assertions, but must
designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue
of material fact for trial. Consequently, factual
assertions, without evidentiary support, are insufficient to
defend against a motion for summary judgment. See Hornblower
& Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739
(TTAB 2001); and S & L Acquisition Co. v. Helene Arpels Inc.,
9 USPQ2d 1221, 1225 n.9 (TTAB 1987).
We find that applicant has offered no evidence or
arguments that raise a genuine issue as to the material facts
involved in considering whether the present application for
OSMOTECH is barred by the doctrine of res judicata.
Applicant’s suggested different facts are not pertinent to
the material transactional facts in each proceeding. In view
thereof, opposer is entitled to summary judgment as a matter
of law on its claim that res judicata applies herein.
Accordingly, opposer’s motion for summary judgment is
hereby GRANTED, the opposition is sustained, and registration
of the mark OSMOTECH in application Serial No. 76681931 is
denied.
•••