ISRAR AHMADv.Gyro Enterprises LLC

Trademark Trial and Appeal Board

Mar 25, 2021

92074842 (T.T.A.B. Mar. 25, 2021)

mbm
March 25, 2021

Cancellation No. 92074842

Israr Ahmad

v.
Gyro Enterprises LLC

Before Thurmon, Deputy Chief Administrative Trademark Judge, and
Shaw and Larkin, Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of Respondent’s
motion (filed September 9, 2020) for summary judgment on the ground of claim
preclusion based on the Board’s entry of judgment against Petitioner in a prior
proceeding, i.e., Cancellation No. 92072859 (the “Prior Proceeding”). The motion is
fully briefed.1

1 Petitioner titled his October 8, 2020 brief as “Petitioner’s Response to Respondent’s Motion
for Summary Judgment and Petitioner’s Cross Motion for Summary Judgment;” however,
the brief does not seek entry of summary judgment in Petitioner’s favor. Rather, Petitioner
argues only that summary judgment is not appropriate and that Respondent’s motion for
summary judgment should be denied. 6 TTABVUE 6 (“Petitioner respectfully requests that
the Board deny Respondent’s Motion for Summary Judgment.”). We have therefore not
construed Petitioner’s response as a cross-motion for summary judgment.
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
General Email: TTABInfo@uspto.gov
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92074842

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As an initial matter, because the basis for Respondent’s motion for summary
judgment is claim preclusion, the motion is timely under Trademark Rule 2.127(e)(1).
37 C.F.R. § 127(e)(1).
I. Background of the Prior Proceeding
As claim preclusion forms the basis of Respondent’s motion for summary
judgment, we necessarily review the circumstances and outcome of the Prior
Proceeding.
On November 18, 2019, Petitioner petitioned to cancel Respondent’s Registration
No. 4338025 for the standard character mark GYRO KING for “Restaurant services;
Restaurant services featuring Greek Cuisine/Gyros; Restaurant services, including
sit-down service of food and take-out restaurant services; Restaurants featuring
home delivery; Take-out restaurant services” in International Class 43.2
As grounds for cancellation, Petitioner identified abandonment and fraud on the
ESTTA cover sheet. 4 TTABVUE 13-14. The ESTTA cover sheet also contained the
following statement: “[I] already have a trademark #562560[sic] the person who took
over the trademark never had it the location for that trademark been closed down.”
Id. at 13. The petition to cancel alleged “Gyro King Atlanta now closed. See the
evidence below.” Id. at 15. Petitioner attached to the petition to cancel screenshots
purportedly demonstrating Respondent’s abandonment of its mark because the
business had closed. Id. at 15-17.

2 Registration No. 4338025, issued May 21, 2013, pursuant to Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a). “GYRO” is disclaimed. Renewed.
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In lieu of an answer, Respondent filed a motion to dismiss for failure to state a
claim upon which relief can be granted under Fed. R. Civ. P. 12(b)(6) on January 3,
2020. Id. at 19-26. Petitioner failed to respond, and on February 20, 2020, the Board
granted Respondent’s motion to dismiss as conceded and denied the petition to cancel
with prejudice.3 Id. at 18.
II. Background of Current Proceeding and Review of Pleadings
On August 1, 2020, Petitioner filed a second petition to cancel the same
registration in Cancellation No. 92074842 (the “Instant Proceeding”). In this petition
to cancel, Petitioner identifies the following as grounds for cancellation: fraud based
on abandonment; “priority;” Respondent is not the owner of the mark; and
misrepresentation of source.
Before turning to Respondent’s motion for summary judgment, we first consider
the claims pleaded in the Instant Proceeding. “Priority” is not a separate claim, but
is an element of a claim of likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). In a cancellation proceeding, a claim of likelihood of
confusion must be brought within five years from the issuance of the involved
registration. See 15 U.S.C. § 1064. Inasmuch as Respondent’s registration issued on
May 21, 2013, Petitioner’s claim of “priority” or likelihood of confusion is unavailable
and the claim is dismissed with prejudice.

3 Counsel for Petitioner entered a notice of appearance on January 24, 2020, but did not file
a response to the motion to dismiss. Id.
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Similarly, a claim that the Respondent is not the owner of the involved mark is
not an available ground for cancellation of a registration issued more than five years
ago. See 15 U.S.C. § 1064. Petitioner’s claim of non-ownership is therefore also
unavailable and the claim is dismissed with prejudice.
A claim of misrepresentation of source4 or fraud would not be time barred. We
therefore consider the merits of Respondent’s motion for summary judgment with
respect to these claims only.
III. Respondent’s Motion for Summary Judgment
Respondent contends that as a consequence of the denial of the petition to cancel
with prejudice in the Prior Proceeding, Petitioner’s current claims are barred under
the doctrine of claim preclusion. In support thereof, Respondent submitted (1) a copy
of the ESTTA cover sheet and exhibits filed by Petitioner in the Prior Proceeding, (2)
a copy of the Board’s February 20, 2020 order in the Prior Proceeding granting
Respondent’s motion to dismiss as conceded and denying the petition to cancel with

4 In support of his misrepresentation of source claim, Petitioner pleads that Respondent uses
its registered mark “in a way to cause confusion with the Petitioner’s registered mark
5562560.” 1 TTABVUE 9 (Petition to Cancel ¶ 25). A claim of misrepresentation of source is
distinct from a claim of likelihood of confusion. See Osterreichischer Molkerei-und
Kaereiverband Registriete GmbH v. Marks and Spencer Ltd., 203 USPQ 793, 794 (TTAB
1979) (discussing misrepresentation of source claim). Misrepresentation of source, as used in
Section 14(3) of the Trademark Act, refers to situations where it is deliberately
misrepresented by or with the consent of the registrant that the goods or services originate
from a manufacturer or other entity when in fact those goods or services originate from
another party. See Otto Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007).
To the extent Petitioner pleads “confusion” with its own pleaded mark, the allegations
support only a claim of likelihood of confusion, which would be time-barred.
Cancellation No. 92074842

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prejudice, and (3) a copy of Respondent’s motion to dismiss filed in the Prior
Proceeding.
A. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to material facts, thus allowing resolution as a matter of
law. See Fed. R. Civ. P. 56(a). A party moving for summary judgment has the burden
of demonstrating the absence of any genuine dispute as to a material fact, and that
it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 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 nonmoving
party. See Opryland USA Inc v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1992); Olde Tyme Foods Inc v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
The burden is on the party moving for summary judgment to demonstrate the
absence of any genuine dispute of material fact and that it is entitled to judgment as
a matter of law. Fed. R. Civ. P. 56(c). The evidence of record must be viewed in the
light most favorable to the nonmoving party, and all justifiable inferences must be
drawn from the undisputed facts in favor of the nonmoving party. See Lloyd’s Food
Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland
USA, 23 USPQ2d at 1472; Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925,
1929 (TTAB 2015).
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B. Decision
Under the doctrine of claim preclusion, the entry of a final judgment “on the
merits” of a claim (i.e., the 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,
consent, or dismissal with prejudice. See Lawlor v. Nat’l Screen Serv. Corp., 349 U.S.
322, 75 S. Ct. 865, 99 L. Ed. 1122 (1955) (dismissal of previous action with prejudice
bars relitigation of the same claims even where “the judgment was unaccompanied
by findings…”); Chromalloy Am. Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222
USPQ 187 (Fed. Cir. 1984) (claim preclusion applies even where prior judgment was
the result of default, consent, or dismissal with prejudice); Orouba Agrifoods
Processing Co. v. United Food Imp., 97 USPQ2d 1310, 1313-15 (TTAB 2010) (claim
preclusion bars relitigation of claims where no decision “on the merits” has been
reached, including dismissals for failure to prosecute); Flowers Indus., Inc. v.
Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987) (claim preclusion bars
relitigation of claims where prior judgment was result of dismissal with prejudice).
For claim preclusion to be applied, the following factors must be present:
(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 Am. Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
Cancellation No. 92074842

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1. First Factor: Identity of Parties
In this case, the parties do not dispute that the Instant Proceeding involves the
same parties as the Prior Proceeding. Accordingly, no genuine dispute of material fact
exists regarding the first factor of the claim preclusion analysis.
2. Second Factor: Final Judgment on the Merits of a Claim
With regard to the second factor, the Board granted Respondent’s motion to
dismiss as conceded and, in doing so, denied Petitioner’s petition to cancel with
prejudice. “A judgment of a court having jurisdiction of the parties and of the subject
matter operates as res judicata, in the absence of fraud or collusion, even if obtained
upon default.” Morris v. Jones, 329 U.S. 545, 550-51 (1947) (quoting Riehle v.
Marolies, 279 U.S. 218, 225 (1929)); Orouba Agrifoods Processing Co. v. United Food
Imp., 97 USPQ2d 1310, 1314-15 (TTAB 2010) (“[E]ven default judgments for failure
to answer, or dismissals for failure to prosecute, where there has been no decision ‘on
the merits,’ can act as a bar under the doctrine of claim preclusion.”); La Fara
Importing Co. v. F. Lli de Cecco di Filippo Fara S. Martino S.p.a., 8 USPQ2d 1143,
1146 (TTAB 1988) (“Issue preclusion operates only as to issues actually litigated,
whereas claim preclusion may operate between the parties simply by virtue of the
final judgment.”).
Accordingly, there is no genuine dispute of material fact that there has been an
earlier final judgment on the merits of a claim.
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3. Third Factor: Second Claim is Based on the Same Set of Transactional
Facts as the First
With respect to the third factor, we consider whether Petitioner’s claims of fraud
and misrepresentation of source arise from the same set of transactional facts as
those underlying Petitioner’s claims in the Prior Proceeding.
In determining whether the second claim is based on the same transactional facts
as the first, the Board is guided by the Restatement (Second) of Judgments. See Urock
Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1412 (TTAB 2015). Section 25 of the
Restatement provides that claim preclusion applies even where the plaintiff may
present evidence, grounds, or theories not presented in the first proceeding or seek
remedies or relief not sought in the first proceeding. Id. at 1412 (citing Section 25 of
the Restatement (Second)). “To assess whether the claims are based on the same set
of transactional facts, comment b to Section 24 of the Restatement considers whether
there is a common nucleus of operative facts.” Id.
With respect to the claim of fraud, Petitioner specifically identified fraud and
abandonment as grounds for cancellation in the Prior Proceeding on the ESTTA cover
sheet. 4 TTABVUE 4 (Petition to Cancel in Cancellation No. 92072859). Although the
petition to cancel in the Prior Proceeding is devoid of any factual allegations to
support the fraud claim, Petitioner based its abandonment claim on its allegation
that “Gyro King Atlanta now closed. See the evidence below.” Id. at 4-7 (Petition to
Cancel in Cancellation No. 92072859). In the Instant Proceeding, Petitioner also
alleges that Respondent closed its Georgia restaurant location and did not use its
mark from at least 2013 through June 2019, 4 TTABVUE 5, 6 (Petition to Cancel
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¶¶ 3, 6), and that Respondent committed fraud on the USPTO when it filed its Section
8 declaration on October 31, 2019 by falsely claiming continued use of its mark. Id.
at 6 (¶ 6). The fraud claim is therefore based upon the same nucleus of operative facts
as the abandonment claim in the Prior Proceeding. See Vitaline Corp. v. Gen Mills,
Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989) (abandonment claim barred by
claim preclusion because claim of abandonment was based on the same transactional
facts as prior fraud claim—the defendant’s alleged non-use of its mark on the goods
identified in the registration).
In his response to the summary judgment motion, Petitioner asserts that claim
preclusion does not apply, because the abandonment claim in the Prior Proceeding
was based on non-use “under 15 U.S.C. § 1058,” while his fraud claim in the Instant
Proceeding is based on “fraud under 15 U.S.C. § 1065 which is incontestable.” 6
TTABVUE 4. Petitioner’s argument is incomprehensible. In any case, the mark in the
involved registration is not incontestable because Respondent did not file a
declaration under Section 15 of the Trademark Act. 15 U.S.C. § 1065.
To the extent that Petitioner is arguing that he has additional evidence or is
asserting different legal theories to support his claim, “claim preclusion prevents
reassertion of the same claim regardless of what additional or different evidence or
legal theories might be advanced in support of it.” See Zoba Int’l Corp. v. DVD
Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1112 (TTAB 2011) (quoting Fink
v. Golenbock, 680 A.2d 1243 (Conn. 1996)). Indeed, had Petitioner responded to the
motion to dismiss in the Prior Proceeding, he would have had the opportunity to take
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discovery in support of his claims. Instead, Petitioner filed a new petition to cancel a
mere six months later.5
In view of the foregoing, we find that there is no genuine dispute of material fact
as to the third factor and that the fraud claim is based on the same set of transactional
facts as the claims in the Prior Proceeding.
With respect to Petitioner’s claim of misrepresentation of source, the fact that
Petitioner did not explicitly plead misrepresentation of source in the Prior Proceeding
is not determinative. Under the doctrine of claim preclusion, a plaintiff is barred from
a “subsequent assertion of the same transactional facts in the form of a different cause
of action or theory of relief.” See Young Eng’rs, Inc. v. U. S. Int’l Trade Comm’n, 721
F.2d 1305, 219 USPQ 1142, 1151 (Fed. Cir. 1983). See also Urock Network, LLC, 115
USPQ2d at 1412 (Claim preclusion bars “relitigation of ‘claims that were raised or
could have been raised’ in an earlier action.”) (citing Allen v. McCurry, 449 U.S. at
94) (emphasis provided in Urock).
Although the petition to cancel in the Prior Proceeding was far from a model
pleading and contained a typographical error in Petitioner’s registration number,
Petitioner asserted in the ESTTA cover sheet that he had rights in his registered
mark. Petitioner’s claim of misrepresentation of source in the Instant Proceeding is

5 To the extent that Petitioner argues that genuine disputes of material fact remain as to
whether Respondent has, in fact, committed fraud, these arguments go to the merits of the
underlying claim, and are not relevant to a determination of whether the claims are barred
by the doctrine of claim preclusion.
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likewise premised on an allegation that Respondent has copied Petitioner’s registered
mark.
In its summary judgment motion, Respondent argues that the claims are therefore
based on the same set of transactional facts, because both claims are predicated on
Petitioner’s purported rights in his pleaded registration.6 Additionally, the
misrepresentation of source claim is based upon Respondent’s alleged use of a mark
similar to the mark in Petitioner’s pleaded registration in connection with
Respondent’s Texas restaurant, which Petitioner alleges began operation in June
2019, i.e., prior to the filing date of the petition to cancel in the Prior Proceeding. 1
TTABVUE 5, 9 (Petition to Cancel ¶¶ 3, 25). There are no allegations in the petition
to cancel in the Instant Proceeding that relate to any conduct occurring after the filing
date of the petition to cancel in the Prior Proceeding.
In his response to the motion for summary judgment, Petitioner does not argue
that his misrepresentation of source claim is based upon new conduct arising
subsequent to the Prior Proceeding or that the claim could not have been asserted at
the time of the Prior Proceeding. Indeed, Petitioner does not address Respondent’s
arguments regarding the misrepresentation of source claim or otherwise discuss the
claim in any manner. Petitioner has therefore failed to raise a genuine dispute of
material fact and we find that Petitioner’s claim of misrepresentation of source is

6 As explained above, some of Petitioner’s allegations in support of his misrepresentation of
source claim are directed towards a likelihood of confusion claim, which would be time-
barred. We also note that Respondent’s involved registration issued over five years prior to
the filing of the petition to cancel in the Prior Proceeding; therefore, Petitioner could not have
asserted a claim of likelihood of confusion at that time either.
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predicated on the same nucleus of operative facts as the claim asserted in the Prior
Proceeding.
In view of the foregoing, we find that there is no genuine dispute of material fact
as to the third factor and that, to the extent that the misrepresentation of source
claim is more than a disguised likelihood of confusion claim, which would be time-
barred, the claim is based on the same set of transactional facts as the claim in the
Prior Proceeding.
Petitioner argues that public policy warrants against applying the doctrine of
claim preclusion in this case. 6 TTABVUE 5-6. “[T]he doctrine of claim preclusion
protects defendants from repetitive lawsuits based on the same conduct, [and] there
is a practical need to require plaintiffs ‘to litigate their claims in an economical and
parsimonious fashion.” Marrese v. Am. Acad. of Orthopaedic Surgeons, 470 U.S. 373,
385 (1985) (quoting Marrese v. Am. Acad. of Orthopaedic Surgeons, 726 F.2d 1150,
1153 (7th Cir. 1984)). Applying the doctrine of claim preclusion in this case serves to
protect Respondent from a duplicative proceeding based on the same set of
transactional facts and serves to conserve judicial resources.
Inasmuch as there is no genuine dispute of material fact as to any of the factors,
we conclude that Petitioner’s claims of misrepresentation of source and fraud in the
Instant Proceeding are barred by the doctrine of claim preclusion. Respondent’s
motion for summary judgment on claim preclusion is therefore granted and the
petition to cancel is denied with prejudice.