James J. Maksimuk (by correction from CWF Flooring, Inc.)v.Connor Sport Court International, LLC

Trademark Trial and Appeal Board

Jun 22, 2018

No. 92066311 (T.T.A.B. Jun. 22, 2018)

Baxley Mailed: June 22, 2018 Cancellation No. 92066311 James J. Maksimuk (by correction from CWF Flooring, Inc.) v. Connor Sport Court International, LLC Before Kuhlke, Bergsman and Goodman, Administrative Trademark Judges. By the Board: On June 13, 2017, Petitioner filed a petition to cancel Respondent’s Registration No. 2479328, issued August 21, 2001 (renewed), for the mark SPORT COURT in typed form for “plastic interlocking floor tiles” in International Class 21, on grounds that the mark is generic and, if not generic, then merely descriptive.1 Because the petition to cancel was filed more than five years after the issuance of the registration at issue, the ground that the mark is merely descriptive is unavailable. See Trademark Act Section 14(3), 15 U.S.C. § 1064(3). Accordingly, we treat the petition to cancel as seeking cancellation solely on the ground of genericness. 1 On May 22, 2017, Mr. Maksimuk also filed a petition to cancel Respondent’s Registration Nos. 1100976 and 1155586. In a June 6, 2017 order, the Board stated that the May 22 filing was not accompanied by the required filing fee and therefore would receive no consideration. 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 This decision is not a precedent of the TTAB. Cancellation No. 92066311 2 The following motions are pending herein: (1) Respondent’s renewed motion (filed November 29, 2017) for summary judgment on the ground of res judicata based on previous litigation styled Connor Sport Court Int’l, LLC, v. CWF Flooring, Inc., Case No. 2:17-cv-00042, filed in United States District Court for the District of Utah (10 TTABVUE);2 (2) Petitioner’s motion (filed December 10, 2017) to correct the caption of this proceeding (13 TTABVUE); and (3) Respondent’s motion (filed March 2, 2018, 18 TTABVUE) to strike Petitioner’s February 7, 2018 submission (17 TTABVUE) on the ground that it is an impermissible surreply in connection with the renewed motion for summary judgment. I. Motion to strike denied Trademark Rule 2.127(a) allows a nonmovant one brief in response to a motion. Trademark Rule 2.127(e)(1) allows a nonmovant until thirty days from the date of service of the brief in support of the motion for summary judgment to file a brief in response thereto. Based on the foregoing, Petitioner was allowed until December 28, 2017 to file one brief in response to Respondent’s renewed motion for summary judgment. After the November 29, 2017 filing of the renewed motion for summary judgment, the parties filed the following relevant documents herein: • 13 TTABVUE: Petitioner’s motion (filed December 10, 2017) to amend the caption of this proceeding; 2 Respondent filed a first motion for summary judgment on the ground of res judicata on October 17, 2017 (5 TTABVUE). The Board, in an October 25, 2017 order (6 TTABVUE), denied that motion without prejudice because it was based on an unpleaded defense. Respondent then filed a motion for leave to file an amended answer on October 30, 2017 (7 TTABVUE), which the Board granted as conceded in a November 28, 2017 order (9 TTABVUE). Cancellation No. 92066311 3 • 14 TTABVUE: Petitioner’s response (filed December 14, 2017) to the Board’s December 8, 2017 suspension order (12 TTABVUE); • 16 TTABVUE: Respondent’s combined reply brief (filed February 2, 2018) in support of the motion for summary judgment and brief in response to the motion to amend the caption; and • 17 TTABVUE: Petitioner’s brief (filed February 7, 2018) in response to the renewed motion for summary judgment. In a one-page response to the Board’s December 8, 2017 suspension order (14 TTABVUE), Petitioner, in the context of seeking action on the motion to amend the caption, timely argued in opposition to the motion for summary judgment,3 but did not otherwise respond to the motion. The Board, in a January 13, 2018 order (15 TTABVUE), indicated that it would consider Petitioner’s response to the suspension, notwithstanding the lack of proof of service thereof, and set time for remaining permissible briefing of the pending motions. Under Rule 2.127(a), Petitioner was limited to filing a reply brief in connection with the motion to amend the caption. Nonetheless, Petitioner filed a brief in response to the motion for summary judgment (17 TTABVUE), instead of a reply brief in support of the motion to amend the caption. Because Petitioner’s brief in response to the motion for summary judgment was filed more than thirty days after the service of the motion for summary judgment, that brief in response is untimely. Although the brief in response does not include a showing that Petitioner’s failure to timely file it was caused by excusable neglect (see Fed. R. Civ. P. 6(b)(1)(b); Pioneer Inv. Servs. Co. v. Brunswick Assocs. L.P., 507 U.S. 3 In particular, Petitioner contends that res judicata is inapplicable because CWF Flooring and James J. Maksimuk are different entities. Cancellation No. 92066311 4 380 (1993); Pumpkin, Ltd. v. Seed Corps, 43 USPQ2d 1582 (TTAB 1997)), we elect to exercise our discretion to consider it. Based on the foregoing, the motion to strike is denied. II. Motion to amend the caption The ESTTA cover form for the petition to cancel identifies CWF Flooring, Inc. (“CWF”) as Petitioner (1 TTABVUE 1).4 Because the text of the petition to cancel states that “[t]he PETITIONER is James J. Maksimuk” (1 TTABVUE 2), Petitioner asks that the caption be corrected to identify Mr. Maksimuk as plaintiff. In opposition, Respondent contends that the proposed correction is futile because correcting the caption will not prevent application of the doctrine of res judicata in this case because Mr. Maksimuk was in privity with CWF Flooring, Inc. when the district court entered its final judgment (16 TTABVUE 2-3). When the plaintiff in a Board inter partes proceeding misidentifies itself in the complaint, if the plaintiff can establish to the Board’s satisfaction that this misidentification was merely a non-substantive mistake, the Board may allow amendment of the complaint, pursuant to Fed. R. Civ. P. 15(a), to correct the misidentification. See Mason Eng. & Design Corp. v. Mateson Chem. Corp., 225 USPQ 956, 957 n.3 (TTAB 1985) (deeming pleadings amended to recite opposer’s correct name); TBMP § 512.04 (June 2017). 4 Petitioner submitted a filing fee for a single petitioner in a single class. See Trademark Rule 2.6(a)(16)(ii). Cancellation No. 92066311 5 Whether this proceeding is barred by the doctrine of res judicata is not at issue in the motion to correct the caption of this proceeding. Because the text of the petition to cancel makes clear that Mr. Maksimuk is the intended Petitioner herein, we treat Petitioner’s identification of CWF Flooring, Inc. in the ESTTA cover form5 as a clerical error. Petitioner’s motion to correct the caption of this proceeding is therefore granted, and the caption of this proceeding is hereby amended to identify Mr. Maksimuk as petitioner and party plaintiff. III. Motion for summary judgment granted 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 (1955); Chromalloy Am. Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984); Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987). More specifically, in the circumstances presented by the case at hand, “[c]laim preclusion 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. Claim preclusion therefore encompasses the law of merger and bar.” Migra v. Warren City School Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 5 Contrary to Petitioner’s apparent belief, the Board does not enter information in ESTTA cover forms. The filing party enters that information. Cancellation No. 92066311 6 (1984); Nasalok Coating Corp. v. Nylok Corp., 522 F.2d 1320, 86 USPQ2d 1369, 1371 (Fed. Cir. 2008). Regarding whether the parties in this proceeding and the parties in the prior civil action are legally equivalent, we find initially that there is no genuine dispute that Respondent was the plaintiff in the earlier civil action and that Mr. Maksimuk was in privity with CWF when judgment was entered in the civil action. The basis for applying preclusion against him herein rests on his being the founder (16 TTABVUE 7), “owner” (10 TTABVUE 42) and “CEO” (10 TTABVUE 46 and 56) of CWF, the defendant in the prior civil action. See e.g., Kraeger v. General Electric Co., 497 F.2d 468, 472 (2d. Cir. 1974) (president and sole shareholder of a corporation bound by the corporation’s defeat in an action that he effectively controlled); Vitronics Corp. v. Conceptronic, Inc., 27 USPQ2d 1046, 1049 (D.N.H. 1992) (founder and CEO of corporation in privity with corporation); John W. Carson Foundation v. Toilets.com Inc., 94 USPQ2d 1942, 1947 (TTAB 2010) (president and sole owner of corporation in privity with corporation). Section 39 of the Restatement (Second) of Judgments (1982) states the applicable black-letter law: “A person who is not a party of an action but who controls or substantially participates in the control of the presentation on behalf of a party is bound by the determination of issues decided as though he were a party.” See also 18A C. Wright, A. Miller & E. Cooper, Fed. Prac. & Proc. Juris. §4451 (April 2018 update). The record herein indicates that Mr. Maksimuk fully controlled CWF’s case Cancellation No. 92066311 7 in the civil action6 by attempting to represent CWF pro se therein in contravention of local rules. In view thereof, we find that there is no genuine dispute that privity exists between Mr. Maksimuk, Petitioner in this proceeding, and CWF, the defendant in the prior civil action, for res judicata purposes. Accordingly, there is no genuine dispute that the parties in this case and the civil action are legal equivalents. 6 The Board notes the following procedural history in the civil action: • Following receipt of the service copy of the complaint in the civil action (10 TTABVUE 14-33), Mr. Maksimuk, appearing pro se on behalf of CWF, sent an email on April 27, 2017 to the magistrate judge in the United States District Court for the District of Utah in which CWF requested an extension of time to answer (10 TTABVUE 35-36). • Mr. Maksimuk, however, was informed in an April 27, 2017 response from the magistrate judge’s law clerk that any such request must be in the form of a motion filed on the docket by an attorney (10 TTABVUE 35). • In a June 6, 2017 notice from the district court, CWF and Petitioner were advised that CWF, as a corporation, “cannot appear except through counsel” and that Mr. Maksimuk was “previously notified by Magistrate Judge Paul M. Warner to that effect. Absent proper appearance through counsel, the court cannot deal with the Motion for Stay of Proceedings, forwarded to chambers via e-mail from James Maksimuk on June 6, 2017.” (10 TTABVUE 38). • After CWF failed to retain an attorney to represent it in the civil action in accordance with the district court’s local rules and failed to file an answer or other response to the complaint, the district court entered default judgment against CWF in an August 10, 2017 decision (10 TTABVUE 41-44, 17 TTABVUE 14-17). In that decision, CWF was permanently enjoined from using the plasticsportcourttiles.com domain name in connection with the marketing or sale of flooring products and services, including redirecting visitors from plasticsportcourttiles.com to other internet domains having websites marketing or selling flooring products or services ... [and] from using an internet domain name containing the term ‘sport court,’ ‘sports court,’ ‘sport courts,’ or any variation thereof in connection with the marketing or sale of flooring products and services, including redirecting visitors from such a domain to other internet domains having websites marketing or selling flooring products or services. (10 TTABVUE 43). • Mr. Maksimuk, again appearing pro se on behalf of CWF, appealed that default judgment to the United States Court of Appeals for the Tenth Circuit, but that appeal was dismissed on October 12, 2017, after CWF failed to retain an attorney to represent it in that appeal (10 TTABVUE 54). Cancellation No. 92066311 8 Further, there is no genuine dispute of material fact that there was a final judgment on the merits of a claim in the civil action. The United States District Court for the District of Utah entered default judgment in the civil action after CWF refused to hire an attorney. In its decision entering such judgment, the district court found that “the Sport Court marks [including Respondent’s involved Registration No. 2479328] are distinctive and not generic” and that CWF’s use of the domain plasticsportcourttiles.com infringed Respondent’s SPORT COURT marks (10 TTABVUE 42-43). Further, the United States Court of Appeals for the Tenth Circuit dismissed CWF’s appeal of that default judgment after CWF failed to hire an attorney to appear on its behalf. Although Petitioner asserts in his brief in response to the motion for summary judgment that he intends to file a petition for writ of certiorari with the Supreme Court in this case (17 TTABVUE 5), his time for so filing had lapsed by the time he filed the brief in response. See Sup Ct. R. 13.1 (a petition for writ of certiorari is timely when it is filed within 90 days after entry of a judgment by a United States Court of Appeals). The record herein does not indicate that any such petition was filed. We now consider whether the cancellation proceeding is based on the same set of transactional facts as the civil action. Where, as in this case, a party seeks to preclude a defendant in the first action from bringing certain claims as plaintiff in a second action, the rules of defendant preclusion apply. See Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1372 (Fed. Cir. 2008). A defendant in the first action is precluded from bringing such claims in a subsequent proceeding only if: (1) Cancellation No. 92066311 9 the claim or defense asserted in the second action was a compulsory counterclaim that the defendant failed to assert in the first action; or (2) the claim or defense represents what is essentially a collateral attack on the first judgment. Id. Regarding the first basis for applying defendant claim preclusion, Trademark Act Section 37, 15 U.S.C. § 1119, allows a trademark infringement defendant to assert a counterclaim to cancel the registration. However, our primary reviewing court has determined that a claim that a trademark registration is invalid is not a compulsory counterclaim to a claim of trademark infringement brought in a federal district court.7 See id., 86 USPQ2d at 1373. We turn then to the second basis for applying claim preclusion against defendants-where the effect of the later action is to collaterally attack the judgment of the first action. Here, the district court’s default judgment in the infringement action included the determination that Respondent’s “Sport Court Marks are distinctive and not generic.” 10 TTABVUE 41-42. Allowing Petitioner to challenge the validity of the involved registration for the mark SPORT COURT for “plastic interlocking floor tiles” upon which the prior judgment was based on the ground of genericness would allow Petitioner to collaterally attack the judgment of the first action. 7 By contrast, in Board opposition and cancellation proceedings, a defense attacking the validity of a registration pleaded in a cancellation action is a compulsory counterclaim if grounds for the counterclaim existed at the time when the answer is filed or are learned during the course of the proceedings. See Trademark Rules 2.106(b)(3) and 2.114(b)(3); Jive Software, Inc. v. Jive Commc’ns, Inc., 125 USPQ2d 1175, 1177 (TTAB 2017). Cancellation No. 92066311 10 Further, Section 18(2) of the Restatement (Second) of Judgments makes clear that a defense that could have been interposed cannot later be used to attack the judgment of the first action. Although Petitioner contends that he was denied due process because he was not allowed to participate in the civil action, the record clearly indicates that the default judgment was entered by the district court and the appeal was dismissed by the court of appeals as a direct result of CWF’s refusal to hire an attorney despite multiple warnings from the district court and the court of appeals. CWF and Mr. Maksimuk were repeatedly advised by the district court of the requirement that CWF hire an attorney in the civil action (10 TTABVUE 35, 38, and 42; 17 TTABVUE 14-17). Likewise, CWF and Mr. Maksimuk were repeatedly advised that CWF must be represented by an attorney in CWF’s appeal before the United States Court of Appeals for the Tenth Circuit (10 TTABVUE 48, 51-52 and 54). See Tal v. Hogan, 453 F.3d 1244, 1254 (10th Cir. 2006) (“It has been our longstanding rule that a corporation must be represented by an attorney to appear in federal court.”). Notwithstanding this repeated advice, CWF chose not to hire an attorney in the civil action and was thus not permitted to file submissions or appear in court therein. Bearing in mind that the petition to cancel was filed on June 13, 2017, after entry of default and prior to entry of default judgment in the civil action,8 there is no genuine dispute that the allegations set forth in the petition to cancel existed at the 8 Filing the petition to cancel instead of pursuing the counterclaim in the civil action was essentially an attempt to raise that claim in a forum where Petitioner could appear without an attorney. Cancellation No. 92066311 11 time of the civil action and could have been - and should have been - raised as a counterclaim in the civil action. See Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1412 (TTAB 2015). In sum, there is no genuine dispute of material fact that the requisite elements of res judicata have been satisfied. Based on the foregoing, Respondent’s motion for summary judgment is hereby granted. The petition to cancel is dismissed with prejudice.