Joro Companies, Inc.v.Trashbusters Inc.

Trademark Trial and Appeal Board

Oct 29, 2008

No. 92048605 (T.T.A.B. Oct. 29, 2008)

Mailed: October 29, 2008
Skoro
Cancellation No. 92048605

Joro Companies, Inc. dba RID-
O-VIT

v.

Trashbusters Inc.

Before Hohein, Rogers and Cataldo,
Administrative Trademark Judges.

By the Board:

Trashbusters Inc. owns Registration No. 2659120 for the
mark 1 800 RID-OF-IT,1 for “custom trash hauling” in
International Class 39. On December 8, 2007, Joro
Companies, Inc., d/b/a RID-O-VIT, (hereinafter “Joro”) filed
a petition to cancel the registration, claiming a likelihood
of confusion with the mark in its predecessor’s, Michael
Saya, (hereinafter “Saya”) now cancelled Registration No.
1886345 for RID-O-VIT and Design2 for “contract truck
hauling” in International Class 39, and its own common law

1 Issued December 10, 2002, claiming dates of first use
anywhere of August 2001 and first use in commerce of November
2001. “1 800” is disclaimed.

2 Issued March 28, 1995, claiming dates of first use anywhere
and first use in commerce of September 9, 1992; cancelled under
Section 8 on April 4, 2002.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
PRECEDENT OF THE
TTAB
Cancellation No. 92048605
2
trademark rights since 19943 for “contract truck hauling,
trash and recycling pickup; and rental of dumpsters”.4
This case now comes up on respondent’s motion for
summary judgment, filed June 30, 2008. As grounds for its
motion, respondent alleges claim preclusion.5 Petitioner
filed its opposition to respondent’s motion on August 4,
2008, and respondent filed a reply.
In support of its motion for summary judgment,
respondent asserts that the decision in Cancellation No.
92042608, “Michael J. Saya v. Trashbusters Inc.,” provides
the basis for the application of claim preclusion.
Respondent argues that the previous cancellation involved
the same claim, namely a likelihood of confusion between the

3 Petitioner claims that Mr. Saya is a predecessor in interest
for purposes of tacking on to the dates of use from 1994 until
its own use of the mark began in 2000, based on an exclusive
license agreement.

4 On April 16, 2006, a co-founder of petitioner and also
described as its chief executive officer, Wendy R. Pollichemi,
filed a trademark application, as an individual, Serial No.
78862431, for the mark RID-O-VIT for “commercial waste services,
namely, contract truck hauling, trash and recycling pickup,
rental of dumpsters” in Class 39; claiming dates of first use
anywhere and first use in commerce of March 2, 1994. Examination
thereof has been suspended pending determination of this
cancellation proceeding.

5 The deadline for the parties’ settlement and discovery
conference as well as the deadline for the parties to exchange
initial disclosures, see Trademark Rules 2.120(a)(2) and
2.120(a)(3), both preceded the filing of the motion for summary
judgment. The record does not reveal whether respondent made
initial disclosures prior to the filing of the motion for summary
judgment, but a motion based on claim preclusion is considered an
exception to the rule that otherwise bars filing of a motion for
summary judgment prior to making initial disclosures. See
Trademark Rule 2.127(e)(1).
Cancellation No. 92048605
3
same marks; that the present petitioner, as a licensee of
Mr. Saya, was and is in privity and thus there is an
identity of the parties; and that while the prior proceeding
was dismissed with prejudice as a sanction for failure to
comply with a Board order granting a motion to compel, the
judgment was a final judgment on the same pleaded claim,
thereby barring relitigation of the claim in this
cancellation proceeding.
To establish its allegation that the claims involved
are identical, respondent submitted a copy of the petition
to cancel in the previous proceeding, to demonstrate that
both cancellation proceedings involve the same registration
owned by respondent and the same claims of priority and
likelihood of confusion; and a copy of the final order
wherein the earlier proceeding was dismissed with prejudice.
To establish its allegation that the parties are the
same, in particular, the party in the position of plaintiff
is identical or in privity with petitioner, respondent has
provided a copy of the exclusive license agreement entered
into between petitioner Saya and petitioner Joro, executed
on July 7, 2000.6

6 This license agreement provides for petitioner’s exclusive use
of the mark in the State of New York in connection with the
identified services. Petitioner also submitted a fully executed
copy of this agreement.

Cancellation No. 92048605
4
In its opposition to the motion for summary judgment,
petitioner argues that Joro is not “substantially identical”
to Saya; that the transactional facts are not the same
because Joro’s services have expanded and are “significantly
different” from Saya’s; and that abandonment and
descriptiveness claims were not raised in the first
cancellation proceeding.
Under the doctrine of claim preclusion, the entry of a
final judgment “on the merits” of a claim (or cause of
action) in a proceeding will preclude the relitigation of
the same claim in a later proceeding that involves the same
parties or their privies. Claim preclusion also extends to
those claims or defenses that could have been raised in the
prior action. See Chromalloy American Corp. v. Kenneth
Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984);
see also, Jet, Inc. v. Sewage Aeration Systems, 223 F.3d
1360, 55 USPQ2d 1854 (Fed. Cir. 2000), reh’g and reh’g en
banc denied, 2000 U.S. App. LEXIS 26699 (Fed. Cir. 2000);
and Flowers Industries Inc. v. Interstate Brands Corp., 5
USPQ2d 1580 (TTAB 1987).
Because Joro was an exclusive licensee of Saya during
the prior proceeding, because the claim of a likelihood of
confusion asserted by Saya against Trashbusters in the prior
proceeding is the same as a claim asserted here, and because
the June 9, 2005 judgment dismissed the prior proceeding
Cancellation No. 92048605
5
with prejudice, the principles of claim preclusion apply in
this case.
A review of the evidence shows that the two
cancellation proceedings involve the same claim, even though
Joro has included two sentences in its petition that allege
abandonment by respondent and that respondent’s mark is
merely descriptive. Respondent argues that these latter two
issues could have been raised in the prior proceeding and
that neither respondent’s use of the mark or its services
has changed which only now give rise to new grounds for a
petition. Petitioner responds that these grounds arise from
different transactional facts, which is the correct focus of
the test for preclusion7, rest on different proofs and,
therefore, are not precluded. Respondent counters that
because these issues could have been raised in the prior
proceeding, they are equally barred in this proceeding under
the doctrine of claim preclusion.
Both proceedings involve challenges to Trashbusters
registration of the mark 1 800 RID-OF-IT based on a

7 Petitioner cites Acumed LLC v. Stryker Corp., 525 F.3d 1319, 86
USPQ2d 1950 (Fed. Cir. 2008) in support of the proposition that
for claim preclusion the test is whether the transactional facts
are the same between the “claims”, not whether the “claims” in
the second action could have been raised in the first action.
This case is inapposite. The Federal Circuit had before it a
patent infringement case and the “claims” referred to are patent
claims. The Court did state that claim preclusion issue is
particular to patent law and defined “transactional fact” in
patent infringement as the “structure of the device in issue”
(Id. at 1955). In trademark cancellation proceedings,
transactional facts and claim preclusion are broader concepts.
Cancellation No. 92048605
6
likelihood of confusion with petitioner’s RID-O-VIT
registration. The evidence further shows that petitioner,
Joro, was a licensee of Saya on July 7, 2000, during the
litigation of Cancellation No. 92042608; the final decision
in that case issued on June 9, 2005; and the cancellation
resulted in final judgment against petitioner, Saya, and in
favor of respondent herein, Trashbusters Inc.
Based on our finding that the parties involved in
Cancellation No. 92042608 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 against petitioner, respondent is entitled to
judgment as a matter or law based on claim preclusion and,
accordingly, its motion for summary judgment is hereby
granted.
The petition to cancel is hereby dismissed.