Royal Caribbean Cruises, Ltd.v.Royal Caribbean Jamaican Bakery, Inc.

Trademark Trial and Appeal Board

Mar 17, 2005

No. 91160218 (T.T.A.B. Mar. 17, 2005)

Butler Mail date: March 17, 2005

Opposition No. 91160218

Royal Caribbean Cruises, Ltd.

v.

Royal Caribbean Jamaican
Bakery, Inc.

Before Holtzman, Rogers and Drost, Administrative Trademark
Judges.

By the Board:
Applicant seeks to register the following mark

for “Jamaican style baked goods, namely breads, cakes, rolls,
muffins, puddings, tarts and buns.”1
In its amended notice of opposition, opposer alleges that
applicant’s mark so resembles opposer’s previously used and
registered marks as to be likely to cause confusion, mistake or
to deceive. Opposer pleads ownership of the following registered
marks: ROYAL CARIBBEAN for “arranging and conducting cruises for

1 Application Serial No. 76487000, filed on February 3, 2003, claiming
use and use in commerce since December 15, 1980, and disclaiming the
term CARIBBEAN BAKERY apart from the mark as shown.
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91160218
2
others”;2 ROYAL CARIBBEAN CRUISES LTD. for “cruise ship services:
transportation of passengers by ship”;3 ROYAL CARIBBEAN for a
wide variety of goods in multiple international classes;4 and

for “cruise ship services; arranging and conducting cruises for
others; transportation of passengers by ship.”5
In addition, opposer alleges that the doctrine of res
judicata precludes issuance of a registration to applicant for
the subject application. More specifically, opposer alleges that
the parties were previously involved in an opposition before the
Board over applicant’s then pending application Serial No.
75386136 for the following mark

2 Registration No. 1397148 issued on June 10, 1986, claiming use and
use in commerce since January 13, 1970, and disclaiming CARIBBEAN
apart from the mark as shown. Section 8 affidavit accepted, Section
15 affidavit acknowledged.
3 Registration No. 1667873 issued on December 10, 1991, claiming use
and use in commerce since November 14, 1989, and disclaiming CARIBBEAN
CRUISES LTD. apart from the mark as shown. First renewal.
4 Registration No. 1817745 issued on January 25, 1994, claiming various
first use and first use in commerce dates depending on the particular
class of goods. For example, the date of first use and first use in
commerce for “pocket knives” is claimed as August 1, 1991; for “beach
towels,” January 6, 1990; and for “Christmas tree ornaments,
aerodynamic disks for use in playing catching games, toy model ships,
and stuffed toys,” the claimed date of first use is December 2, 1986
and the claimed date of first use in commerce is July 1, 1991. First
renewal.
5 Registration No. 2408022 issued on November 28, 2000, claiming first
use and first use in commerce since June 1997, and further claiming
acquired distinctiveness pursuant to Trademark Act Section 2(f) with
respect to CARIBBEAN INTERNATIONAL.
Opposition No. 91160218
3

for “bread, buns, cakes, rolls, pastries, and bread dough.”
Opposer alleges further that the previous opposition was
sustained, and that the mark and goods in applicant’s present
application are substantially identical to the mark and goods in
applicant’s previous application.6
In its answer, filed on June 7, 2004, applicant denies the
salient allegations of the amended notice of opposition,
clarifying that its denial with respect to the claim of res
judicata is “…to the extent Application Serial No. 75386136 was
successfully opposed on the merits.” Applicant also asserts
certain affirmative defenses.
In a decision dated September 16, 2004, the Board considered
and denied applicant’s then pending motion to set aside the prior
judgment in Opposition No. 91113388. In the earlier proceeding
between the parties, applicant, after filing an answer, filed an
“express abandonment” of its then pending application Serial No.
75386136. Inasmuch as such abandonment was made without the
written consent of the opposer, the Board sustained the
opposition, entering judgment against the applicant and refusing

6 The earlier opposition referenced by opposer is Opposition No.
91113388. In the prior and current oppositions, opposer has alleged,
as an element of its likelihood of confusion claim, that it serves the
baked items identified by applicant in its applications to the
passengers aboard its ships.

Opposition No. 91160218
4
registration to applicant of its mark. See Trademark Rule 2.135;
and TBMP §602 (2nd ed. rev. 2004).
This case now comes up on opposer’s fully-briefed motion,
filed November 19, 2004, for summary judgment in its favor based
on the ground that the judgment in Opposition No. 91113388 bars
registration of applicant’s mark in the present case.
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56. A genuine dispute with respect to
a material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any particular factual issues are
genuinely in dispute must be resolved in the light most favorable
to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir. 1992).
Under the doctrine of claim preclusion (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 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
Opposition No. 91160218
5
F.2d 694, 222 USPQ 187 (Fed. Cir. 1984); and Flowers Industries,
Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987).
Turning now to the specifics of this case, in support of its
motion, opposer argues that the judgment against applicant in the
previous opposition, where applicant abandoned its application
without opposer’s written consent, bars applicant from now
registering its mark. Opposer argues that the present situation
is the same as that considered in Miller Brewing Company v. Coy
International Corporation, 230 USPQ 675 (TTAB 1986), where the
applicant in the first opposition between the parties abandoned
its application without the opposer’s written consent, barring
applicant, under the principles of res judicata, from registering
what was determined to be the same mark in the second opposition
between the parties, both applications being for “beer.”
In response, applicant argues that the present situation is
distinguishable from the facts of Miller Brewing, supra, and more
akin to Metromedia Steakhouses Inc. v. Pondco II Inc., 28 USPQ2d
1205 (TTAB 1993), where applicant’s two marks involved in two
different oppositions with the same opposer were determined to be
distinctly different; the mark in the earlier application, which
was expressly abandoned without opposer’s written consent, being
the words RANCH STEAK & SEAFOOD, and the mark in the second
application being a western design, including cactus with the
stylized words RANCH STEAK & SEAFOOD superimposed thereon, with
the word RANCH larger, and over the words STEAK & SEAFOOD.
Opposition No. 91160218
6
More specifically, applicant contends that the mark it now
seeks to register is physically different, thus conveying a
different commercial impression, from the mark it sought to
register in the earlier opposition. In addition, applicant
contends that the goods identified by its present application are
substantially different from the goods identified in its previous
application. Consequently, according to applicant, the evidence
opposer would have had to present in opposing applicant’s first
application differs from the evidence opposer should expect to
submit in this case on the likelihood of confusion claim. In
comparison, applicant argues that the applicant in Miller Brewing
sought to register the same mark both times for the same goods,
beer, thus necessitating in theory the presentation of the same
evidence in both cases on the likelihood of confusion claim.
In comparing its marks, applicant contends that its first
mark is composed of stylized lettering embedded in a banner with
a crown sitting atop the banner, and is lined for the colors red
and gold; while its second mark is composed of stylized lettering
embedded in a colorless banner with the crown somewhat submerged
in the banner. In addition, applicant argues that the two
banners differ in size, design and style and the lettering in
each of its marks differs in font style. Applicant further
argues that the identification of goods in its first application
was broad (“bread, buns, cakes, rolls, pastries, and bread
dough”), while the identification of goods in its present
Opposition No. 91160218
7
application is extremely narrow (“Jamaican style baked goods,
namely breads, cakes, rolls, muffins, puddings, tarts and buns”).
Notwithstanding applicant’s arguments to the contrary, the
mark applicant now seeks to register is virtually identical to
the mark it sought to register previously, and that it abandoned
without the written consent of opposer in the earlier opposition.
Applicant’s two marks convey the same commercial impression: a
regal banner proclaiming the words ROYAL CARIBBEAN BAKERY. The
banners, though not duplicates, are substantially the same in
shape. Applicant does not claim color for its present mark, as
it did for the earlier mark. Thus, the present mark is not
limited by color and may be presented in any color combinations
at applicant’s discretion, including red and gold, the colors
claimed previously. The crowns are located in the same place on
each banner and, but for the color lining in the first mark, are
otherwise the same in position and shape. The different fonts in
each mark for the word portions of the mark do not create
different commercial impressions for the words or for the overall
marks. Consequently, the minor alterations in the second mark,
as compared to the first mark, do not create a new mark
sufficient to allow applicant to seek registration in view of the
earlier judgment.
With respect to applicant’s goods set forth in each
application, the identification of goods in the first application
is broad and encompasses the narrower identification in the
second application. That is, most of the items in both
Opposition No. 91160218
8
applications are the same (bread, buns, cakes, rolls). The
restriction in the present application that the goods are to be
of Jamaican type does not aid applicant because, to the extent
the identifications list the same items, the identification in
the earlier application was unrestricted and has to be read to
encompass the identified baked goods of all types, including the
Jamaican type. See, for example, Domino's Pizza Inc. v. Little
Caesar Enterprises Inc., 7 USPQ2d 1359, 1366 n. 10 (TTAB 1988).
With respect to “tarts,” identified distinctly in the present
application but not in the prior application, such goods are
encompassed by the earlier application’s listing of “pastries.”
A “tart” is defined as follows: “1. a small shell of pastry
filled with jam, jelly, etc. 2. in England, a small pie filled
with fruit or jam and often having a crust top.”7 As to
“muffins,” identified in the present application but not in the
prior application, such goods may be considered “breads” and are
otherwise so similar in nature to the goods identified in the
first application that the earlier judgment would be binding. A
“muffin” is defined as follows: “a quick bread made with eggs,
baked in a small cup-shaped mold and usually eaten hot.”8
Lastly, “pudding,” identified in the present application but not
previously, is encompassed by the term “pastry.” “Pudding” is

7 See Webster’s New World Dictionary of the American Language New York:
Simon & Schuster (2nd College ed. 1982) at p. 1456. The Board may take
judicial notice of dictionary definitions. See, for example,
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
8 Id. at p. 934.

Opposition No. 91160218
9
defined, in part, as follows: “3. a sweetened dessert of this
kind, made as with rice or soaked bread, and variously containing
eggs, milk, fruit, etc.”9 However, even if “pudding” is not a
pastry here, and this single item presents a new question,
because it is embedded in the identification of the second
application that lists many of the items from the prior
application, the refusal must apply to the entire identification.
Moreover, an applicant cannot void the estoppel effect of the
decision of a prior disposition by insignificantly changing its
identification of goods. See Domino's Pizza Inc. v. Little
Caesar Enterprises Inc., 7 USPQ2d 1359, 1366 n. 10 (TTAB 1988).10
There is no dispute that the parties to this opposition are
the same as the parties in the earlier opposition.
An applicant that abandoned its prior application without
the written consent of the adverse party is barred by res
judicata from seeking to register a substantially identical mark
for the same goods. See Aromatique Inc. v. Lang, 25 USPQ2d 1359
(TTAB 1992); and Miller Brewing Company v. Coy International
Corporation, 230 USPQ 675 (TTAB 1986).
In view thereof, no genuine issue of material fact exists,
and opposer is entitled to judgment as a matter of law on its

9 Id. at p. 1149.
10 The Board notes, too, that the doctrine of res judicata is
applicable in an opposition proceeding where an applicant may be
seeking to register the same mark at issue in prior proceeding not
only with respect to an identical description of goods as had been
previously litigated, but with respect to all goods that could be said
to be encompassed by that description, at least where applicant was
actually using its mark at the time of the prior proceeding. See
General Electric Company v. Raychem Corporation, 204 USPQ 148 (TTAB 1979).
Opposition No. 91160218
10
claim of res judicata. Accordingly, opposer’s motion for summary
judgment is granted; the opposition is sustained; judgment is
entered against applicant; and registration to applicant is
refused.11
☼☼☼

11 In view of our decision herein, applicant’s motion, filed November
1, 2004, to compel opposer’s responses to applicant’s discovery
requests need not be considered.