Schering Corporationv.Diagnostic Test Group LLC

Trademark Trial and Appeal Board

Jun 12, 2008

No. 91179748 (T.T.A.B. Jun. 12, 2008)

THIS OPINION IS NOT
A PRECEDENT OF UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THE T.T.A.B.

WINTER
Mailed: June 12, 2008

Opposition No. 91179748

Schering Corporation

v.

Diagnostic Test Group LLC

Before Quinn, Rogers, and Mermelstein,
Administrative Trademark Judges.

By the Board:

Diagnostic Test Group LLC1 (hereafter “applicant”)
seeks to register the mark CLARITY and Design (shown below)

1 The involved application was published in the name of
“Diagnostic Test Group, Inc.” and the opposition was thus
correctly filed against applicant in that name. The declaration
(¶7) of Rick Simpson, Chief Executive Officer of applicant
(attached to applicant’s brief in opposition to opposer's pending
motion for summary judgment) clarifies that applicant’s correct
name is Diagnostic Test Group LLC. Accordingly, the caption of
this proceeding has been changed as shown above. TBMP § 512.04
(2d ed. rev. 2004).
Opposition No. 91179748
for goods identified as “diagnostic agents, preparations and
substances for medical purposes; diagnostic preparations for
clinical or medical laboratory use; medical diagnostic
reagents and assays for testing of body fluids; medical
diagnostic test strips for use in the field of monitoring
and detecting infection, hormone levels, and chemistry in
blood, urine, and stool samples; and medical test kits for
diabetes monitoring for home use.”2
Schering Corporation (hereafter “opposer”) opposes the
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 “continuous and uninterrupted” use of the
marks CLARITIN and CLARINEX (and marks “dominated by
CLARITIN and CLARINEX”) since the dates of first use of
those marks, and pleads ownership of thirteen trademark
registrations for the marks CLARITIN, CLARINEX, and CLARITIN
and CLARINEX formative marks for, inter alia,
antihistamines, decongestants, anti-allergy preparations,
downloadable electronic newsletters and newsletters on the
subject of allergies, and for providing medical information
on the subject of allergies.3 An answer has not yet been
filed in this proceeding.

2 Application Serial No. 77094617, filed January 30, 2007 based on
applicant’s claimed use of the mark in commerce. Applicant has
claimed the colors white, red, black and gray as features of the
mark.
3 The pleaded registrations for the CLARITIN, CLARINEX, and
CLARITIN and CLARINEX formative marks are: Reg. No. 1498292,
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Opposition No. 91179748
This case now comes up on opposer’s fully briefed
motion (filed October 24, 2007) for summary judgment in its
favor on the basis that applicant’s mark is barred from
registration by the doctrine of res judicata.
Preliminary Matters
The Board notes applicant’s alternative motion for
discovery under Federal Rule 56(f). Because the motion was
filed more than thirty days after the date of service of
opposer’s motion for summary judgment, applicant’s
alternative motion is untimely and will not be considered.
See Trademark Rule 2.127(e)(1).
We also note that opposer does not plead in the notice
of opposition that applicant’s registration is barred by the
doctrine of res judicata. A party may not obtain summary
judgment on an issue that has not been pleaded. See Fed. R.
Civ. P. 56(a) and 56(b); S. Industries Inc. v. Lamb-Weston
Inc., 45 USPQ2d 1293, 1297 (TTAB 1997). However, inasmuch
as the parties, in briefing opposer's motion, have addressed
the issue of res judicata on its merits, and applicant did
not object to the motion on the ground that it is based on
an unpleaded issue, the Board hereby deems opposer’s

issued August 2, 1988; Reg. No. 1912214, issued August 5, 1995;
Reg. No. 2816780, issued February 24, 2004; Reg. No. 2819388,
issued March 2, 2004; Reg. No. 2824753, issued March 23, 2004;
Reg. No. 2862382, issued July 13, 2004; Reg. No. 3096051, issued
May 23, 2006; Reg. No. 3140850, issued September 12, 2006; Reg.
No. 2455742, issued on May 29, 2001; Reg. No. 2595718, issued
July 16, 2002; Reg. No. 2660350, issued December 10, 2002; Reg.
No. 2705267, issued April 8, 2003; and Reg. No. 2805613, issued
January 13, 2004.
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Opposition No. 91179748
pleading to have been amended, by agreement of the parties,
to allege a claim based on the doctrine of res judicata.
See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772
(TTAB 1994); TBMP § 528.07(a) (2d ed. rev. 2004).
Background
Before turning to the merits of the motion for summary
judgment, we note the following facts, which in part provide
the basis for opposer’s motion.
Applicant's predecessor, R.A.C. Medical Group, Inc.
(hereafter may be referred to as RAC), previously filed an
application for registration of the mark MEDICAL RAC+
CLARITY and Design (shown below) for use in connection with
“medical diagnostic point-of-care test kits and supplies,
namely diagnostic test strips for testing urine, blood and
stool samples.”4

4 Application Serial No. 78369843, filed February 18, 2004 based
on claimed use of the mark in commerce. RAC claimed the colors
white, red, black and gray as features of the mark. In June
2005, applicant acquired RAC, causing applicant to become the
interested party. (see ¶¶ 3-4 of the Simpson declaration, supra,
footnote 1)
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Opposition No. 91179748

Opposer and its sister corporation, Schering-Plough
HealthCare Products, Inc., opposed said application in
Opposition No. 91168189 also on the ground of likelihood of
confusion and, in support thereof, pleaded, inter alia, the
same thirteen CLARITIN, CLARINEX, and CLARITIN and CLARINEX
formative marks that opposer pleads in the present
opposition. The due date for RAC's answer was reset to
accommodate settlement discussions, however, RAC never filed
an answer.
On January 25, 2007, because RAC had not filed an
answer or another request for an extension of time to file
its answer, the Board issued a notice of default judgment in
Opposition No. 91168189.5
On January 30, 2007, applicant filed its new
application for the mark CLARITY and Design.

5 Nor had applicant stepped forward in RAC's place to file an
answer or request for extension, despite being represented by the
same counsel as RAC.

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Opposition No. 91179748
On February 23, 2007, because neither RAC nor applicant
responded to the notice of default, the Board entered a
default judgment against RAC in Opposition No. 91168189 and
refused registration. The judgment was not appealed and is
final.
We reiterate that RAC was represented in the prior
opposition proceeding by the same counsel that currently
represents applicant. We note further that, prior to the
issuance of the notice of default in the prior case, RAC
sought and was granted two extensions of time to file its
answer and a six-month suspension of the proceeding to
pursue settlement discussions between the parties.
Summary Judgment Motion
Opposer contends that as a consequence of the default
judgment entered against RAC in the prior opposition,
applicant’s current mark is barred from registration under
the doctrine of res judicata and offers two reasons
therefor. First, opposer argues that the transactional
facts of the proceedings are the same, i.e. the mark
involved in the present opposition creates substantially the
same commercial impression as the mark involved in the prior
opposition, the goods in the prior application include the
goods set forth in the later-filed application, and the
involved parties are legally the same. Opposer also argues
that the doctrine of res judicata should be applied in this
case to achieve judicial economy and to protect opposer from
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Opposition No. 91179748
having to relitigate issues settled by the default judgment
in the prior opposition.
Applicant argues in opposition that summary judgment is
not proper in this case because applicant’s new application
was not filed in order to avoid the res judicata effect of a
prior adverse ruling against it. Specifically, applicant
claims that it abandoned its prior mark because it did not
use the tradename “MEDICAL RAC” after its purchase of R.A.C.
Medical Group, Inc. in June 2005, and that it filed the
second application before the entry of default judgment in
the earlier proceeding. Applicant also argues that the
transactional facts of the two proceedings are dissimilar
because the marks and the goods in the respective
applications are not the same. In support of its arguments,
applicant has provided the declaration of its Chief
Executive Officer, Rick Simpson.
Summary judgment is an appropriate method of disposing
of a case 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 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. See Celotex
Corp. v. Catrett, 477 U.S. 317 (1986); and Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793
(Fed. Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could
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Opposition No. 91179748
resolve the matter 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); and Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). Further, the evidence must be viewed in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, supra.
The form of res judicata involved in this proceeding is
claim preclusion because the pleaded ground of likelihood of
confusion was not litigated and decided in the prior
opposition, and issue preclusion cannot arise when issues
are not tried and necessary to a final decision. See Sharp
Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.3d 1368, 79
USPQ2d 1376, 1378 (Fed. Cir. 2006). Under the doctrine of
claim preclusion, the entry of a final judgment “on the
merits” of a claim 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 American Corp. v. Kenneth
Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984);
and Flowers Industries, Inc. Interstate Brands Corp., 5
USPQ2d 1580 (TTAB 1987). Thus, it is well established that
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Opposition No. 91179748
“a default judgment can operate as res judicata in
appropriate circumstances.” ThinkSharp, 79 USPQ2d at 1371,
citing Morris v. Jones, 329 U.S. 545, 550-551
(1947)(internal quotations and citations omitted). See also
International Nutrition Co. v. Horphag Research Ltd., 55
USPQ2d 1492, 1494 (Fed. Cir. 2000).
Further, for claim preclusion to apply, there must be
(1) an identity of parties or their privies, (2) a final
judgment on the merits of the prior claim, and (3) the
second claim must be based on the same transactional facts
as the first and should have been litigated in the prior
case. Parklane Hosiery Co. v. Shore, 439 U.S. 322, 327 n.5
(1979); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360,
55 USPQ2d 1854, 1856 (Fed. Cir. 2000). Stated otherwise,
“so long as opposing parties had an adequate opportunity to
litigate disputed issues of fact, res judicata is properly
applied.” ThinkSharp, 79 USPQ2d at 1379, citing Kremer v.
Chemical Construction Corporation, 456 U.S. 461, 485 n.26
(1982).
With respect to the current Board proceeding, the
parties do not dispute the identity of the parties6 or

6 In support of opposer’s allegation that the prior applicant,
R.A.C. Medical Group, Inc., and the present applicant are the same
party, opposer provided a copy of a letter dated May 8, 2006 written
to opposer’s counsel by applicant’s counsel, which confirmed that
Diagnostic Test Group and R.A.C. Medical Group, Inc. are the same
company. (see Exhibit 6 to opposer’s motion) Applicant’s statements
regarding the identity of the parties are set forth at page 3 of its
brief and in ¶¶ 3-4 of the Simpson declaration, supra, footnote 1.
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Opposition No. 91179748
whether there was a final judgment on the merits of the
prior claim. Accordingly, no genuine issues of material
fact exist regarding the first two factors of the res
judicata analysis. Rather, the parties dispute whether the
present claim, i.e., applicant's entitlement to registration
of the mark CLARITY and Design, is based on the same set of
transactional facts as RAC’s claim of right to registration
in the prior opposition. Specifically, the parties disagree
whether the marks are the same and whether the goods
identified in the application that was the subject of the
prior opposition are the same as the goods identified in the
current application. Thus, the issue for the Board to
consider is whether genuine issues of material fact exist
regarding the third claim preclusion factor, viz., whether
the mark in this proceeding evokes the same commercial
impression as the mark involved in the prior opposition and
whether the goods in the involved application are identical
to or could be encompassed by the goods in the prior
application.
To determine whether the two particular opposition
proceedings involve the same mark for purposes of claim
preclusion, the Board applies the analysis adopted by the
U.S. Court of Appeals for the Federal Circuit in Chromalloy,
supra, specifically, Section 24 of the Restatement [Second]

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Opposition No. 91179748
of Judgments (1982). In view thereof, we must consider
whether the involved marks are the same or are legally
equivalent in terms of commercial impression. See Institut
National Des Appellations d’Origine v. Brown-Forman Corp.,
47 USPQ2d 1875, 1894 (TTAB 1998).
Applying this analysis to the present case, we find
that the mark in the application that was the subject of the
prior opposition proceeding, MEDICAL RAC+ CLARITY and
Design, is the same mark in terms of commercial impression,
as CLARITY and Design, the mark involved in this proceeding.
Clearly, the mark CLARITY and Design evolved out of the mark
MEDICAL RAC+ CLARITY and Design. Both marks contain the
same dominant term CLARITY shown in the color white on a red
background in front of a checkmark. In addition, each
checkmark design fades from black to gray to white at the
top of the checkmark design. As a result of these common
elements, each mark projects virtually identical commercial
impressions. Further, we find the deletion of the small
MEDICAL RAC+ and design shown in the top left corner of the
earlier mark is a minor alteration. As such, the mark shown
in the second application does not rise to the level of a
new mark with a different commercial impression, sufficient
to allow applicant to seek registration herein and avoid the
judgment in the prior case. See Miller Brewing Co. v. Coy
Int’l Corp., 230 USPQ 675 (TTAB 1986) (finding claim
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Opposition No. 91179748
preclusion with respect to a design mark which evolved out
of an earlier design mark which had been the subject of an
opposition proceeding between the parties, finding any
changes to the mark were minor and did not change the
commercial impression); Aromatique Inc. v. Langu, 25 USPQ2d
1359 (TTAB 1992) (finding claim preclusion with respect to a
mark which had minor alternations in typeface and
capitalization to an earlier mark that was the subject of an
opposition between the parties, finding the commercial
impression the same).
In regard to the goods described in the prior and
current applications, applicant’s argument that the goods
are different is unavailing. The identification of goods
described in the first application, namely, “diagnostic test
strips for testing urine, blood and stool samples”
encompasses “medical diagnostic test strips for … blood,
urine, and stool samples” (in the involved application)
inasmuch as both goods are instruments for testing body
fluids and “medical diagnostic test strips” are a type of
“diagnostic test strip.” See General Electric Company v.
Raychem Corporation, 204 USPQ 148, 150 (TTAB 1979)(the
doctrine of res judicata is applicable 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 [prior] description), citing Toro
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Opposition No. 91179748
Co. v. Hardigg Industries, Inc., 549 F.2d 785, 193 USPQ 149
(CCPA 1977). Cf. J.I. Case Co. v. F.L. Indus., Inc., 229
USPQ 697 (TTAB 1986) (finding issue preclusion with respect
to a stylized mark wherein the mark in the earlier
proceeding was typed and the goods covered in the present
application were encompassed within the broad designation of
goods in the prior application).
Further, “diagnostic agents, preparations and
substances for medical purposes,” “diagnostic preparations
for clinical or medical laboratory use” and “medical test
kits for diabetes monitoring for home use” are also
instruments for testing body fluids. While these goods are
not per se identical to “diagnostic test strips for testing
urine, blood and stool samples” (described in the first
application) and these items may present a new question,
because these goods are embedded in the identification of
goods in the second application that lists the above-
referenced items within the first application, the refusal
must apply to the entire identification of goods. Moreover,
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., 229 USPQ at
697; and Domino’s Pizza Inc. v. Little Caesar Enterprises
Inc., 7 USPQ2d 1359, 1365 n.10 (TTAB 1988). In view
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Opposition No. 91179748
thereof, there is no genuine issue of fact regarding the
third factor of the res judicata analysis.
Inasmuch as there are no genuine issues of fact as to
whether res judicata (claim preclusion) applies to this
proceeding, we now turn to whether any facts of record
would preclude entry of summary judgment in opposer’s favor
on the claim of res judicata as a matter of law. See,
e.g., ThinkSharp, 79 USPQ2d at 1379 (in denying the
preclusive effect of the other proceeding, the Board gave
weight to the undisputed fact that the separate
applications, filed within four months of each other, were
not filed in order to evade a prior adverse judgment); and
Metromedia Steakhouses Inc. v. Pondco II Inc., 28 USPQ2d
1205, 1208 (TTAB 1993)(summary judgment on res judicata
denied because, inter alia, “both applications had been
filed long before opposer objected to registration of the
first mark [and] … when the second application was filed,
the opposition to the first had not yet even been
instituted”). Specifically, we review applicant’s
arguments concerning its rationale for “abandoning the
prior mark and filing a new application.” (Brief, page 7)
As noted supra, applicant contends that claim
preclusion is inapplicable to the involved application
because applicant filed the second application before the
entry of default judgment against RAC in the prior
proceeding. Applicant also asserts that it stopped using
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Opposition No. 91179748
the tradename “RAC MEDICAL” and the trademark “MEDICAL RAC
CLARITY and design” in commerce after its purchase of R.A.C.
Medical in June 2005. (Brief page 3; Simpson dec., ¶¶ 3-4)
These facts allegedly show that applicant had no intent to
avoid the preclusive effect of the default judgment against
RAC. Further, because removal of the “MEDICAL RAC+” portion
of the prior mark would have been considered a material
alteration, applicant contends that it “had no choice but to
proceed in that fashion.” (Brief, page 6) In short,
applicant argues that, because it could not have amended the
prior application, “this left Diagnostic Test with the
choice of committing a fraud on the Board by continuing to
pursue a trademark that it no longer used or planned to use
in commerce, or abandoning the prior mark and filing a new
application.” (Brief, page 7)
Contrary to applicant’s arguments, the facts of record
show that claim preclusion is properly applied here. We are
also not persuaded by applicant’s explanation that it had
limited choices. As noted supra, applicant’s counsel
represented RAC in the prior proceeding, filed two
extensions of time to file an answer, and should have known
the consequences of not filing an answer to the notice of
opposition after the notice of default was issued.
Moreover, applicant waited more than eighteen months after
it had changed its tradename (i.e. from June 2005 to January
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Opposition No. 91179748
2007), and waited until after the suspension period had
expired in the prior proceeding and after the apparent
failure of the parties to reach a settlement, to file the
application for its new mark. These facts weigh against a
finding that the filing of the new application just days
after the notice of default issued was not an attempt to
circumvent what would become the preclusive effect of the
default judgment entered in the prior opposition proceeding.
Furthermore, neither the record of the prior opposition
proceeding,7 nor any assertion in the briefs or evidence now
before us, indicate that RAC or applicant was deprived of or
lacked full opportunity to defend the prior proceeding. In
short, applicant clearly allowed judgment on the merits to
be entered, and such judgment was final. In view thereof,
we find that no circumstances exist that would support a
finding that opposer is not entitled to judgment on the
issue of res judicata as a matter of law.
In sum, there exist no genuine issues of material fact
regarding the requisite elements for claim preclusion (res
judicata) and we find that opposer is entitled to judgment
as a matter of law.
Accordingly, opposer’s motion for summary judgment is
granted on the ground of res judicata, judgment is hereby

7 See Exhibits 2, 3 and 4 to opposer’s motion.
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Opposition No. 91179748
entered against applicant, the opposition is sustained, and
registration of applicant's mark is refused.
•••
17