Sports Machine, Inc.v.Midwest Merchandising, Inc.

Trademark Trial and Appeal Board

Nov 20, 2003

No. 91122948 (T.T.A.B. Nov. 20, 2003)

Baxley Mailed: November 20, 2003
Opposition No. 91122948
SPORTS MACHINE, INC. d/b/a
BIKE SOURCE
v.
MIDWEST MERCHANDISING, INC.
Before Bucher, Bottorff and Holtzman,
Administrative Trademark Judges.
By the Board:
Midwest Merchandising, Inc ("applicant") seeks to
register BIKESOURCE in typed form ("the involved mark") for
"retail store outlets featuring bicycles, bicycle
accessories and replacement parts, and apparel relating to
bicycling" in International Class 35.1
Registration has been opposed by Sports Machine, Inc.
d/b/a Bike Source ("opposer") on the ground that the
involved mark is merely descriptive of applicant's services
under Trademark Act Section 2(e)(1), 15 U.S.C. Section
1052(e)(1).
On November 14, 2001, the Board issued an order wherein
it suspended proceedings herein pending final disposition of
1 Application Serial No. 76035008, filed April 20, 2000, alleging
March 15, 1991 as the date of first use and first use in
commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Opposition No. 91122948
2
Cancellation No. 92030578 ("the cancellation proceeding")
between the parties. In the cancellation proceeding,
opposer sought to cancel applicant's Registration No.
1887592 for the mark BIKESOURCE in the following stylized
form
also for "retail store outlets featuring bicycles, bicycle
accessories and replacement parts, and apparel relating to
bicycling" on the ground that such mark is merely
descriptive of applicant's services under Trademark Act
Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).2 On December
31, 2002, the Board issued a final decision on the merits in
the cancellation proceeding wherein it denied opposer's
petition to cancel. In particular, the Board found that
BIKESOURCE in the stylized form set forth supra is
"suggestive rather than merely descriptive" of applicant's
services. Sports Machine, Inc., d/b/a BikeSource v. Midwest
Merchandising, Inc. at 15 (TTAB, Cancellation No. 92030578,
December 31, 2002).
This case now comes up for consideration of applicant's
combined motion (filed March 12, 2003) to resume proceedings
2 Registration No. 1887592, issued April 4, 1995 and reciting
March 15, 1991 as the date of first use and date of first use in
commerce.
Opposition No. 91122948
3
herein and to enter judgment against opposer on the
affirmative defense of res judicata, i.e., claim preclusion.
The motion has been fully briefed.3
In support of its motion, applicant contends that this
proceeding should be resumed inasmuch as the Board issued a
final decision wherein the Board denied opposer's petition
to cancel in the cancellation proceeding and no appeal of
that decision was filed; that this opposition proceeding
involves the same issue as the cancellation proceeding; that
the Board decided in the cancellation proceeding that the
mark BIKESOURCE in the stylized form set forth supra is not
merely descriptive under Trademark Act Section 2(e)(1), 15
U.S.C. Section 1052(e)(1); that, as part of its decision in
the cancellation proceeding, the Board determined that
BIKESOURCE, regardless of stylization, was not merely
descriptive; and that, while the Board's decision in the
cancellation proceeding involved the mark BIKESOURCE in
stylized form, the analysis regarding whether BIKESOURCE in
typed form is merely descriptive would produce the same
result. Accordingly, applicant contends that opposer is
3 Applicant's reply brief is eleven pages in length. Inasmuch as
it exceeds the ten-page limit for reply briefs on motions in
Board inter partes proceedings, it has not been considered. See
Tradmark Rule 2.127(a); and Saint-Gobain Corp. v. Minnesota
Mining and Manufacturing Co., 66 USPQ2d 1220 (TTAB 2003).
Further, Rule 2.127(a) expressly prohibits the filing of sur-
reply briefs in connection with motions in Board inter partes
proceedings. Accordingly, opposer's sur-reply brief and
applicant's response thereto have received no consideration.
Opposition No. 91122948
4
precluded from pursuing a claim that BIKESOURCE is merely
descriptive and, therefore, asks that judgment be entered in
applicant's favor in the above-captioned proceeding. As
exhibits in support of its motion, applicant included copies
of the final decision in the cancellation proceeding,
opposer's motion (filed July 9, 2001) to consolidate this
proceeding and the cancellation proceeding, and the Board's
November 14, 2001 order wherein it denied the motion to
consolidate and suspended this proceeding pending final
determination of the cancellation proceeding.
In response, opposer contends that it does not object
to resumption of this proceeding. With regard to
applicant's motion for judgment on the affirmative defense
of res judicata, however, opposer contends that entry of
judgment is premature because the Board's denial of its
petition to cancel in the cancellation proceeding is not
dispositive of this proceeding; and that the fact that the
Board found in the cancellation proceeding that BIKESOURCE
in the stylized form set forth supra was not merely
descriptive does not necessarily mean that BIKESOURCE in
typed form is not merely descriptive. Accordingly, opposer
asks that the Board deny applicant's motion for judgment and
resume proceedings herein. As an exhibit in support of its
brief, opposer included a copy of its motion to consolidate
this proceeding and the cancellation proceeding.
Opposition No. 91122948
5
Inasmuch as applicant's motion relies upon matters
outside the pleadings, it is actually a motion for summary
judgment, and will be treated accordingly. Cf. TBMP
Sections 503.04 and 504.03.
We note initially that, inasmuch as the cancellation
proceeding was not finally determined until shortly before
applicant filed its motion for summary judgment, applicant
could not allege as an affirmative defense of res judicata
based on the Board's decision in the cancellation proceeding
in its answer (filed July 11, 2001), and that applicant did
not move for leave to amend its answer herein to allege such
an affirmative defense after the final determination of the
cancellation proceeding. 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 applicant's motion, have
addressed the issue of res judicata on its merits, and
opposer did not object to the motion on the ground that it
is based on an unpleaded issue, the Board hereby deems
applicant's answer to have been amended, by agreement of the
parties, to allege an affirmative defense of res judicata.
See Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772
(TTAB 1994); TBMP Section 528.07(a).
Opposition No. 91122948
6
The "[a]pplication of res judicata [claim preclusion]
requires a prior final judgment on the merits by a court or
other tribunal of competent jurisdiction; identity of the
parties or those in privity with the parties; and a
subsequent action based on the same claims that were raised,
or could have been raised, in the prior action."
International Nutrition Co. v. Horphag Research Ltd., 220
F.3d 1325, 1328, 55 UPSQ2d 1492, 1494 (Fed. Cir. 2000).
After careful review of the record we find that the
doctrine of res judicata is applicable in this proceeding.
Opposer does not dispute that a final determination was
reached in the cancellation proceeding, and that the same
parties were involved in the cancellation proceeding. Thus,
the remaining issue is whether this proceeding is based on
the same claim as the cancellation proceeding.
In evaluating the similarity of the claims, the Board
looks to whether the mark involved in this subsequent
proceeding is the same mark, in terms of commercial
impression, as the mark in Registration No. 1887592, the
mark in the cancellation proceeding. See Polaroid Corp. v.
C & E Vision Services Inc., 52 USPQ2d 1954, 1957 (TTAB
1999). The involved mark consists of the word BIKESOURCE in
typed form,4 while the mark in Registration No. 1887592
4 Because the involved mark is in typed form, it is not
restricted to any specific form of presentation. See In re
Fisher Tool Co., Inc., 224 USPQ 796 (TTAB 1984).
Opposition No. 91122948
7
consists of BIKESOURCE in minimally stylized block capital
letters and includes no additional elements, such as a
design or border. As such, the involved mark and the mark
in Registration No. 1887592 are considered to have the same
commercial impression. See Squirtco v. Tomy Corporation,
697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983).
Further, the involved application and Registration No.
1887592 contain identical recitations of services. Thus,
the evidence of descriptiveness would be identical.
Accordingly, we conclude that the claim that opposer is
asserting herein is identical to the one that it asserted
unsuccessfully in the cancellation proceeding and that
opposer is not entitled to relitigate that claim.
In view thereof, applicant's motion for summary
judgment on the affirmative defense of res judicata is
hereby granted.5 The opposition is dismissed with
prejudice, and judgment in applicant's favor is hereby
entered.
5 Accordingly, applicant's motion to resume proceedings is moot.