TBC Brands, LLC Inc.v.Empire Publications, Inc.

Trademark Trial and Appeal Board

Jun 2, 2009

No. 91184229 (T.T.A.B. Jun. 2, 2009)

MBA Mailed: June 2, 2009

Opposition No. 91184229
TBC Brands, LLC Inc.

v.

Empire Publications, Inc.

Before Grendel, Walsh and Wellington, Administrative
Trademark Judges

By the Board:
This case now comes up for consideration of: (1)
applicant’s motion for leave to file an amended answer and
counterclaims, filed January 23, 2009; (2) applicant’s
motion to extend the discovery period, also filed January
23, 2009; and (3) opposer’s “motion for judgment,” filed
February 12, 2009, which we construe as a motion for summary
judgment because it is based on matters outside the
pleadings. TBMP § 504.03 (2d ed. rev. 2004). All three
motions are fully briefed.
Background
This is the second opposition proceeding between the
parties concerning applicant’s mark shown below:
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91184229
2

In the first proceeding, Opposition No. 91177842 (the “First
Opposition”), opposer challenged applicant’s application to
register the mark for “magazines featuring advertisements
for the sale of trucks and equipment” (the “First
Application”).1 Specifically, opposer alleged prior use and
registration of TBC, and variations thereof, for vehicle-
parts and related products and services,2 and that the mark
in the First Application is likely to cause confusion with
opposer’s marks. On October 25, 2007, the Board entered
default judgment against applicant in the First Opposition,
after applicant failed to file an answer in the First
Opposition.
On July 24, 2007, the day applicant’s answer was due in
the First Opposition, applicant’s former attorney executed
the certificate of mailing through which applicant filed a
new application for registration of the same mark, this time
for “magazines featuring advertisements for the sale of used
trucks and equipment; magazines featuring advertisements for
the sale of new and used trucks and trailers, new, used and

1 Application Serial No. 78837813, filed March 15, 2006, based
on an alleged intent to use the mark in commerce, with TRUCK
BUYERS GUIDE disclaimed.
2 Registration Nos. 1113549, 2114992, 2811332 and 3061728.

Opposition No. 91184229
3
aftermarket equipment for trucks and trailers, and industry
related goods and services” (the “Second Application”).3 In
its notice of opposition to this Second Application, opposer
again alleges, as it did in the First Opposition, prior use
and registration of TBC and variations thereof for vehicle-
parts and related products and services,4 and that the mark
in the Second Application is likely to cause confusion with
opposer’s marks (the “Second Opposition”). In addition,
opposer alleges, as a separate ground for the Second
Opposition, “claim preclusion and estoppel.” Specifically,
opposer alleges that “[b]y reason of [the default judgment
in the First Opposition], Applicant is legally estopped,
precluded and barred from obtaining registration” of the
mark in the Second Application. In its answer, applicant
denies the salient allegations in the Second Opposition.
Motion for Summary Judgment
Opposer seeks summary judgment based on res judicata
(claim preclusion). Opposer contends that the default
judgment in the First Opposition was a “final judgment on
the merits” and that the parties to the First Opposition are
the same as the parties to the Second Opposition. Opposer
further argues that the Second Opposition “is based on the

3 Application Serial No. 76680109, filed July 30, 2007, based
on an alleged date of first use in commerce of 1973, with TRUCK
BUYERS GUIDE disclaimed.
4 In this opposition, opposer again pleads ownership of the
same Registration Nos. 1113549, 2114992, 2811332 and 3061728.
Opposition No. 91184229
4
same claims that were raised -- or could have been raised --
in the [First] Opposition,” because not only is the same
mark at issue in both proceedings, but the goods in the
Second Application are also the “same” as those in the First
Application. Finally, while acknowledging applicant’s
pending motion for leave to add counterclaims to the Second
Opposition, opposer contends that the proposed counterclaims
are irrelevant to its motion for summary judgment. “The
counterclaims [applicant] now seeks to litigate were
compulsory and fully available to it in the [First]
Opposition, and should have been raised in that proceeding.
[Applicant] having failed to do so … now is precluded from
challenging that judgment.”
In its opposition to the motion for summary judgment,
applicant claims that after termination of the First
Opposition, opposer’s Registration No. 2114992 was cancelled
under Section 8 of the Act, and that, as explained in its
motion for leave to amend, applicant has grounds to petition
to cancel opposer’s three remaining pleaded registrations,
Registration Nos. 1113549, 2811332 and 3061728.5 Applicant
further argues that it “filed the application at issue in

5 In its original motion for leave to amend, applicant sought
to add counterclaims for cancellation of opposer’s Registration
Nos. 2811332 and 3061728 only. Then, on March 4, 2009, after
proceedings herein were suspended pending a ruling on opposer’s
motion for summary judgment, applicant sought to add another
counterclaim, this one for cancellation of opposer’s Registration
No. 1113549.
Opposition No. 91184229
5
this opposition prior to any entry of judgment by the TTAB
in the first opposition,” and that “[t]he filing of the
second application was not an attempt by Applicant to evade
a prior adverse judgment” (emphasis in original). According
to applicant, “the identification of goods in the first and
second applications are different,” precluding application
of res judicata. Finally, applicant argues that its
proposed counterclaims were not compulsory in the first
proceeding, because applicant only recently learned the
factual bases therefor. Applicant concedes, however, that
the proposed counterclaims are based on its review of the
“file histories” of opposer’s registrations.
In its reply brief, opposer points out that applicant
filed the Second Application after it was in default in the
First Opposition, and argues that “[t]here is no question
this subsequent filing was an attempted ‘redo,’ to evade the
consequences of the [First] Opposition.” Opposer argues
that “so long as any one item in the second application was
present in the first application -- the presence of other or
additional products in the identification of goods in the
second application is immaterial; the second application
still is barred under the doctrine of res judicata by the
final judgment in the first application.” Finally, opposer
argues that even if applicant’s proposed counterclaims were
accepted and ultimately successful, applying res judicata
Opposition No. 91184229
6
would still be appropriate, because opposer pled priority of
use, not only registration, of its marks in both the First
and Second Oppositions.
Summary judgment is only appropriate where there are no
genuine issues of material fact in dispute, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ. P.
56(c). The party seeking summary judgment bears the burden
of demonstrating the absence of any genuine issue of
material fact, and that it is entitled to a judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
1987). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could 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, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
The evidence on summary judgment 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.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
The Board may not resolve issues of material fact; it may
Opposition No. 91184229
7
only ascertain whether issues of material fact exist. See
Lloyd’s Food Products, 25 USPQ2d at 2029; Olde Tyme Foods,
22 USPQ2d at 1542.
Under the doctrine of res judicata or claim preclusion,
“a judgment on the merits in a prior suit bars a second suit
involving the same parties or their privies based on the
same cause of action.” Jet, Inc. v. Sewage Aeration
Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir.
2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322,
326 n. 5 (1979)). “For claim preclusion based on a judgment
in which the claim was not litigated, there must be (1) an
identity of the 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.” Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.3d
1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006).
Here, there is no dispute that the first two conditions
are met, because the parties in the two opposition
proceedings are identical, and there was a final judgment in
the First Opposition. While the final judgment in the First
Opposition was by default, that does not preclude
application of res judicata in the Second Opposition.
International Nutrition Co. v. Horphag Research Ltd., 220
F.3d 1325, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000) (“default
Opposition No. 91184229
8
judgments can give rise to res judicata”); see also, Bass
Anglers Sportsman Society of America, Inc. v. Bass Pro
Lures, Inc., 200 USPQ 819, 822 (TTAB 1978) (“the application
of a legal doctrine which would be appropriate to a judgment
after trial is equally appropriate to a judgment by
default”); Wells Cargo, Inc. v. Wells Cargo, Inc., 197 USPQ
569, 571 (TTAB 1977), aff’d, 606 F.2d 961, 203 USPQ 564
(CCPA 1979) (“The conservation of the Board’s time and
resources and the need for finality to litigation require
that the party which failed to contest the matter at its
first opportunity should not, at its option, be permitted to
reopen questions that have been concluded. An applicant’s
default … is all that is necessary to support the
judgment.”).
The question, therefore, is whether the Second
Opposition is based on the same transactional facts as the
First Opposition. We find that it is. First, there is no
dispute that the mark in the Second Application is identical
to the mark in the First Application. Answer in Second
Opposition ¶ 5. Second, while the goods in the Second
Application are not identical to those listed in the First
Application, they are encompassed thereby and the
differences between the goods in the two applications are
insignificant. They therefore do not preclude application
of res judicata. J.I. Case Company v. F.L. Industries,
Opposition No. 91184229
9
Inc., 229 USPQ 697, 700 (TTAB 1986) (“the Board’s prior
decision precludes applicant from now coming in and
specifying several different specialized lubricant products
and thereby attempting to avoid the preclusive effect of the
broad judgment rendered in the first case against
applicant’s broad description of goods, i.e., ‘multi-purpose
lubricants’”); General Electric Company v. Raychem Corp.,
204 USPQ 148, 150 (TTAB 1979) (res judicata applicable “not
only with respect to the 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 of
goods …”); Bass Anglers, 200 USPQ at 822; Wells Cargo, 197
USPQ at 571.
Applicant’s arguments against application of res
judicata are unavailing. As opposer points out, the First
Opposition and Second Opposition are both based not solely
on opposer’s registrations, but also on opposer’s use of its
marks. Moreover, applicant did not raise any affirmative
defense that opposer abandoned its TBC marks or that opposer
no longer has common law rights in the marks. Therefore,
applicant’s contention that the registrations are or should
be cancelled, and its proposed counterclaims, do not prevent
the application of res judicata.6 Furthermore, while it is

6 In any event, because applicant concedes that the grounds
for two of the proposed counterclaims are based on its review of
the file histories for opposer’s registrations, they were known
Opposition No. 91184229
10
true that applicant filed the Second Application prior to
default judgment being entered in the First Opposition, it
is also true that applicant did not file its Second
Application until after its answer was due in the First
Opposition, i.e. after it was in default. “The Board does
not wish to encourage losing parties to insignificantly
modify their marks after an adverse ruling and thereby avoid
the res judicata effect of the prior adjudication.” Miller
Brewing Company v. Coy International Corporation, 230 USPQ
675 (TTAB 1986). Here, while the default judgment in the
First Opposition had not yet issued at the time applicant
filed the Second Application, the principle is the same.
To allow an applicant to avoid res
judicata under these circumstances would
be to put an opposer to the intolerable
burden of facing a never-ending series
of proceedings against an applicant who
loses an opposition on a broad
identification of goods and then
proceeds to file successive applications
for the same mark on narrower
identifications of goods, or on goods
directed solely to one trade channel or
another ….

General Electric, 204 USPQ at 150.
In short, there is no genuine issue of material of fact
and opposer is entitled to summary judgment as a matter of

to applicant at the time of the First Opposition, and were
compulsory therein. See, TBMP § 313.04 (2d ed. rev. 2004);
Nasolok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d
1369, 1375-76 (Fed. Cir. 2008); Vitaline Corp. v. General Mills
Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).

Opposition No. 91184229
11
law on its claim that res judicata applies herein.
Accordingly, opposer’s motion for summary judgment is hereby
GRANTED.
Conclusion
Because res judicata applies herein, the default
judgment in the First Opposition establishes opposer’s
standing and its claims of priority and likelihood of
confusion in this opposition. Accordingly, this Second
Opposition is sustained, and applicant’s motions for leave
to amend and to extend the discovery period are moot.
News from the TTAB
The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
***