Virgin Enterprises Limitedv.Holt’s Company

Trademark Trial and Appeal Board

Feb 8, 2008

No. 91176609 (T.T.A.B. Feb. 8, 2008)

Goodman

Mailed: February 8, 2008

Opposition No. 91176609

Virgin Enterprises Limited

v.

Holt's Company

Before Quinn, Drost and Mermelstein, Administrative
Trademark Judges.

By the Board:

Applicant Holt’s Company has applied to register the
mark ASHTON VIRGIN SUN GROWN, in standard character form,
for “cigars” in International Class 34.1
Registration has been opposed by opposer Virgin
Enterprises Limited on the ground that applicant’s mark,
when used on the identified goods, so resembles opposer’s
previously used and registered VIRGIN marks as to be likely
to cause confusion, mistake or deception. Opposer has
pleaded ownership of thirty-eight VIRGIN and VIRGIN
formative marks for a wide range of goods and services in a
variety of classes. The pleaded registrations for the mark

1 Application Serial No. 78574896 filed July 25, 2005, based on
use in commerce and claiming a date of first use in commerce of
July 12, 1999; 2(f) in part claimed as to VIRGIN and SUN GROWN
disclaimed. Prior regs. 1376628, 1885186, and 2164001 claimed.
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. 91176609
2
VIRGIN include Registration. No. 31882822 for “alcoholic
beverages, namely, vodka and wine” in International Class
33, and Registration No. 26254553 for, among other things,
“providing an on-line shopping mall via a global computer
network” in International Class 35. The pleaded
registrations for the stylized mark:

include Registration. No. 27095784 for “water, namely,
mineral waters, aerated waters and flavored waters; non-
alcoholic beverages, namely, fruit flavored drinks” in
International Class 32, and for “spirits, namely vodka” in
International Class 33; and Registration No. 27981305 for,
among other things, “retail store services in the fields of
records, audio and video tapes, computers and electronic
apparatus and watches, books, luggage and leather goods,
clothing, games, video game cartridges, and cafes” in
International Class 42. As a second ground for opposition,
opposer has alleged dilution.

2 Issued December 19, 2006, claiming a date of first use in
commerce of January 4, 1995.
3 Issued September 24, 2002, claiming a date of first use in
commerce of December 1997.
4 Issued April 22, 2003, claiming a date of first use in commerce
of 1998 for water and nonalcoholic beverages and claiming a date
of first use in commerce of January 4, 1995 for vodka.
Opposition No. 91176609
3
In its answer, applicant denied the salient allegations
of the notice of opposition.
This case now comes up on opposer’s motion for summary
judgment, filed June 28, 2007. The motion is fully briefed.
As background, the parties were involved previously in
Opposition No. 91119511 involving applicant’s application to
register the mark:
(“Ashton Cabinet VSG Virgin Sun Grown and Design”) for
“cigars” in International Class 34.6 Opposer alleged
likelihood of confusion and dilution as the grounds for
opposition, and pleaded ownership of many of the same
registrations which it asserts in this proceeding.
Applicant failed to file an answer, and default judgment was
entered against applicant on October 14, 2003.

5 Issued December 23, 2003, claiming a date of first use in
commerce of 1992.
6 Application Serial No. 75779855, based on use in commerce and
claiming a date of first use in commerce of July 12, 1999; SUN
GROWN disclaimed.

Opposition No. 91176609
4
In its motion for summary judgment, opposer maintains
that due to the Board’s prior decision in Opposition No.
91119511, the mark involved in this proceeding, ASHTON
VIRGIN SUN GROWN, is barred from registration by res
judicata.
Opposer points out that the parties are identical and
that the current application claims the same rights as the
prior abandoned application (“identical marks, with
identical disclaimers, for identical goods, based on
identical claimed first use dates as were the subject of the
claims adjudicated adversely”). With regard to its argument
that ASHTON VIRGIN SUN GROWN “encompasses the identical
mark” that was the subject of Opposition No. 91119511,
opposer maintains that “[t]he block letter registration now
sought . . is simply a different characterization of a right
to registration allegedly arising from . . . alleged use of
the mark in stylized form since July 12, 1999.”
As evidence, opposer has submitted the declaration of
James W. Dabney, pages from the Official Gazette showing
publication of the mark ASHTON CABINET VSG VIRGIN SUN GROWN
and Design and the mark ASHTON VIRGIN SUN GROWN, a copy of
the notice of opposition in Opposition No. 91119511, a copy
of the Board’s order entering default judgment in Opposition
No. 91119511, and a copy of the specimen submitted for the
Opposition No. 91176609
5
involved application in this proceeding, Serial No.
78574896.
In opposing the motion, applicant argues that “there is
no indication that default judgment must give rise to res
judicata,” advising that in the prior 91119511 opposition
applicant was “out-resourced” and “reluctantly chose to
abandon its applications” as the parties were unable to
negotiate a coexistence agreement. Applicant also argues
that res judicata does not apply because “there exists
unique separate transactional or operative facts” with
respect to the current application and the application
involved in the prior Board proceeding. In particular,
applicant argues that its earlier application for the mark
ASHTON CABINET VSG VIRGIN SUN GROWN and Design contained a
unique design element and different wording from the current
application for the mark ASHTON VIRGIN SUN GROWN.
In reply, opposer argues that applicant cannot avoid
the “bar of res judicata on the ground that it chose not to
contest VEL’s oppositions” . . . and “allowed judgments to
be entered against it.” Opposer points out that applicant
“concedes the identity of the parties” and that by its
application for the word mark ASHTON VIRGIN SUN GROWN
applicant seeks a “broader registration of a block letter
word mark that would include and encompass the previously-
refused-word-and-design mark,” essentially “embedd[ing] the
Opposition No. 91176609
6
rejected claim in a block letter portrayal of a previously
rejected mark.”
In a motion for summary judgment, the moving party has
the burden of establishing the absence of any genuine issues
of material fact and that it is entitled to judgment as a
matter of law. See Fed. R. Civ. P. 56(c). A genuine issue
with respect to 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).

As the parties acknowledge, the form of res judicata at
issue here is claim preclusion, not issue preclusion, as no
issues were actually decided and litigated in the prior
Board proceeding. 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). “Default judgment
can operate as res judicata in appropriate circumstances.”
Sharp Kabushiki Kaisha v. ThinkSharp Inc., 448 F.3d 1368,
Inc., 79 USPQ2d 1376, 1378 (Fed. Cir. 2006) citing Morris v.
Jones, 329 U.S. 545, 550-51 (1947).
Opposition No. 91176609
7
With respect to the prior Board litigation, there is no
dispute as to the identity of the parties or whether there
was a final judgment on the merits of the prior claim.
Rather, the parties dispute whether the present claim, i.e.,
applicant’s entitlement to registration of the mark ASHTON
VIRGIN SUN GROWN, is based on the same set of transactional
facts as the claim in the prior opposition. The parties do
not dispute that the goods identified in the application
which was the subject of the prior opposition are the same
as the goods identified in the current application. Thus,
the issue for us to consider is whether the mark in this
proceeding has the same commercial impression as the mark
involved in the prior opposition. See Institut National Des
Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d
1875, 1894 (TTAB 1998)(“The Board, in applying the
Restatement's [Second of Judgments] analysis in determining
whether two opposition proceedings, against two
applications, involve the same “claim” for purposes of the
claim preclusion doctrine, has looked to whether the mark
involved in the first proceeding is the same mark, in terms
of commercial impression”).
Applying this analysis to the present case, we find
that the application that was the subject of the prior
opposition proceeding, ASHTON CABINET VSG VIRGIN SUN GROWN
and Design, is the same mark in terms of commercial
impression, as ASHTON VIRGIN SUN GROWN, the mark involved in
Opposition No. 91176609
8
this proceeding. Clearly, ASHTON VIRGIN SUN GROWN evolved
out of the word and design mark, and the deletion of the
design and the terms CABINET VSG are minor alterations which
do not rise to the level of a new mark, sufficient to allow
applicant to seek registration herein. See Miller Brewing
Co. v. Coy Int’l Corp., 230 USPQ 675 (TTAB 1986)(finding
claim 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. Lang, 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). 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).
Accordingly we find that the mark sought to be
registered herein and the mark that was the subject of the
prior opposition proceeding are the same, such that the two
proceedings involve the same claim for purposes of res
Opposition No. 91176609
9
judicata and therefore, the judgment in Opposition No.
91119511 operates as a bar to applicant's application for
the mark ASHTON VIRGIN SUN GROWN.
In view thereof, opposer’s motion for summary judgment
is granted.
Judgment is hereby entered against applicant, the
opposition is sustained, and registration to applicant is
refused.