Be Sport, Inc.v.Al-Jazeera Satellite Channel

Trademark Trial and Appeal Board

Aug 12, 2015

No. 91213743 (T.T.A.B. Aug. 12, 2015)

Baxley Mailed: August 12, 2015

Opposition No. 91213743
Be Sport, Inc.
v.
Al-Jazeera Satellite Channel

Before Kuhlke, Kuczma and Adlin,
Administrative Trademark Judges.

By the Board:

This decision concerns claim preclusion. The key issue the Board must
decide in the circumstances presented here is whether the current opposition
is based on the same cause of action as the prior one between the parties.
Because the mark targeted by the current opposition does not create the
same commercial impression as the mark targeted by the prior opposition, we
hold that the two causes of action are different, and therefore deny
Applicant’s motion to amend its complaint to add claim preclusion as a
defense.
Al-Jazeera Satellite Channel (“Applicant”) has applied to register the
mark BEIN SPORT in standard character form for goods in International
Classes 9 and 16 and services in International Classes 35, 38, and 41.1 Be

1 Application Serial No. 85639289, filed May 31, 2012, under Trademark Act Section
44(e), 15 U.S.C. § 1126(e), based on Qatar Registration Nos. 72858, 72859, 72860,
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
This Decision is a Precedent
of the Trademark Trial and
Appeal Board.
Opposition No. 91213743

2
Sport, Inc. (“Opposer”) opposes registration of Applicant’s mark on the
ground of likelihood of confusion with its previously applied-for mark BE
SPORT in standard characters for goods in International Class 25 and
services in International Classes 35, 41, 42, and 45,2 under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d).3 Applicant answered, denying the salient
allegations. This case now comes up for consideration of Applicant’s motion
for leave to amend its answer to assert the affirmative defense of claim
preclusion based on a prior opposition proceeding, and its motion for
summary judgment on that proposed affirmative defense. The motions have
been fully briefed.
Background
The Prior Case
The parties previously were involved in Opposition No. 91212091 (the
“Prior Opposition”).4 Opposer asserted its same applied-for mark (BE
SPORT), against registration of Applicant’s other mark, BEIN in standard

72861, and 72862, all of which were issued on October 8, 2012, with a claim of
priority under Trademark Act Section 44(d), 15 U.S.C. § 1126(d), based on Qatar
application Serial Nos. 72858, 72859, 72860, 72861, and 72862, filed February 7,
2012. The application includes a disclaimer of SPORT.

2 Application Serial No. 85413573, filed September 1, 2011, based on an assertion of
a bona fide intent to use the mark in commerce under Trademark Act Section 1(b),
15 U.S.C. § 1051(b). The application includes a disclaimer of SPORT.

3 The notice of opposition in the above-captioned proceeding was filed on November
27, 2013.

4 The notice of opposition in the Prior Opposition was filed on August 19, 2013.

Opposition No. 91213743

3
characters,5 for the same goods as the involved BEIN SPORT application;
and the opposition was on the same ground, likelihood of confusion, as the
current case. Thus, the difference in the two cases is that the Applicant’s
mark in the Prior Opposition did not include the word “SPORT.”6
The Prior Opposition ended on September 2, 2014, when the Board
granted Applicant’s motion to dismiss the Prior Opposition with prejudice for
failure to prosecute under Trademark Rule 2.132(a), stating: “Judgment is
entered against opposer and in favor of applicant and the opposition is
DISMISSED with prejudice.” (6 TTABVUE) (emphasis in original).

5 Application Serial No. 85639445, filed May 31, 2012, under Trademark Act Section
44(e), 15 U.S.C. § 1126(e), with a claim of priority under Trademark Act Section
44(d), 15 U.S.C. § 1126(d), based on Qatar application Serial Nos. 72863, 72864,
72865, 72866, and 72867.

6 The current opposition and the Prior Opposition were co-pending for several
months before the prior opposition was decided. In the respective Board notices
instituting the prior and the present proceeding, the Board stated:

If the parties to this proceeding are (or during the pendency of this
proceeding become) parties in another Board proceeding or a civil
action involving related marks or other issues of law or fact which
overlap with this case, they shall notify the Board immediately, so
that the Board can consider whether consolidation or suspension of
proceedings is appropriate.

Institution notices at 4. Notwithstanding this instruction, neither party notified the
Board following the commencement of the present proceeding. Inasmuch as the
proceedings involve common issues of law and/or fact, they were ripe for
consolidation at least as early as December 24, 2013, when Applicant filed its
answer in the present proceeding. See Fed. R. Civ. P. 42(a); Regatta Sport Ltd. v.
Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991); Estate of Biro v. Bic Corp., 18
USPQ2d 1382 (TTAB 1991); TBMP § 511 (2015). Had they been consolidated and
tried, then each case would have been decided on its own merits.
Opposition No. 91213743

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The Current Opposition
Less than a month after the dismissal with prejudice of the Prior
Opposition, Applicant, on October 1, 2014, filed a motion for summary
judgment in this case under the doctrine of res judicata based on the Board’s
dismissal of the Prior Opposition. However, because Applicant had not yet
actually pleaded such an affirmative defense, the Board, in an October 3,
2014 order, declined to consider the summary judgment motion.
On the same day, Applicant filed a motion for leave to file an amended
answer to assert an affirmative defense of res judicata based on the dismissal
of the Prior Opposition; and refiled its motion for summary judgment on that
proposed defense.
Discussion
Under Fed. R. Civ. P. 15(a), Applicant may amend its answer only with
Opposer’s written consent or leave of the Board; and leave must be freely
given when justice so requires. See Fed. R. Civ. P. 15(a); TBMP § 507.02
(2015). The Board liberally grants leave to amend pleadings at any stage of a
proceeding, but will deny addition of a claim or defense that is legally “futile.”
See generally Foman v. Davis, 371 U.S. 178, 183 (1962) (“futility of
amendment” is a reason to deny a Rule 15(a) motion); see also, American
Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1297, 1300
(TTAB 2010) (leave to amend answer denied where proposed additional
defense was futile); and Leatherwood Scopes Int’l Inc. v. Leatherwood, 63
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USPQ2d 1699, 1702 (TTAB 2002) (denying leave to amend where proposed
amendment would be futile). Because both the motion for leave to amend and
the motion for summary judgment focus on the same issue (the proposed res
judicata defense), we turn first to consider the subject of res judicata.
The term res judicata encompasses the two preclusion doctrines now less
confusingly and more commonly referred to as “claim preclusion” and “issue
preclusion” (the latter is also known as collateral estoppel). See, e.g., Taylor v.
Sturgell, 553 U.S. 880, 892 & n.5 (2008); Faust v. U.S., 101 F.3d 675, 677
(Fed. Cir. 1997). Although Applicant refers to “the doctrine of res judicata”
throughout its motion, it is clear that Applicant’s motion is based on the
defense of claim preclusion.7
Under the doctrine of 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.” Parklane Hosiery Co. v. Shore, 439 U.S. 322,
326 n.5 (1979); accord Levi Strauss & Co. v. Abercrombie & Fitch Trading
Co., 719 F.3d 1367, 107 USPQ2d 1167, 1171 (Fed. Cir. 2013). Accordingly, a
second suit will be barred by claim preclusion if: (1) there is identity of
parties (or their privies); (2) there has been an earlier final judgment on the
merits of a claim; and (3) the second claim is based on the same set of
transactional facts as the first. See Parklane, 439 U.S. at 326 n.5; Empresa

7 In any event, because the Prior Opposition was dismissed under Trademark Rule
2.132(a) and thus was not actually litigated, the doctrine of issue preclusion is
inapplicable here. See, e.g., Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d
1566, 1569, 221 USPQ 394, 397 (Fed. Cir. 1983).
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Cubana Del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1065-66 (Fed. Cir. 2014).
The first two elements are not in dispute. The parties in this case are
identical to those in the Prior Opposition. In addition, the dismissal of the
Prior Opposition with prejudice was a final judgment on the merits for
purposes of claim preclusion. See International Nutrition Co. v. Horphag
Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000)
(default judgments can give rise to res judicata). Cf. Pactiv Corp. v. Dow
Chemical Co., 449 F.3d 1227, 78 USPQ2d 1939, 1941 (Fed. Cir. 2006) (“A
dismissal with prejudice is a judgment on the merits for purposes of claim
preclusion.”). See also Orouba Agrifoods Processing Co. v. United Food
Import, 97 USPQ2d 1310 (TTAB 2010) (Board entered summary judgment
denying petition to cancel based on petitioner’s failure to prosecute earlier
opposition to application that resulted in registration, or respond to Board
order to show cause under Rule 2.128(a)(3), resulting in dismissal of the
opposition with prejudice).
Applicant’s motion for judgment on the defense it seeks to add turns on
the third element: whether Opposer’s Section 2(d) claim is based on the same
set of transactional facts as the Prior Opposition. To determine whether
separate opposition proceedings against two applications involve claims with
the same set of transactional facts for preclusion purposes, we consider
[1] whether the mark involved in the first proceeding is the
same mark, in terms of commercial impression, as the mark
Opposition No. 91213743

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involved in the second proceeding, and [2] whether the evidence
of likelihood of confusion between the opposer’s mark and the
applicant’s first mark would be identical to the evidence of
likelihood of confusion between the opposer’s mark and the
applicant’s second mark.

Institut Nat’l Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d
1875, 1894-5 (TTAB 1998) (brackets added) (“[T]he proper test for
determining whether two marks have the same commercial impression, for
purposes of the claim preclusion doctrine, is the test used in tacking
situations, i.e., whether the marks are legal equivalents.”).8 Also, compare
Polaroid Corp. v. C & E Vision Services Inc., 52 USPQ2d 1954 (TTAB 1999),
with Miller Brewing Co. v. Coy Int’l Corp., 230 USPQ 675 (TTAB 1986). In
Polaroid, the Board refused to apply claim preclusion in an opposition based
on the applicant’s unsuccessful appeal from an examining attorney’s refusal
of registration because of a mark previously registered by the opposer. Id. at
1956. In addition, the Board found that stylization, design elements, and
additional terms in applicant’s later applied-for marks “result in commercial
impressions for such marks which are different from” that of applicant’s prior
mark. Id. at 1957. In contrast, in Miller Brewing, the Board applied claim
preclusion because “the two marks create substantially the same commercial
impression and the minor alterations do not rise to the level of a new mark,”
applicant admitted the second design evolved out of the original design, and

8 The Supreme Court, in a tacking case, recently noted that the term “‘legal
equivalents’ . . . refers to two marks that create the same, continuing commercial
impression so that consumers consider both as the same mark.” Hana Financial,
Inc. v. Hana Bank, 135 S. Ct. 907, 910, 113 USPQ2d 1365, 1367 (2015) (internal
quotation marks and citations omitted).
Opposition No. 91213743

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the Board agreed with opposer that “the evidence relating to the issue of
likelihood of confusion with respect to the first design would be identical with
respect to the second design.” Miller Brewing, 230 USPQ at 678.
In a more recent Board case involving consideration of an argument by
the applicant that claim preclusion barred an opposition, the Board
disagreed, stating that “the marks at issue in [the earlier] proceedings were
different than the mark at issue here” and concluding that “[b]ecause they
involved a materially different mark, the prior adjudications cannot bar
opposer’s claim in this opposition.” See Bausch & Lomb Inc. v. Karl Storz
GmbH & Co., 87 USPQ2d 1526, 1531 (TTAB 2008), appeal dismissed due to
settlement, 345 F. App’x 579 (Fed. Cir. 2009). We do not, however, view this
decision as altering the basic test, as stated above, for analyzing the
applicability of claim preclusion, for although the formulations in Institut and
Bausch & Lomb use different words, they recite the same standard: where
there are material differences, the commercial impression is not the same;
the commercial impression is the same, however, where the differences are
immaterial.
“Precedent cautions that [claim preclusion] is not readily extended to
claims that were not before the court, and precedent weighs heavily against
denying litigants a day in court unless there is a clear and persuasive basis
for that denial.” Kearns v. Gen. Motors Corp., 94 F.3d 1553, 39 USPQ2d 1949,
1952 (Fed. Cir. 1996). “The public policy underlying the principles of
Opposition No. 91213743

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preclusion, whereby potentially meritorious claims may be barred from
judicial scrutiny, has led courts to hold that the circumstances for preclusion
‘must be certain to every intent.’” Mayer/Berkshire Corp. v. Berkshire
Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005)
(quoting Russell v. Place, 94 U.S. 606, 610 (1878)).
Here, BEIN, the mark in the Prior Opposition, creates a different
commercial impression than does BEIN SPORT, the mark involved in this
proceeding. While SPORT may be descriptive and both parties disclaimed
SPORT in the involved and pleaded applications, “a disclaimer with the
Patent and Trademark Office does not remove the disclaimed matter from
the purview of determination of likelihood of confusion.” In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993).
Moreover, the evidence with respect to likelihood of confusion would not
necessarily be the same in this case as it would have been in the Prior
Opposition, because BEIN alone is a different mark than BEIN SPORT, and
each case would require assessment of likelihood of confusion based on the
involved marks in their entireties. See Institut Nat’l Des Appellations
d’Origine, 47 USPQ2d at 1894-95 (motion for leave to amend answer to add
defense of claim preclusion denied where the mark in the earlier proceeding
was MIST AND COGNAC and the mark in the second proceeding was
CANADIAN MIST AND COGNAC). The BEIN and BE SPORT marks at
issue in the Prior Opposition share only the letters BE, whereas Applicant’s
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BEIN SPORT mark encompasses Opposer’s entire pleaded BE SPORT mark
and adds the letters IN to the first word thereof and the only distinguishing
aspect is the addition of the letters IN to the first word in Applicant’s mark.
Moreover, the more similar the marks at issue, the less similar the goods or
services need to be to support a finding of likelihood of confusion. In re Shell
Oil Co., 26 USPQ2d at 1689; General Mills, Inc. v. Fage Dairy Processing
Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011), judgment set aside on
other grounds, General Mills, Inc. v. Fage Luxembourg S.A.R.L., 110 USPQ2d
1679 (TTAB 2014) (nonprecedential). Accordingly, the evidence and analysis
used in determining whether there is a likelihood of confusion between BEIN
SPORT and BE SPORT may very well be different from that which would
have been used in deciding the Prior Opposition.
The circumstances in this case are significantly different from those in
Miller Brewing, supra, upon which Applicant relies. In Miller Brewing, an
applicant, during an opposition against its application to register the mark
COY INTERNATIONAL PRIVATE RESERVE BEER and design in the
following form (with INTERNATIONAL and PRIVATE RESERVE BEER
disclaimed),
,
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filed a second application to register the mark COY INTERNATIONAL
PRIVATE RESERVE BEER CASK NO. 32 and design in the following form
(with INTERNATIONAL, PRIVATE RESERVE BEER, and CASK NO. 32
disclaimed):
.

Less than two months after filing the second application, the applicant filed
an abandonment of the first application, which resulted in entry of judgment
against the applicant under Trademark Rule 2.135. After the entry of
judgment, the opposer filed an opposition against the application for the
second mark. In the second opposition, the Board found that claim preclusion
was applicable, stating that
[t]he new design adds the terminology ‘CASK NO. 32’ (which
has been disclaimed apart from the mark as a whole) and
includes additional sheaves of grain outside the oval design. In
our view, the two marks create substantially the same
commercial impression and the minor alterations do not rise to
the level of a new mark sufficient, under the circumstances, to
allow applicant to seek registration herein.

Id. at 678. Notwithstanding that the second application was filed prior to the
entry of judgment in the first opposition, the Board went on to state that it
“does not wish to encourage losing parties to insignificantly modify their
Opposition No. 91213743

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marks after an adverse ruling and thereby avoid the res judicata effect of the
prior adjudication.” Id.
That consideration is not present here, however, because both opposition
proceedings were pending when the Prior Opposition was dismissed. Further,
the difference in overall commercial impression between the mark involved in
the current (second) proceeding and the mark involved in the Prior
Opposition is substantially greater than was the difference in overall
commercial impression between the marks in the first and second
proceedings addressed in Miller Brewing.9
We accordingly find that Applicant’s proposed additional defense of res
judicata (i.e., claim preclusion) is futile. Therefore, Applicant’s motion for
leave to amend its answer is denied, and Applicant’s original answer remains
the operative responsive pleading herein. As a result, Applicant’s
concurrently filed motion for summary judgment on its unpleaded res
judicata defense is denied as moot. See Institut Nat’l Des Appellations

9 This case is essentially the “flip side” of Sharp Kabushiki Kaisha v. ThinkSharp
Inc., 448 F.3d 1368, 79 USPQ2d 1376 (Fed. Cir. 2006). In Sharp, our primary
reviewing court determined, after default judgment was entered in an opposition
proceeding against the applicant of the mark THINKSHARP and design in the
following form, , that claim preclusion did not apply in a later-decided
opposition against an application to register the word mark THINKSHARP alone,
which was pending when the first opposition was decided. The Court found that an
applicant need not litigate all of the oppositions to defend the right to litigate one, or
some, of them. Id. at 1380. See also Zachry Infrastructure LLC v. American
Infrastructure Inc., 101 USPQ2d 1249, 1255 (TTAB 2011). Although Opposer failed
to prosecute the Prior Opposition, the record does not indicate that Opposer
intended to abandon the above-captioned opposition. Opposer need not litigate all of
the oppositions to be able to oppose one, or some, of the related marks at issue.

Opposition No. 91213743

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d’Origine, 47 USPQ2d at 1896; TBMP §§ 314 and 528.07(a); October 3, 2014
order.
Proceedings herein are resumed. Remaining dates are reset as follows.
Plaintiff's 30-day Trial Period Ends 9/26/2015
Defendant's Pretrial Disclosures Due 10/11/2015
Defendant's 30-day Trial Period Ends 11/25/2015
Plaintiff's Rebuttal Disclosures Due 12/10/2015
Plaintiff's 15-day Rebuttal Period Ends 1/9/2016

In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within
thirty days after completion of the taking of testimony. Trademark Rule
2.125. Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b). An oral hearing will be set only upon request filed as provided by
Trademark Rule 2.129. If either of the parties or their attorneys should have
a change of address, the Board should be so informed promptly.