Board of Directors of the American College of Veterinary Sports Medicine and Rehabilitationv.Sheila Lyons

Trademark Trial and Appeal Board

Mar 30, 2015

No. 91206077 (T.T.A.B. Mar. 30, 2015)

al Mailed: March 30, 2015

Opposition No. 91206077
Board of Directors of the American
College of Veterinary Sports Medicine
and Rehabilitation

v.
Sheila Lyons

Before Seeherman, Quinn, and Shaw,
Administrative Trademark Judges.

By the Board:

Shiela Lyons (“Applicant”) seeks to register the mark THE
AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND
REHABILITATION for “Educational services, namely, conducting classes,
seminars, clinical seminars, conferences, workshops and internships and
externships in the fields of veterinary sports medicine and veterinary
rehabilitation and distribution of training materials in connection therewith”
in International Class 41.1

1 Application Serial No. 85486990, filed December 5, 2011, based on Trademark Act
Section 1(a), claiming December 20, 1985 as the date of first use and June 18, 1996
as the date of first use in commerce.

[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
Opposition No. 91206077

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Board of Directors of the American College of Veterinary Sports
Medicine and Rehabilitation (“Opposer”) opposes registration of Applicant’s
mark on the ground of likelihood of confusion with its previously used
common law mark under Trademark Act Section 2(d), and on the ground of
mere descriptiveness under Trademark Act Section 2(e)(1).
This opposition was suspended on March 6, 2013 pending the final
outcome in the matter of Lyons v. Gillette, et al., Civil Action No. 11-CV-
12192-WGY (D. Mass.).
On November 4, 2014, Opposer filed a communication captioned
“Request for Judgment” with the Board wherein it indicated that the civil
proceeding has now been resolved; that on February 19, 2014, Judge Young of
the U.S. District Court of Massachusetts issued a final order from which
Applicant appealed and Opposer cross-appealed; that thereafter, on
September 5, 2014, the parties entered into a partial settlement agreement
under which they voluntarily dismissed their appeals; that the District
Court’s decision “should conclude this opposition”; that, according to Opposer,
the District Court “found that Applicant’s failure to prove acquired
distinctiveness was the dispositive issue for Applicant’s unsuccessful claims
of infringement and Opposer’s request that the Application be denied”
(emphasis in original); and that, according to Opposer, the Court held that
the Office “ought to rescind its approval” of the subject mark herein and
“reject” Applicant’s application. Opposer included a copy of the District
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Court’s final order with its papers. Opposer notes that the District Court
maintained that it had the authority to order that the subject application be
denied, and Opposer now requests that the Board sustain this opposition and
deny registration of Applicant’s mark.
In response to Opposer’s request, Applicant, on November 20, 2014,
filed three documents: (1) a Report of Status and Request to Resume
Proceedings; (2) its opposition to the Request for Judgment filed by Opposer;
and (3) a motion to dismiss the notice of opposition as untimely and for
Opposer’s failure to comply with the notice requirements of Trademark Rule
2.101(a). In these three filings Applicant essentially argues that under the
parties’ settlement agreement, a copy of which is included with Applicant’s
papers, the parties agreed that should either of the parties wish to resume
proceedings in the USPTO that party “will notify the USPTO Trademark
Trial and Appeal Board that the appeal before the First Circuit has been
dismissed and ask that proceedings be resumed…”; that the disposition of
this proceeding remains unresolved; that the opposition was filed late
without notice to Applicant in violation of TBMP Section 306.04 (2014) and
must be dismissed; and that the parties’ settlement preserves each party’s
legal rights and remedies with respect to registration on the Supplemental
and Principal Registers. Applicant further asserts that the agreement
delegates to the Board the final determination of the parties’ respective
rights in these matters. Applicant also states that there is additional
evidence of acquired distinctiveness which should be considered by the Board
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in determining Applicant’s right to registration of its mark on the Principal
Register. Applicant, therefore, requests that the Board “schedule further
proceedings.”
In reply to all three of Applicant’s filings, Opposer filed a single brief
wherein it argues that, inter alia, the settlement agreement between the
parties “does not cause this matter to survive”; that although Applicant
implies that the agreement somehow preserves this matter from the effect of
the District Court’s order, it does just the opposite; that the plain language of
the agreement recites that the parties “disagree” with respect to the effect of
that order only as to this proceeding; and that Applicant “dropped her appeal
of the District Court’s rulings knowing that she made no special reservation
of rights with respect to this proceeding.”
As a threshold matter, we note that both parties rely on documents,
including the civil action papers and the parties’ settlement agreement, in
support of their positions. In view thereof, we have treated Opposer’s request
for judgment as one for summary judgment. See Fed. R. Civ. P. 56; TMBP
Section 504.03 (2014). Insofar as our determination of the motion for
summary judgment is dependent solely on the District Court’s ruling and the
parties’ settlement agreement, no additional briefs or submissions are
necessary.
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The basis for Opposer’s motion for summary judgment is essentially
that the final order issued by the District Court bars registration of the
subject mark on the Principal Register.2
Summary judgment is only appropriate when there is no genuine
dispute as to any material fact and the moving party is entitled to judgment
as a matter of law. See Fed. R. Civ. P. 56(a). The Board may not resolve
issues of material fact; it may only ascertain whether a genuine dispute
regarding a material fact exists. See Lloyd’s Food Products, Inc. v. Eli’s, Inc.,
987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Old Tyme Foods, Inc.
v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1542. 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. Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir.
1992); Olde Tyme Foods, Inc., 22 USPQ2d at 1544.
We must first consider the question of whether Opposer has
demonstrated its standing to bring the opposition, since standing is a
threshold issue that must be proven by a plaintiff in every inter partes case.
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir.

2 Generally a party may not obtain summary judgment on an issue that has not
been pleaded. However, if the parties, in briefing a summary judgment motion, have
treated an unpleaded issue on its merits, and the nonmoving party has not objected
to the motion on the ground that it is based on an upleaded issue, the Board may
deem the pleadings to have been amended, by agreement of the parties, to allege the
matter. See TBMP Section 528.07(a).

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1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). The purpose of the standing requirement, which is
directed solely to the interest of the plaintiff, is to prevent litigation
when there is no real controversy between the parties. 213 USPQ at 213. In
the notice of opposition, Opposer alleges common law rights in the mark The
AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND
REHABILITATION as a specialty organization in the field of veterinary
medicine. The civil action, which involved a trademark infringement suit
brought by Applicant against Opposer, arose from the disputed ownership of
the above mark. The civil court’s findings concerning Applicant’s and
Opposer’s collaboration in 1999 to create a specialty organization bearing the
name of the mark in dispute is sufficient to establish Opposer’s standing
herein, and Applicant has not submitted any evidence that would raise a
genuine dispute.
Accordingly, we find that there is no genuine dispute that Opposer has
standing to bring this opposition.
We turn to consider the effect of the District Court’s decision. Our
determination is based on collateral estoppel.
The principle of collateral estoppel or issue preclusion may bar
relitigation of the same issue in a second action. See Mayer/Berkshire Corp.
v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1314 (Fed. Cir.
2005). Collateral estoppel normally will bar the relitigation of an issue of law
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or fact that was raised, litigated, and actually decided in a prior proceeding
between the parties, if the determination of that issue was essential to the
judgment, regardless of whether or not the two proceedings are based on the
same claim. NLRB v. United Technologies Corp., 706 F.2d 1254, 1260 (2d
Cir. 1983).
The application of issue preclusion requires: (1) identity of an issue in
the current and a prior proceeding; (2) actual litigation of that issue in the
prior proceeding; (3) necessity of a determination of the issue in entering
judgment in the prior proceeding; and (4) a full and fair opportunity existed,
for the party with the burden of proof on that issue in the second proceeding,
to have litigated the issue in the prior proceeding. See Mayer/Berkshire
Corp. v. Berkshire Fashions, Inc., 76 USPQ2d at 1313.
Upon careful consideration of the arguments and evidence presented
by the parties, we find that there is no dispute that the doctrine of collateral
estoppel applies.
We find that the first element is met to the extent that the issue of
whether Applicant’s mark has acquired distinctiveness is identical in both
Applicant’s infringement claim in the District Court and our determination
regarding her mark’s eligibility for registration on the Principal Register. In
this proceeding, Opposer seeks to prevent registration of Applicant’s mark on
the ground of mere descriptiveness. Applicant’s mark can only be registered
on the Principal Register if it has acquired distinctiveness (secondary
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meaning). Park N’ Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 193-94
(1985). In the District Court case the Court found (at p. 28) that Applicant’s
mark has not acquired secondary meaning.
We also find that the second element concerning actual litigation of
this issue in the District Court was clearly met as evidenced by the Court’s
decision after trial. Similarly, we find that there was the necessity of a
determination of the issue, as shown by the entry of judgment in the prior
proceeding. The Court observed at p. 51 of its decision that “both the success
of [Applicant’s] infringement claim and her eligibility for principal
registration turn on proof of acquired distinctiveness.” Additionally, we find
that a full and fair opportunity existed for Applicant to have litigated the
issue of acquired distinctiveness in the District Court proceeding.3 Hence,
there is no dispute that the elements of collateral estoppel have been met,
and that the doctrine of collateral estoppel acts as a bar to registration.4
We observe that the parties’ settlement agreement of September 2014
contains the following statement: “The parties disagree with respect to
whether [Judge Young’s] order is dispositive or preclusive with respect to
trademark application serial number 85486999.” Contrary to Applicant’s
arguments, we do not read such statement as somehow preserving this

3 Any additional evidence of secondary meaning Applicant has submitted does not
show a genuine dispute.
4 We note that Judge Lyons states, at p. 50 of the District Court’s order, that
“ordering the PTO to reject [Applicant’s] application to the principal register would
promote efficient resolution of this case.”

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matter from the effect of Judge Young’s order. Such agreement clearly
indicates that the parties agreed to file a joint motion to dismiss their
appeals, with each party to bear its own costs and attorneys’ fees. The
agreement further indicates that the parties agreed that the order of Judge
Young was not dispositive or preclusive with respect to U.S. Registration No.
3088963, currently the subject of a related cancellation proceeding involving
the parties herein.5 While the agreement memorializes the parties’
disagreement as to Judge Young’s decision regarding the subject mark
involved in this proceeding, in no way does it act to supersede the Court’s
order.
In view of the application of the doctrine of collateral estoppel, Opposer's
motion for summary judgment is granted.6 The opposition is sustained and
registration to Applicant is refused.
In further view thereof, Applicant’s motion to dismiss is moot.7

5 Cancellation No. 92053934.
6 In view thereof, we need not consider the claim of likelihood of confusion.
7 As a final matter, we point out that we do not agree with Applicant’s assertion that
the notice of opposition was filed late. The Board extended the time to oppose until
July 7, 2012. Because such date was a Saturday, Opposer’s notice of opposition, filed
on Monday, July 9, 2012, was timely. See TBMP Section 209.02(2014). In addition,
with regard to Applicant’s assertion that the notice of opposition was not properly
served, we note that the notice of opposition includes proof of service, which operates
as prima facie evidence of such service. See Trademark Rule 2.119.