Brenda D. Lewis and William L. Flowersv.Microsoft Corporation

Trademark Trial and Appeal Board

Mar 17, 2005

No. 92043487 (T.T.A.B. Mar. 17, 2005)

Taylor Mailed: March 17, 2005

Cancellation No. 92043487

Brenda D. Lewis and
William L. Flowers

v.

Microsoft Corporation

Before Bottorff, Rogers and Drost,
Administrative Trademark Judges.

By the Board:

This case now comes up for consideration of
respondent’s motion (filed August 16, 2004) to dismiss this
proceeding pursuant to Fed. R. Civ. P. 12(b)(6) on the
ground that the claims asserted in the petition for
cancellation are precluded under the doctrine of res
judicata. The motion is fully briefed. Additionally,
because the parties draw support for their respective
positions by referencing matters outside of the pleadings,
we have treated respondent’s motion to dismiss as one for
summary judgment under Fed. R. Civ. P. 56. See, for
example, FRCP 12(b); and Advanced Cardiovascular Systems
Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d
1038 (Fed. Cir. 1993).

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92043487
2
Background
By way of background, Microsoft Corporation owns
Registration No. 1872264 for the mark WINDOWS for “computer
programs and manuals sold as a unit; namely graphical
operating environment programs for microcomputers.”1 Brenda
D. Lewis and William L. Flowers seek to cancel the
registration on the grounds that they established prior
rights to the word “WindowPad,” and any derivative thereof,
in 1984, when they began publishing, advertising, selling
and distributing a “completed functional computer software
product to end-use consumers across state lines via
interstate commerce under the WindowPad mark; that
petitioners have common law trademark rights in the name of
WindowPad, and any derivative thereof under Section 2(d) of
the Lanham Act; that petitioners have not abandoned their
common-law trademark rights to WindowPad; that respondent
did not begin using the word WINDOWS for a completed
software product sold to end-use consumers across state
lines via interstate commerce until 1985, more than one year
after petitioners; that despite petitioners’ established
prior use of WindowPad, respondent filed an application for
registration of the mark WINDOWS, which matured into the

1 Registration No. 1872264 registered January 10, 1995,
Section 8 affidavit accepted and combined Section 8 and 9
affidavit filed, and reciting October 18, 1983 as the date of
first use and date of first use of the mark in commerce.

Cancellation No. 92043487
3
involved registration; that consequently, “at all relevant
times, Respondent has been a distributor of Petitioner’s
[sic] goods bearing a derivative of Petitioner’s WindowPad
mark”; that petitioners did not consent to respondent’s use
or registration of “a derivative of Petitioner’s [sic]
WindowPad mark”; that respondent did not own the WINDOWS
mark as respondent alleged in its application to the Patent
and Trademark Office for registration of the subsequently
registered involved mark; that respondent did not use the
WINDOWS mark on a completed, functional computer software
product sold to end-use consumers across state lines via
interstate commerce until 1985, yet respondent stated on its
application for the involved registration that its first use
of WINDOWS was October 18, 1983; and that therefore, when
respondent submitted its sworn statement of use2 to the
Office indicating that it first used its WINDOWS mark on a
completed, functional computer software product in
interstate commerce, the statement was knowingly false.
Petitioners further allege that respondent knowingly
and fraudulently alleged its ownership of the WINDOWS mark,
with intent to deceive the Office in order to obtain a
registration; and that respondent knowingly and fraudulently
“reaffirmed Respondent’s use in commerce of the WINDOWS mark

2 We presume that petitioners are referring to respondent’s
asserted first use in commerce date.

Cancellation No. 92043487
4
… in the Amendment to Allege Use3 filed on January 1, 2000
in connection with the application that matured into U.S.
Registration No. [1872264] with intent to deceive the Office
in order to obtain a registration for its involved mark.”
Petitioners also allege that “there was no bona fide
use of Respondent’s mark WINDOWS … in commerce prior to the
filing of the use-based application on August 20, 1990…”;
and that respondent did not have a bona fide intent to use
the mark in connection with the identified goods, namely
graphical operating environment programs for microcomputers
as of the filing date of its application that matured into
the involved registration.
Respondent, it its answer, has denied the salient
allegations of the petition for cancellation. Respondent
also has advanced several affirmative defenses, including a
claim that the facts, issues and claims asserted in
petitioners’ petition for cancellation have been adjudicated
by the Board in a previous proceeding and are barred by the
doctrine of res judicata.
Parties’ Arguments
Turning now to the merits of respondent’s motion for
summary judgment, respondent contends that the claims
asserted in the petition for cancellation are barred by res

3 The Board presumes that petitioners are referring to the
Section 8 affidavit filed by respondent on January 12, 2000.

Cancellation No. 92043487
5
judicata because they depend on factual allegations and
issues previously adjudicated in En Fleur Corporation v.
Microsoft Corporation, TTAB Cancellation No. 92026548, an
action brought by petitioners through their wholly-owned and
controlled corporation. More specifically, respondent
contends that in the prior action, the Board ruled against
petitioners on all of the issues they raise here, finding,
inter alia, that respondent Microsoft was the senior user,
that its WINDOWS mark had acquired strong secondary meaning,
and that Petitioners had abandoned their alleged WindowPad
mark (TTAB order July 24, 2002); that petitioners had a full
and fair opportunity to litigate these issues during the
five years that the prior action was before the Board; and
that respondent should not be asked again to defend against
Petitioners’ claims when the Board has already found them to
be without merit.4

4 The prior action was based on the issues of likelihood of
confusion and priority of use. In particular, En Fleur
Corporation asserted that it was the publisher and distributor of
an “integrated windowing and note processing utility software
program” sold under the common law trademark WindowPad.
Petitioner claimed prior use of the WindowPad trademark in
interstate commerce since 1984. As an additional ground for
cancellation, petitioner alleged, as amended, that respondent’s
WINDOWS trademark was descriptive of the goods specified in the
registration and had not acquired distinctiveness.

In that action, the Board made the following findings of
fact and rulings of law:

(1) that respondent’s WINDOWS mark was not descriptive and
had acquired distinctiveness (noting that inasmuch as the
parties had argued the issue of descriptiveness rather
Cancellation No. 92043487
6
Last, respondent argues that allowing petitioners to
proceed in this case would unduly prejudice respondent. For
these reasons, respondent maintains that petitioners’
“renewed” petition for cancellation of Registration No.
1872264 should be dismissed with prejudice.
As evidentiary support for its motion, respondent has
submitted the declaration of William Ferron, Jr., counsel
for respondent, attesting to the facts surrounding the prior
proceeding and introducing: a copy of the petition to
cancel filed in Cancellation No. 92026548 (“the prior
action”); a copy of the answer filed in the prior action; a
copy of the Board’s April 25, 2000 decision on a motion for
summary judgment filed in the prior action; a copy of the
Board’s April 3, 2001 decision on a motion to dismiss under
Trademark Rule 2.132(a) filed in the prior action; excerpts
from the deposition of William Flowers wherein Mr. Flowers
attested that petitioners herein are the sole share holders
of En Fleur Corporation, the prior petitioner; a copy of the
Board’s July 24, 2002 final decision issued in the prior

than genericness, the Board would treat the issue as so
pleaded);
(2) that petitioner’s WindowPad mark is descriptive and did
not acquire distinctiveness; and
(3) that with no sales since 1987, at the latest, petitioner
had abandoned any rights they had in the WindowPad mark.

The Board further noted that petitioner En Fleur could not claim
any rights in a mark abandoned more than a decade ago, making it
unnecessary for the Board to consider whether there was a
likelihood of confusion between the parties’ respective marks.

Cancellation No. 92043487
7
action; a copy of En Fleur’s motion to amend the caption of
its appeal of the Board decision to the Court of Appeals for
the Federal Circuit5; a copy of the Federal Circuit’s order
denying the motion to amend because Mr. Flowers was not a
party to the Board case; a copy of the order dismissing the
appeal to the Federal Circuit; and excerpts of the briefs
filed by the parties in the prior proceeding.
In response to the motion for summary judgment,
petitioners contend that, “although arising out of the same
facts,” the former proceeding before the Board involved
different issues than the one presented in the present
proceeding. Petitioners also contend that the sole issue in
this cancellation proceeding is fraud.
Specifically, petitioners argue that respondent
defrauded the USPTO by stating that it first used “Windows
1.0” in commerce as defined by 15 U.S.C. § 1127 and sold the
software products with the name WINDOWS in interstate
commerce to end-use consumers in 1983; that respondent now
admits to the fact that Windows 1.0 did not enter mainstream
commerce for sale to end-use consumers until 1985; that
respondent, or its attorney, is guilty of fraud upon the
Office because it knew or should have known that the

5 Although captioned as a motion to amend the caption of the
appeal, William L. Flowers sought to be substituted for En Fleur
Corporation as appellant, so that he could proceed pro se.
Cancellation No. 92043487
8
statement of Use in Commerce6 date was 1985 not 1983 as
indicated in its application; and that respondent committed
fraud by knowingly and willfully making this statement; and
that accordingly, the registration should be cancelled.
Petitioners also have claimed ownership of a copyright
for the software product WindowPad and have advanced
arguments that the Board applied “an improper judicial
standard of abandonment” in its previous decision and that
its copyrighted work cannot be abandoned without an express
intent or overt act by petitioners to abandon. It appears
that petitioners are under the mistaken belief that rights
accrued under copyright protection and trademark rights in
the term WindowPad are the same. Any copyright protection
petitioners may have in the “WindowPad” product is
irrelevant to petitioners’ claims of trademark rights in
that term. Accordingly, the Board has given no
consideration to petitioners’ claim of ownership of a
copyright for WindowPad or to petitioners’ arguments
regarding the abandonment of a copyright. Notably,
petitioners’ trademark rights to the WindowPad mark were
adjudicated by the Board in Cancellation No. 92026548.
In that regard, petitioners appear to misapprehend the
decisions that were issued in Cancellation No. 92026548.

6 We again presume that petitioners are referring to
respondent’s asserted first use in commerce date.

Cancellation No. 92043487
9
For example, petitioners contend that their WindowPad mark
is a valid trademark based upon the Board’s decision of
April 25, 2000 on Microsoft’s motion for summary judgment.
By that decision, the Board merely found that genuine issues
of material fact concerning En Fleur’s abandonment of the
WindowPad mark remained for trial. In the final decision,
issued July 24, 2002, the Board found that petitioner En
Fleur did not rebut respondent’s prima facie showing that
petitioner had abandoned the WindowPad mark through non-use.
The Board further concluded that “[b]ecause petitioner
cannot claim rights in a mark it abandoned more than a
decade ago, we do not even get to the question of whether
the marks, as applied to the goods of the parties, so
resemble each other that confusion is likely.”7

7 While indicating that the present petition is based solely
on fraud, petitioners invite the Board to review the issue of
likelihood of confusion and/or “reverse confusion” and to
“correct the prior error” on the issue of abandonment.
Petitioners are advised that if they desired Board review of the
decisions issued in connection with Cancellation No. 92026548,
they could have filed requests for reconsideration. Inasmuch as
the time for filing requests for reconsideration of the decisions
issued in Cancellation No. 92026548 is long past, those decisions
are final and are not subject to review.
Petitioners further appear to be under the mistaken belief
that the United States Court of Appeals for the Federal Circuit
would presently consider a renewed motion for reinstatement of En
Fleur’s appeal from the Board’s decision in Cancellation No.
92026548. Although the Court, in a July 31, 2003 order,
indicated that it would “consider a renewed motion for
reinstatement only if it is submitted by counsel admitted to the
bar of this court who concurrently enters an appearance on behalf
of En Fleur,” the time to submit a renewed motion has long
passed. (See Exhibit J to Respondent’s construed motion for
summary judgment).
Cancellation No. 92043487
10
Petitioners have supported their opposition brief with
the declaration of William Flowers attesting to the
ownership of En Fleur Corporation by petitioners and that
the fraud and “reverse confusion” claims were not issues
“litigated on the merits” in the prior proceeding.
Petitioners have also submitted a copy of the final
decision, issued July 24, 2002, in the prior proceeding; a
copy of the answer filed in the prior proceeding; a copy of
the Board’s April 25, 2000 decision on a motion for summary
judgment filed in the prior proceeding; a copy of a cease
and desist letter dated September 2, 1992 from petitioner,
Brenda Lewis, to respondent; and a copy of a second cease
and desist letter dated March 6, 1995 from petitioner,
Brenda Lewis, to respondent.8
In reply, respondent contends that petitioners have
admitted all the factual elements necessary for res
judicata; that petitioners’ request that the Board “correct
its error” in the prior action further confirms their
attempt to relitigate the same issues; and that petitioners
cannot avoid res judicata by restyling their prior claims as
a “new” fraud claim because the Board already found

8 Petitioners have also submitted “CORRECTED PAGES OF PREVIOUSLY
SUBMITTED PLEADINGS.” A review of the paper reveals that it is a
proposed amendment to the petition for cancellation. The filing
should have been accompanied by a motion to amend inasmuch as
there has been an answer filed in this case. Accordingly, it has
not been considered in this decision.
Cancellation No. 92043487
11
respondent’s statements regarding its first use date of
WINDOWS not fraudulent.
Respondent further argues that even if the Board were
to find that the date of first use asserted in the
underlying application inaccurate, the remedy would be to
correct the registration, not cancel the registration.
Respondent explains that a later first-use date would not
change the outcome here where the Board conclusively held
petitioner’s alleged WindowPad mark was merely descriptive
and was abandoned by petitioners in 1987 at the latest.
Petitioners’ descriptive and abandoned mark, respondent
argues, cannot be the basis of a cancellation action.
Respondent also argues that even if the fraud claim
were new, it would still be barred by claim preclusion
because the claim could have been raised in the previous
case, as evidenced by petitioner En Fleur “squarely raising
it in its appeal brief.”
Respondent submitted a second declaration of its
attorney, William Ferron introducing: a copy of En Fleur’s
December 9, 2002 Appellant Brief to the Federal Circuit,
appealing prior Cancellation No. 92026548; a copy of
petitioner En Fleur’s October 26, 2001 trial brief in the
prior proceeding; a copy of the Federal Circuit docket for
petitioner’s appeal of the prior proceeding from the on-line
PACER database; a copy of the Federal Circuit’s June 12,
Cancellation No. 92043487
12
2003 order dismissing petitioner’s appeal; and a copy of the
Federal Circuit’s July 31, 2003 order denying petitioner’s
motion for reconsideration.
Discussion
In order to determine if the decision in Cancellation
No. 92026548 has preclusive effect on this case, we must
discuss the doctrine of claim preclusion (res judicata).
Claim preclusion occurs: “[w]hen a valid and final judgment
rendered in an action extinguishes the plaintiff’s claim
pursuant to the rules of merger or bar … the claim
extinguished includes all rights of the plaintiff to
remedies against the defendant with respect to all or any
part of the transaction, or series of connected
transactions, out of which the action arose.” Vitaline
Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172,
1173 (Fed. Cir. 1989), citing to Restatement (Second) of
Judgments §24(1) at 196. Under claim preclusion a plaintiff
is barred from a “subsequent assertion of the same
transactional facts in the form of a different cause of
action or theory of relief.” See, Vitaline Corp. v. General
Mills Inc., 13 USPQ2d at 1174 (citations omitted).
Therefore, a subsequent action will be barred by claim
preclusion if the following factors are present: (1) there
is identity of parties or their privies; (2) the second
claim is based on the same set of transactional facts as the
Cancellation No. 92043487
13
first; and (3) there has been a final judgment on the
merits. Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360,
55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
As regards factor one, the identity of parties or their
privies, “[p]rivity has been characterized as a relationship
where ‘there was a substantial identity of parties’.”
Symbol Technologies Inc. v. Metrologic Instruments Inc. 21
USPQ2d 1481, 1488 (D.N.J. 1991) quoting Chicago, Rock Island
& Pac. Ry. v. Schendel, 270 U.S. 611, 621 (1926). Although
petitioners technically were not parties to the prior
litigation, the basis for applying preclusion against them
rests on their actual participation in the prior litigation.
Section 39 of the Restatement (Second) of Judgments (1982)
states the applicable black-letter law:
A person who is not a party to an action
but who controls or substantially
participates in the control of the
presentation on behalf of a party is
bound by the determination of issues
decided as though he were a party.

See also 18 Wright & Miller, Federal Practice and Procedure
§ 4451 (updated by pocket part 2004).
Herein, petitioners admit that they are the sole
shareholders of En Fleur Corporation, the prior petitioner.
Additionally, the record of the prior action reveals that
William Flowers, chief executive officer of En Fleur,
controlled the prior litigation between the closely held
corporation, En Fleur and Microsoft. As such, petitioners
Cancellation No. 92043487
14
are bound by the dismissal of the first petition. See e.g.,
Kreager v. General Electric Co., 497 F.2d 468, 472 (2d Cir.
1974)(The president and sole shareholder of a corporation
was bound by the corporation’s defeat in an action that he
effectively controlled); and Spickler v. Flynn, 494 A.2d
1369, 1373 (Me. 1985)(The controlling shareholder of a close
corporation was bound by the judgment against the
corporation in litigation that the shareholder had
controlled on behalf of the corporation). In fact,
petitioners admit not only that the transactional facts in
each case are the same, but also acknowledge that the
parties are legally the same when they argue “[t]he present
Cancellation Proceeding No. 92043487, although arising out
of the same facts and same parties, is not based upon any
issue in the prior proceeding. The issue in this
Cancellation is Fraud….” (Petitioners’ brief in opposition
to summary judgment at page 5)(emphasis in the original).
Turning to factor two, the requirement that the
subsequent claim be based on the same transactional facts as
the first, there can be do doubt that the transactional
facts which are the basis of petitioners’ “new” claim of
fraud in this proceeding are the same facts that formed the
basis of the claims of priority of use and likelihood of
confusion in the prior proceeding. Inasmuch as the new
fraud claim arises out of the same transactional facts as
Cancellation No. 92043487
15
the prior priority of use and likelihood of confusion
claims, the fraud claim could have, and should have, been
brought in the prior proceeding.
With regard to factor three, the requirement that there
must have been a final decision on the merits, by its
decision in Cancellation No. 92026548, the Board rendered
final judgment against petitioner En Fleur and dismissed the
case with prejudice finding that petitioner had abandoned
the WindowPad mark.
As noted above, under claim preclusion a plaintiff is
barred from a subsequent assertion of the same facts in the
form of a different cause of action. Id. Thus, inasmuch as
petitioners’ “new” fraud claim for cancellation arises out
of the same facts as the priority of use and likelihood of
confusion claims asserted in the prior cancellation
proceeding, the fraud claim is barred by res judicata.9
Moreover, even if petitioners’ fraud claim, i.e.,
their claim that respondent committed fraud on the Office by
reciting an incorrect first use date, was not barred by res
judicata, it is not a valid claim for cancellation. This is

9 Apart from the issue of claim preclusion, we note that each
party to an action before the Board must establish its own
standing. See e.g., Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (CAFC 1987). In
that regard, petitioners have asserted that they have standing in
this case based on their ownership of the WindowPad mark. There
is a question, however, of whether petitioners are estopped from
asserting such ownership inasmuch as the prior petitioner, En
Cancellation No. 92043487
16
so because “[f]raud in procuring a trademark registration or
renewal occurs when an applicant knowingly makes false,
material representations of fact in connection with his
application.” Torres v. Cantine Torresella S.r.l., 808 F.2d
46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986)(citations omitted).
Thus, according to Torres, to constitute fraud on the Patent
and Trademark Office, the statement must be (1) false, (2) a
material representation, and (3) made knowingly. Herein
while petitioners allege that respondent’s asserted first
use date is incorrect, petitioners do not dispute that
respondent made use of its mark prior to the filing date of
the underlying application.10 An erroneous date of first

Fleur Corporation, based its standing in the prior action on its
ownership of the WindowPad mark.

10 Although petitioners pleaded that:

22. Upon information and belief, there was no
bona fide use of Respondent’s mark Windows,
which is a derivative of Petitioner’s
WindowPad mark, in commerce prior to the
filing of the use-based application on
August 20, 1990 for its fraudulently
obtained registration; and
23. Upon information and belief, Respondent did
not have a bona fide intent to use the mark
in connection with the identified goods,
namely graphical operating environment
programs for microcomputers as of the filing
date, August 20, 1990,

petitioners concede in their response to the motion for
summary judgment that “[R]espondent’s Windows software
version 1.0 did not make its debut until November 1985
with the name Windows affixed upon it. Hence the
correct First Use In Commerce date for the Windows mark
is 1985.” Indeed, petitioners now seek to “correct”
paragraphs 22 and 23 of the petition for cancellation
to allege:
Cancellation No. 92043487
17
use could not result in the allowance of a registration
which would otherwise not be allowed, as long as there was
technical trademark use prior to the filing date of the
application. Thus, the date of first use asserted by
respondent in its application, even if false, is not a
material representation and cannot be said to constitute
fraud on the Patent and Trademark Office. See e.g. Georgia-
Southern Oil, Inc. v. Harvey Richardson, 16 USPQ2d 1723
(TTAB 1990)(Erroneous date of first use could not possibly
result in allowance of registration that otherwise would not
be allowed, as long as technical trademark use occurred
prior to filing of application, and thus date of first use
alleged in application cannot, even if false, constitute
fraud on Patent and Trademark Office.); Colt Industries
Operating Corp. v. Olivetti Controllo Numerico S.p.A., 221
USPQ 73, 76 (TTAB 1983); and Autac Incorporated v. Walco
Systems, Inc. 195 USPQ 11 (TTAB 1977).

22. Upon information and belief, there was no
bona fide use of Respondent’s mark Windows,
which is a derivative of Petitioner’s
WindowPad mark, in commerce between 1983
through October 1985 prior to the filing of
the use-based application on August 20,
1990 for its fraudulently obtained
registration.
23. Upon information and belief, Respondent did
not have a bona fide intent to use the mark
in connection with the identified goods,
namely graphical operating environment
programs for microcomputers in 1983 as
related in the use in commerce statement of
its application filed on August 20, 1990.
Cancellation No. 92043487
18
Decision
In view of the foregoing, respondent’s motion for
summary judgment is hereby granted and the petition for
cancellation is dismissed with prejudice.

* * *