Charles Schwab & Co., Inc.v.Market Street Smarts, LLC

Trademark Trial and Appeal Board

May 18, 2018

No. 91234460 (T.T.A.B. May. 18, 2018)

csg Mailed: May 18, 2018

Opposition No. 91234460
Charles Schwab & Co., Inc.

v.
Market Street Smarts, LLC

Before Cataldo, Masiello and Goodman, Administrative Trademark
Judges.

By Goodman, Administrative Trademark Judge:

Market Street Smarts, LLC (hereinafter “Applicant”) seeks to register the mark
MARKET STREET SMARTS ROAD MAP (standard characters) for “Providing on-
line newsletters in the field of financial securities markets” in International Class
41.1
Charles Schwab & Co., Inc. (“Opposer”) opposes registration of Applicant’s mark
on the ground of likelihood of confusion, Section 2(d), 15 U.S.C. § 1052(d), and
dilution, Section, 43(c), 15 U.S.C. § 1125(c).2 In the notice of opposition, Opposer has

1 Application Serial No. 87131854, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), claiming a date of first use and first use in commerce of September 22, 2015.
“Market” is disclaimed.
2 After the discovery conference, which was facilitated by the Interlocutory Attorney,
Opposer’s Section 2(a) false suggestion of a connection claim was stricken. 9 TTABVUE. The
pleadings of likelihood of confusion and dilution were found sufficient. Id.
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 NOT A
PRECEDENT OF THE TTAB
Opposition No. 91234460

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pleaded ownership of the registered mark STREETSMART and other registered
STREETSMART-formative marks, as well as pending applications, for various goods
and services in the finance and investment fields.3
Applicant, in its answer, denied the salient allegations in the notice of opposition.
Although Applicant included an assertion in its answer that Opposer’s allegations in
the notice of opposition were “meritless and moot,” Applicant did not specifically
plead any affirmative defenses.
This case now comes up on Applicant’s motion, filed February 23, 2018, for
summary judgment.4
I. Preliminary Matters
We first consider a number of issues related to Applicant’s summary judgment
motion.
From Applicant’s arguments, we construe Applicant’s motion as one based on the
defenses of claim or issue preclusion. These defenses are unpleaded affirmative
defenses that have not been asserted in Applicant’s answer.

3 Reg. No. 3826483, STREETSMART (standard characters); Reg. No: 3743367 for
STREETSMART.COM (standard characters) Reg. No. 2141296 for STREETSMART PRO
(typed drawing), Reg. No. 2082271 for STREETSMART PRO (typed drawing), Reg. No.
5325218 for SCHWAB ADVISOR STREETSMART EDGE (standard characters, “advisor”
disclaimed), Application Serial No. 87372972 for STREETSMART MOBILE (standard
characters, “mobile” disclaimed), and Application Serial No. 87372974 for STREETSMART
CENTRAL (standard characters).
4 The Board had previously denied Applicant’s earlier-filed motion for summary judgment,
(January 16, 2018), as unsupported. The Board interpreted that motion as being based on
Opposer’s failure to respond to Applicant’s second set of requests for admissions and allowed
Applicant time to submit a properly supported motion for summary judgment on this basis.
11 TTABVUE.
Opposition No. 91234460

3
While, generally, a party may not obtain summary judgment on an issue that is
not pleaded, TBMP Section 528.07(a) (June 2017), Opposer, in its response, has
addressed Applicant’s arguments related to the preclusion defenses and provided the
declaration of Laura M. Franco, counsel for Opposer, and accompanying exhibits.
Inasmuch as Opposer has responded to the motion on its merits, we deem Applicant’s
answer to have been amended to include the defenses of claim and issue preclusion.
Id.
In its response, Opposer argues that the motion for summary judgment should
be denied as procedurally deficient due to the lack of supporting documentation
required under Fed. R. Civ. P. 56(c)(1).5
However, we need not deny Applicant’s motion for summary judgment on the
basis that it is procedurally deficient. While Applicant did not provide any supporting
documentary evidence with its motion as required by Fed. R. Civ. P. 56(c)(1), Opposer
provided documentary evidence with its response including TSDR (Trademark Status
and Document Retrieval) system printouts that show the status and prosecution
history of the third-party registrations/application to which Applicant refers in its
motion. Opposer’s evidence may be relied on by Applicant for any purpose, and we
may consider Opposer’s evidence for whatever probative value it may have in
connection with Applicant’s motion for summary judgment. Trademark Rule 2.122(a),

5 Applicant’s motion merely refers to the Office’s records and includes a list of third-party
registrations and applications as the basis for its “undisputed facts.” Applicant is advised
that the Board does not take judicial notice of records in the Office and Applicant’s listing of
third-party registrations and applications and reference to the Office’s electronic records is
insufficient to make the registration or application file of record. Edom Laboratories Inc. v.
Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012).
Opposition No. 91234460

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37 CFR § 2.122(a); see, e.g., Nazon v. Ghiorse, 119 USPQ2d 1178, 1181 n.6 (TTAB
2016) (“Once evidence is properly of record, it may be relied on by any party for any
purpose.”). Therefore, we consider Applicant’s motion on its merits.
In its response, Opposer also has complained about Applicant’s deficient
discovery responses and has provided some supporting documentation to this effect.
To the extent that Opposer is cross-moving to compel discovery, the motion will be
given no consideration as it was untimely filed while this proceeding was suspended
for consideration of the instant motion for summary judgment.6 See Trademark Rule
2.127(d), 37 CFR § 2.127(d) (suspension of proceedings upon the filing of a potentially
dispositive motion as to all matters other than those germane to the motion).7 See
also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed.
Reg. 69950, 69951 (Oct. 7, 2016) (“[T]his final rule provides that a trial proceeding is
suspended upon filing of a timely, potentially dispositive motion.”).
II. Summary Judgment
We now turn to consideration of Applicant’s motion for summary judgment.
In our decision, we will not repeat all the arguments raised by the parties or
discuss all evidentiary submissions. However, we have carefully considered all
arguments and evidence before us.

6 It appears both parties have complaints regarding responses received to their discovery
requests. Applicant’s January 16, 2018 motion for summary judgment stated: “Plaintiff
alleged a majority of Defendant’s Discovery requests simply consisted of a majority of basic
words as ‘vague and ambiguous,’” “Plaintiff completely neglected to answer to any of that
[second] set of [admission] requests by Defendant within 30 days,” and “Plaintiff has defied
the Defendant with impunity in further ignoring Defendant’s requests in Discovery….” 10
TTABVUE 4-5.
7 The Board’s suspension order issued on March 2, 2018. 13 TTABVUE.
Opposition No. 91234460

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Summary judgment is appropriate where the movant shows the absence of any
genuine dispute as to any material fact, and that it is entitled to judgment as a matter
of law. See Fed. R. Civ. P. 56(a).
A. Arguments
In support of its motion, Applicant contends that because third-party STREET
SMART marks were allowed to register after being opposed by Opposer, they show
“pertinent, material” facts and are “precedent case law” as to the likelihood of
confusion and dilution claims in this case, particularly because those marks are “more
similar in sight and sound if not meaning … relative to Plaintiff's ‘StreetSmart’ family
of marks” than Applicant’s mark.8
Applicant has identified the following third-party applications/registrations in
support of its defense:9
Registration No. 2167823 for “Street Smart.”
Registration No. 3608928 for .
Registration No. 3018282 for “StreetSmarts.”
Serial No. 74322370 for “Wall Street Wise, Main Street Smart.”
Applicant argues that this evidence “shows the TTAB upheld decisions where the
Defendants resumed the right to register their marks … there was clearly no such

8 12 TTABVUE 4-5.
9 12 TTABVUE 4; 14 TTABVUE 21, 26, 33, 40.
Opposition No. 91234460

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confusion or dilution….”10 Applicant submits that its mark should be allowed to
proceed to registration similarly “without any more obstruction….”11
In response, Opposer argues that Applicant’s motion is conclusory, fails to
address the legal factors relevant to the claim or defense, and “fails to identify which
portions of the cited proceedings are ‘competent evidence and relevant to an issue’ in
this proceeding.”12 Opposer further points out that two of the applications, Serial No.
78853377 (Registration No. 3608928) and Serial No. 76531216 (Registration No.
3018282), were not subject to opposition by Opposer. In particular, Serial No.
78853377 was opposed by Mortgage Guaranteed Investments and the opposition
dismissed with prejudice.13 Serial No. 76531216 was not opposed, although Opposer
did file an extension of time to oppose in connection with that application.14 As to
Serial No. 74555767 (Registration No. 2167823) and Serial No. 74322370, Opposer
did file Oppositions against these applications.15 The opposition against Serial No.
74555767 was dismissed with prejudice, while the opposition involving Serial No.
74322370 was dismissed without prejudice.16 Lastly, Opposer states that “none of the
proceedings produced a decision on the merits from the Board or any other entity”

10 12 TTABVUE 5.
11 12 TTABVUE 5.
12 14 TTABVUE 5-6.
13 14 TTABVUE 28.
14 14 TTABVUE 35.
15 14 TTABVUE 23-24, 41-42.
16 Id. at 24, 42.
Opposition No. 91234460

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and that “Applicant fails to show (or even argue) that Schwab’s basis for opposing
those applications was the same as its basis in this proceeding.”17
B. Legal Standards; Claim and Issue Preclusion
Under the doctrine of claim preclusion, the entry of judgment in a prior
proceeding operates to preclude relitigation of the same claim or defense in a
subsequent proceeding 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.” Jet Inc. v. Sewage Aeration
Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1857 (Fed. Cir. 2000) (citing Parklane
Hosiery Co. v. Shore , 439 U.S. 322, 326 n.5 (1979) and Foster v. Hallco Mfg. Co. , 947
F.2d 469, 20 USPQ2d 1241, 1248 (Fed. Cir. 1991)).
The doctrine of issue preclusion bars the re-litigation of the same issue in a second
action involving the parties. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct.
1293, 113 USPQ2d 2045, 2051 (2015). Issue preclusion requires (1) identity of an
issue in a prior proceeding; (2) that the identical issue was actually litigated; (3) that
determination of the issue was necessary to the judgment in the prior proceeding;
and (4) that the party defending against preclusion had a full and fair opportunity to
litigate the issue in the prior proceeding. Mayer/Berkshire Corp. v. Berkshire
Fashions Inc. 424 F.3d 1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005) (citing Montana
v. U.S., 440 U.S. 147, 153-55 (1979)). The doctrine of issue preclusion may also be
invoked by a non-party to a prior action against one who was a party to that action if

17 14 TTABVUE 10; 14 TTABVUE 21-24, 26-29,33-35,40-42.
Opposition No. 91234460

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the issues were fully litigated.18 See Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,
402 U.S. 313, 329 (1971) (allowing use of defensive collateral estoppel by a litigant
who was not a party to a prior patent invalidity verdict against an asserting plaintiff
who was party to the prior action); see also Parklane Hosiery Co., 439 U.S. at 331
(“We have concluded that the preferable approach for dealing with these problems in
the federal courts is not to preclude the use of offensive collateral estoppel, but to
grant trial courts broad discretion to determine when it should be applied.”).
C. Analysis
The three registrations identified by Applicant are cancelled, and the Application
identified by Applicant has been abandoned.19 An expired or cancelled registration is
not evidence of use of the registered mark at any time because it no longer benefits
from the presumptions of Section 7(b) of the Trademark Act. Kellogg Co. v. Western
Family Foods, Inc., 209 USPQ 440, 442 (TTAB 1980). An abandoned application is
evidence only of the fact that it was filed. Interpayment Services Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
We find claim and issue preclusion inapplicable to Serial No. 76531216, which
was not subject to any opposition proceeding.

18 Issue preclusion will not apply against a non-party to the prior action. Blonder-Tongue
Labs., 402 U.S. at 329 (“Some litigants—those who never appeared in a prior action—may
not be collaterally estopped without litigating the issue. They have never had a chance to
present their evidence and arguments on the claim. Due process prohibits estopping them
despite one or more existing adjudications of the identical issue which stand squarely against
their position.”).
19 14 TTABVUE 22, 27, 34, 41.
Opposition No. 91234460

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We find claim preclusion inapplicable to Serial Nos. 74555767 and 74322370, in
which Opposer was the plaintiff, and the opposition involving Serial No. 78853377,
in which Opposer was not plaintiff, as there is no identity of parties. Applicant was
not an adverse party20 in any of the proceedings involving Serial Nos. 74555767 and
74322370 in which Opposer was the plaintiff, and the opposition involving Serial No.
78853377 lacks identity as to either party in the present opposition. Applicant has
not shown that either Opposer or it was in privity with the parties in that action. We
further note that these cases involve different transactional facts.
As to issue preclusion, Applicant was not a party to any of the oppositions, so the
only basis for application of the doctrine would be as to “defensive collateral estoppel.”
As to Serial Nos. 74555767 and 74322370 in which Opposer was the plaintiff, these
cases were dismissed with prejudice, and without prejudice, respectively. No issues
were tried and no opinion issued in either case, so there is no basis for arguing that
issue preclusion applies. Issue preclusion also would be inapplicable to the opposition
involving Serial No. 78853377, as Opposer was not a party and did not have a full
and fair opportunity to litigate the claims in the case.21
III. Conclusion
We find that Applicant has failed to demonstrate the absence of a genuine dispute
of material fact as to its entitlement to judgment as a matter of law on grounds of
either issue preclusion or claim preclusion. To the contrary, there is no genuine

20 Applicant has not claimed nor shown that it was in privity with either party defendant.
21 We further note that no issues were tried and no opinion issued in this case.
Opposition No. 91234460

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dispute of material fact as to the inapplicability of either defense to Opposer’s
likelihood of confusion and dilution claims, and we find that as a matter of law the
defenses of issue and claim preclusion do not apply to these claims. Applicant’s motion
for summary judgment is DENIED on this basis.
The Board has the authority to sua sponte “grant summary judgment to the non-
movant” so long as it provides the moving party with “notice and a reasonable
opportunity to respond.” Fed. R. Civ. P. 56(f). The purpose of notice is to prevent
prejudice. In cases where a party has no additional evidence to bring and has fully
briefed his position, courts have sua sponte granted summary judgment even without
notice, finding no prejudice. See Bridgeway Corp. v. Citibank, 201 F.3d 134, 140 (2d
Cir. 2000) (“If . . . the party had no additional evidence to bring, it cannot plausibly
argue that it was prejudiced by the lack of notice.”). See also Albino v. Baca, 747 F.3d
1162, 1176-77 (9th Cir. 2014) (en banc) (sua sponte grant of summary judgment for
non-movant without prior notice as movants had a “full and fair opportunity to
ventilate the issues involved,” and “were on notice of the need to come forward with
all their evidence in support of this motion, and they had … ample opportunity to
conduct discovery and to provide evidence to carry their burden of proof.”); Kannady
v. City of Kiowa, 590 F.3d 1161, 1171 (10th Cir. 2010) (“When a district court’s sua
sponte determination is based on issues identical to those raised by a moving party,
the risk of prejudice is significantly lowered….”).
Here, there are no material facts in dispute with respect to the defenses of claim
preclusion and issue preclusion, and the evidentiary record is fully developed. The
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issues are purely legal ones. Applicant raised and briefed its position on the
preclusion defenses and pointed to the Office’s electronic records as its entire
evidentiary support, having no additional evidence to bring or argument to be made.
Accordingly, we find it appropriate to sua sponte GRANT partial summary judgment
in favor of Opposer on Applicant’s defenses of claim and issue preclusion.
This is the second motion for summary judgment filed by Applicant. In order to
assist in the efficient management of this case, to the extent Applicant wishes to file
another motion for summary judgment on this matter, or any other motion, Applicant
is required to obtain prior Board approval by contacting the assigned Interlocutory
Attorney to this case.
The parties are reminded that each party has an obligation to provide discovery,
an obligation that is not dependent on the other’s discovery responses, to provide
proper responses to discovery requests, and to supplement responses to requests as
appropriate. See TBMP Section 408 (Duties to Cooperate, Search Records,
Supplement). To the extent that Applicant’s motion for summary judgment is
grounded in Opposer’s failure to cooperate in discovery, Applicant is directed to
TBMP Section 411 (Remedy for Failure to Provide Disclosures or Discovery) for
appropriate remedies. Applicant is further directed to TBMP Section 407.05
regarding the limit on number for requests for admissions.22 Lastly, the parties are
reminded that prior to filing any motions to compel in connection with discovery, a

22 Exhibit A of the Franco declaration includes a copy of a letter addressed to Applicant
stating in part “as you know, a party may serve a maximum of 75 requests for admission. . .
. . Because your second set of requests exceeded the number permitted, Schwab objected—
as the TTAB’s rules required it to do—to their excessive number.” 14 TTABVUE 19.
Opposition No. 91234460

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good faith effort must be made to resolve the discovery dispute, TBMP Section 523.02,
and any motion to compel must be filed prior to the deadline for pretrial disclosures.
Trademark Rule 2.120(f), 37 CFR § 2.120(f).
Proceedings are resumed. Dates are reset as follows:
Defendant's Pretrial Disclosures Due 6/5/2018
Defendant's 30-day Trial Period Ends 6/26/2018
Plaintiff's Rebuttal Disclosures Due 7/11/2018
Plaintiff's 15-day Rebuttal Period Ends 8/10/2018
Plaintiff's Opening Brief Due 10/9/2018
Defendant's Brief Due 11/8/2018
Plaintiff's Reply Brief Due 11/23/2018
Request for Oral Hearing (optional) Due 8/14/2019

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).