Edmund Papczunv.I-D Foods Corp.

Trademark Trial and Appeal Board

Jul 29, 2015

No. 92060186 (T.T.A.B. Jul. 29, 2015)

BUO
Mailed: July 29, 2015

Cancellation No. 92060186
Edmund Papczun
v.
I-D Foods Corp.

Before Seeherman, Lykos and Shaw, Administrative Trademark Judges.

By the Board:

On April 27, 2015, the Board issued an order deferring determination of
Petitioner’s December 17, 2014 motion for summary judgment based upon the
doctrine of claim preclusion. The evidence submitted with the original motion did
not include the record of the underlying prior Cancellation Proceeding No. 92055799
(“the ’799 cancellation”) and, therefore, in the interest of judicial economy, the
Board allowed Petitioner fifteen days from the issuance of that order to file evidence
establishing the transactional facts of the prior cancellation proceeding.
On May 1, 2015, Petitioner filed its response to the Board’s order, including the
following exhibits:
• portions of the record of application Serial No. 77134486, which
matured into Registration No. 3924415, the subject of the ’799
cancellation proceeding;

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 OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92060186

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• portions of the record of the ’799 cancellation proceeding,
including the petition to cancel filed in that proceeding and its
ESTTA coversheet, and the Board’s order entring default
judgment;

• portions of the record of application Serial No. 85959056, which
matured into Registration No. 4581474, the subject of this
cancellation proceeding; and

• a red-lined copy comparing the petition to cancel filed in this
proceeding against the petition filed in the ’799 cancellation,
highlighting the differences.

As we stated in our April 27, 2015 order, “[u]nder the doctrine of claim
preclusion or res judicata, ‘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.’”
Jet Inc. v. Sewage Aeration Sys., 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (quoting
Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979)).
As explained in the previous order, for claim preclusion to apply there must be:
(1) identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional facts as
the first.

We previously determined that there can be no dispute that the parties to this
proceeding are identical to the parties involved in the ’799 cancellation. 14
TTABVUE 10. This determination is now further supported by the evidence of
record, i.e. Petitioner has provided the petition to cancel from the ’799 cancellation,
which identifies the parties in the caption. Similarly, we previously found there to
be no dispute that Respondent failed to file an answer in the prior proceeding and
that, as a result, the Board granted Petitioner’s motion for default judgment under
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Fed. R. Civ. P. 551 and Registration No. 3924415 was cancelled. Id. Petitioner’s
submission of the record of the prior proceeding confirms this finding. Further, the
entry of the default judgment under Fed. R. Civ. P. 55 in the ’799 cancellation
operates as a final judgment on the merits for purposes of claim preclusion. See Int’l
Nutrition Co. v. Horphag Research Ltd., 55 USPQ2d 1492 (Fed. Cir. 2000) (citing
Young Eng’rs, Inc. v. United States Int’l Trade Comm’n, 721 F.2d 1305, 219 USPQ
1142, 1151 (Fed. Cir. 1983) (“principles of merger and bar may apply even though a
judgment results by default, consent, or dismissal with prejudice”)); Miller Brewing
Co. v. Coy Int’l Corp., 230 USPQ 675, 677 (TTAB 1986). Therefore, a final judgment
was reached on Petitioner’s prior claims of likelihood of confusion and false
association.
The only issue remaining for consideration, as previously indicated, is the
determination of whether the present claims arose from the same transactional
facts which should have been litigated in the prior case. This analysis implicates the
doctrine of “merger,” or offensive claim preclusion, which requires an assessment of
whether a party’s new mark makes the same commercial impression as its
previously litigated mark, whether the goods or services are the same, and whether
Respondent was afforded a previous opportunity to litigate the claims brought
against it. See, e.g., Sharp Kabushiki Kaisha v. ThinkSharp Inc., 448 F.3d 1368, 79
USPQ2d 1376, 1378-79 (Fed. Cir. 2006); Chromalloy Am. Corp. v. Kenneth Gordon
(New Orleans), Ltd., 736 F.2d 694, 222 USPQ 187, 189-90 (Fed. Cir. 1984).

1 Petitioner’s motion for default judgment was granted as conceded under Trademark Rule
2.127(a).
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Courts have defined “transaction” in terms of a “core of operative facts,” the
“same operative facts,” or the “same nucleus of operative facts,” and “based on the
same, or nearly the same, factual allegations.” Jet Inc., 55 USPQ2d at 1856 (quoting
Herrmann v. Cencom Cable Assoc., Inc., 999 F.2d 223, 226 (7th Cir. 1993)); see also
United States v. Haytian Rep., 154 U.S. 118, 125 (1894) (“One of the tests laid down
for the purpose of determining whether or not the causes of action should have been
joined in one suit is whether the evidence necessary to prove one cause of action
would establish the other.”).
Applying this analysis, we note that the body of the complaint in the ’799
cancellation alleged a likelihood of confusion under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), with respect to the mark HOUSE OF ALISTER MACKENZIE,
based on Petitioner’s ownership of three registrations – Registration Nos. 2782282,
3174410 and 4135892, and common law rights in the mark ALISTER
MACKENZIE. Petitioner also pleaded ownership of application Serial No.
85306515. 15 TTABVUE 147-48, ¶¶ 1-4. The likelihood of confusion claim advanced
in the present cancellation proceeding also relies on, inter alia, those pleaded
registrations and the registration that matured from the previously pleaded
application Serial No. 85306515 – Registration No. 4305803.2 Additionally, the

2 Petitioner has also pleaded ownership of Registration No. 4625962, for the mark
ALISTER MACKENZIE and design, for “blended whisky; bourbon; cognac; liquor; scotch;
whisky; alcoholic beverage produced from a brewed malt base with natural flavors;
alcoholic beverages except beers; alcoholic beverages, namely, flavor-infused whiskey;
alcoholic beverages, namely, digestives; alcoholic cocktail mixes; aperitifs with a distilled
alcoholic liquor base; brandy; brandy spirits; distilled spirits; flavored brewed malt
beverage; potable spirits; prepared alcoholic cocktail; scotch; sherry; spirits and liqueurs;”
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allegations supporting the present claim of likelihood of confusion mirror those
asserted in the prior action.
Moreover, Petitioner previously asserted a claim of false association under
Section 2(a), 15 U.S.C. § 1052(a), alleging that “Registrant’s mark and Petitioner’s
mark both include the same expression ALISTER MACKENZIE a name/identity a
persona in which Petitioner has acquired all rights. Petitioner is not connected with
the activities performed by Registrant.” Id. at 151, ¶ 22. Again, Petitioner has
restated its false association claim in the present action, without any substantial
alteration.
It is also relevant that Respondent filed the underlying application that matured
into its involved registration on June 13, 2013, just one year after entry of judgment
against it cancelling registration of a similar mark in the ’799 cancellation;
therefore, the timing supports a conclusion that Respondent’s filing of that
application was an attempt to avoid the preclusive effect of the previous judgment.
See Miller Brewing Co., 230 USPQ at 678 (Board determined that application filed
shortly after a judgment had been entered against previous application for similar
mark was an attempt to avoid the preclusive effect of the previous judgment).
Finally, the mark at issue here, THE HOUSE OF ALISTER MACKENZIE, is
virtually identical to the mark at issue in the ’799 cancellation, HOUSE OF
ALISTER MACKENZIE, differing only in the addition of the definite article “THE.”
As the Board held in Miller Brewing Co., we do “not wish to encourage losing

and pending application Serial No. 85661973, for the mark ALISTER MACKENZIE, in
standard characters, for “golf course design.”
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parties to insignificantly modify their marks after an adverse ruling and thereby
avoid the res judicata effect of the prior adjudication.” 230 USPQ at 678.
Petitioner’s submission of the record from the ’799 cancellation also reveals that the
goods involved in the prior proceeding were also virtually identical to those
presently at issue, both being whiskey, albeit the prior proceeding involved “Scotch
whiskey”, and the present involves “Canadian whiskey.”3
Considering these facts, despite Respondent’s argument that the present claims
did not arise from the same transactional facts which should have been litigated in
the prior case, the present record shows that the ’799 cancellation and this
cancellation stem from the same set of transactional facts.
When a moving party’s motion for summary judgment is supported by evidence
sufficient to indicate that there can be no genuine dispute as to any material fact
and that the moving party is entitled to judgment, the burden shifts to the non-
moving party to demonstrate the existence of at least one genuine dispute as to a
material fact that requires resolution at trial. The non-moving party may not rest
on the mere allegations of its pleadings and assertions, but must designate specific
portions of the record or produce additional evidence showing the existence of a
genuine dispute as to a material fact for trial.
On May 21, 2015, Respondent filed a response to Petitioner’s submission.
Respondent contends that “Petitioner has never addressed, mentioned or argued the

3 The Board takes judicial notice of the following definition of whiskey from the Merriam-
Webster online dictionary: “a liquor that is distilled from the fermented mash of grain (as
rye, corn, or barley).” See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB
2013) (Board may take judicial notice of online dictionaries that exist in printed format or
have regular fixed editions).
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significance or lack thereof of Registrant’s allegations of events occurring after the
resolution of the first Cancellation proceeding. The asserted [counter]claims of
abandonment and fraudulent filings for post registration matters were not matters
decided by the prior Cancellation.” 16 TTABVUE 3. Respondent’s arguments are to
no avail. As noted, Respondent has made these allegations in the context of its
counterclaims to cancel Petitioner’s pleaded registrations. Respondent’s
counterclaims were not asserted in the ’799 cancellation against Petitioner’s
pleaded registrations since no answer was filed, and indeed are now being raised for
the first time. Furthermore, the nature of Respondent’s counterclaims, fraud and
abandonment, did not arise from the same set of transactional facts as the Section
2(d) and Section 2(a) claims asserted in the main cancellation proceeding. Because
the allegations in the counterclaims did not arise from the same set of transactional
facts, they are not relevant to whether claim preclusion applies to the grounds
asserted by Petitioner in its petition to cancel. Accordingly, Respondent’s argument
is not sufficient to raise a genuine dispute of material fact.
Accordingly, Respondent has failed to show the existence of a genuine dispute as
to a material fact for trial on Petitioner’s motion for summary judgment on claim
preclusion.
Decision
Based on the record before us, we find that there is no genuine dispute that the
parties to the two proceedings are the same, that there was an earlier final
judgment on the merits, and that Petitioner’s claims in the present cancellation
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proceeding are based on the same set of transactional facts as those in Cancellation
No. 92055799. Therefore, Petitioner’s motion for summary judgment is GRANTED
on its claim of res judicata.
Respondent is allowed FIFTEEN (15) DAYS to indicate whether it wishes to
proceed with its counterclaims to cancel Petitioner’s pleaded Registration Nos.
2782282, 3174410, 4135892, 4305803, and 4625962 on the grounds of fraud and
abandonment, failing which the counterclaims will be dismissed without prejudice.
However, Respondent is advised that its abandonment claim, as currently
presented, is insufficiently pleaded because it is not supported by appropriate
factual background. In order to set forth a sufficient claim to cancel the registration
of a mark which assertedly has been abandoned, the plaintiff must plead ultimate
facts pertaining to the alleged abandonment, thus providing fair notice to the
defendant of plaintiff’s theory of abandonment. Otto Int’l Inc. v. Otto Kern GmbH,
83 USPQ2d 1861, 1863 (TTAB 2007). See also Clubman’s Club Corp. v. Martin, 188
USPQ 455, 456 (TTAB 1975). In this context, a mark is abandoned “[w]hen its use
has been discontinued with intent not to resume such use. … Nonuse for 3
consecutive years shall be prima facie evidence of abandonment.” Trademark Act
Section 45, 15 U.S.C. § 1127. Respondent’s pleading does not assert when the
asserted abandonment took place or a course of conduct that has resulted in an
abandonment over a certain time period, i.e. there is no factual allegation regarding
the date the abandonment occurred. Therefore, if Respondent decides that it wishes
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to proceed with the counterclaim based on abandonment, it should, within the
allowed 15 days, submit an amended pleading.