Finck Cigar Co.v.el Duque Group, Inc.

Trademark Trial and Appeal Board

Jan 17, 2001

No. 92029785 (T.T.A.B. Jan. 17, 2001)

1/17/01
EAD
Cancellation No. 29,785
Finck Cigar Company
v.
El Duque Group, Inc.
Before Walters, Chapman, and Wendel, Administrative
Trademark Judges.
By the Board:
Finck Cigar Company has filed a petition to cancel
Registration No. 2,198,7391 for the mark shown below
for “cigars”. Petitioner asserts that it is engaged in the
manufacture and promotion of cigars; that it has used since
1971 and intends to use the mark ALAMO in connection with
its manufacture and promotion of cigars; that its
1 Registration No. 2,198,739 issued October 20, 1998. The word
“cigars” is disclaimed and the claimed date of first use is April
1998.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 29,785
2
application for registration of the mark ALAMO for cigars
was refused on the basis of Registration No. 2,198,739; that
no affidavits of use or incontestability regarding the
registration have been filed2; and that Registration No.
2,198,739 is and will continue to be a source of damage and
injury to petitioner. The Board instituted this proceeding
on January 6, 2000. On March 7, 2000, respondent filed a
motion to dismiss or alternatively, for summary judgment
based on res judicata.3
As a preliminary matter, the Board notes that the
petition to cancel does not specify a statutory basis for
cancellation. Insofar as the petition to cancel refers to
the refusal of petitioner’s trademark application as a basis
for cancellation, and insofar as the refusal of registration
was based on likelihood of confusion, for the purpose of
this motion we construe likelihood of confusion as the only
basis possibly pleaded for cancellation of Registration No.
2,198,739.
2 The Board notes that a Section 15 affidavit of incontestability
is not required to maintain a registration and the lack thereof
is not a basis for canceling a registration. See Trademark Act
Section 15, 15 U.S.C. §1065; Trademark Manual of Examining
Procedure (2d ed. 1993, rev. 1.1)(TMEP) §1604.
Further, because Registration No. 2,198,739 issued October 20,
1998, the Section 8 affidavit of use is not yet due. See
Trademark Act Section 8, 15 U.S.C. §1058; and TMEP §1603.03(a).
3 The parties were advised in the Board order of March 30, 2000
that because the motion contains matter outside the pleadings, we
shall treat it as a motion for summary judgment.
Cancellation No. 29,785
3
The granting of a motion for summary judgment is
appropriate where there exists no genuine dispute as to any
material fact and where the moving party is entitled to
judgment as a matter of law. See Fed. R. Civ. Pro. 56(c);
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548
(1986). Here, there are no disputes as to any genuine
issues of material fact, but the parties differ on the
conclusions of law to be drawn from those facts.
The record makes clear that in Opposition No. 101,716
opposer (petitioner herein) filed a notice of opposition to
registration of the mark shown below
for “cigars” on the grounds of priority of use and
likelihood of confusion, alleging applicant’s mark so
resembled opposer’s mark ALAMO CIGARS for cigars as to be
likely to cause confusion, mistake or deception.
Applicant (respondent herein) moved to dismiss the
opposition pursuant to Trademark Rule 2.132(a). Opposer did
not contest the motion. The Board granted the motion,
entered judgment against opposer, and dismissed the
opposition with prejudice. Opposer did not file an appeal
Cancellation No. 29,785
4
of the Board’s decision. On October 20, 1998, application
Serial No. 74/695,164 issued as Registration 2,198,739, the
registration involved herein.
“Application of res judicata requires a prior final
judgment on the merits by a court or other tribunal of
competent jurisdiction; identity of the parties or those in
privity with the parties; and a subsequent action based on
the same claims that were raised, or could have been raised,
in the prior action. (citations omitted)” International
Nutrition Co. v. Horphag Research Ltd., 55 USPQ2d 1492, 1494
(Fed. Cir. 2000) . Application of res judicata principles
for issue preclusion operates only as to issues actually
litigated4, whereas application of res judicata principles
for claim preclusion may operate between the parties simply
by virtue of the final judgment. The Young Engineers Inc.
v. U.S. International Trade Commission, 721 F.2d 1305, 1314,
219 USPQ 1142, 1151 (Fed. Cir. 1983). Claim preclusion,
where found, operates to bar subsequent assertion of the
same transactional facts in the form of a different cause of
4 As noted by both parties, issue preclusion, or collateral
estoppel, is inapplicable herein because the prior opposition
proceeding was dismissed pursuant to Trademark Rule 2.132(a), and
thus did not meet the requirement that “the identical issue was
fully litigated in a prior suit between the same parties or their
privies, and that resolution of the issue was essential to the
judgment in the prior suit.” International Order of Job's
Daughters v. Lindeburg and Company, 220 USPQ 1017 (Fed. Cir.
1984); Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1321
(TTAB 1990).
Cancellation No. 29,785
5
action or theory of relief. Generally, this principle rests
on the assumption that all forms of relief could have been
requested in the first action. The Young Engineers, at
1151.
Default judgments can give rise to res judicata.
International Nutrition Co., supra, at 1494, citing Riehle
v. Margolies, 279 U.S. 218, 225 (1929); The Young Engineers,
supra; and Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d
961, 963, 203 USPQ 564, 566 (CCPA 1979). A trial or hearing
is not required, so long as “the parties might have had
their controversies determined… if they had presented all
their evidence and the court had applied the law”. Wells
Cargo, Inc. v. Wells Cargo, Inc., supra, at 566 (citations
omitted). See also Marc A. Bergsman, TIPS FROM THE TTAB:
The Effect of Board Decisions in Civil Actions; Claim
Preclusion and Issue Preclusion in Board Proceedings, 80 TMR
540, 546 (1990)(“An involuntary dismissal generally operates
as an adjudication upon the merits and will preclude a
subsequent action based on the same cause of action”).
In Chromalloy American Corp. v. Kenneth Gordon, Ltd.,
736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984), the Court of
Appeals for the Federal Circuit stated that it would be
guided by the analysis set forth in the Restatement (Second)
of Judgments Section 24 (1982) in determining whether a
plaintiff's claim in a particular case is barred by the
Cancellation No. 29,785
6
doctrine of claim preclusion. The court found that the
doctrine of claim preclusion was not applicable in an
opposition proceeding which involved the applicant's mark
LADY GORDON, because that mark was a "different mark" from
the applicant's marks involved in the parties' prior
infringement proceeding, i.e., GORDON and GORDON OF NEW
ORLEANS, as to which a consent judgment had been entered
against applicant.
The Board, in applying the Restatement's analysis in
determining whether two proceedings involve the same "claim"
for purposes of the claim preclusion doctrine, has looked to
whether the mark involved in the first proceeding is the
same mark, in terms of commercial impression, as the mark
involved in the second proceeding, and whether the evidence
of likelihood of confusion would be identical. The Board
also has looked to whether the applicant's second mark
differed from the first mark only in minor, insignificant
ways which suggested that the applicant, in filing the
second application, was merely attempting to avoid the
preclusive effect of the previous judgment entered against
it. Institut National Des Appellations d'Origine v. Brown-
Forman Corp., 47 USPQ2d 1875, 1894 (TTAB 1998); Metromedia
Steakhouses Inc. v. Pondco II Inc., 28 USPQ2d 1205 (TTAB
1993); Treadwell's Drifters, supra; La Fara Importing Co. v.
F. Lli de Cecco di Filippo Fara S. Martino S.p.a., 8 USPQ2d
Cancellation No. 29,785
7
1143 (TTAB 1988); and Miller Brewing Company v. Coy
International Corporation, 230 USPQ 675 (TTAB 1986).
Respondent has moved for summary judgment on the ground
that petitioner’s claims are barred under the doctrine of
claim preclusion, or res judicata, based on the Board’s
entry of judgment against petitioner as opposer in
Opposition No. 101,716 (Finck Cigar Company v. El Duque
Group, Inc.), in which the opposition to application Serial
No. 74/695,164 based on likelihood of confusion and priority
of use was dismissed with prejudice, and the application
matured into Registration No. 2,198,739. The motion is
supported by copies of the notice of opposition setting
forth opposer’s claims in Opposition No. 101,716, and the
Board order entering judgment against opposer in the
opposition proceeding pursuant to Trademark Rule 2.132(a).
Specifically, in its motion for summary judgment dismissing
the petition to cancel, respondent argues that the petition
to cancel “is a mirror image” of the previously dismissed
opposition, and that the Board’s decision in Opposition No.
101,716 acts as an estoppel against petitioner’s
relitigating the issues of priority of use and likelihood of
confusion.
Petitioner opposes the summary judgment motion on the
ground that res judicata is inapplicable because this
proceeding involves different claims. Petitioner argues
Cancellation No. 29,785
8
that it is not estopped from raising the issues of priority
of use and likelihood of confusion because the opposition
proceeding involved petitioner’s mark ALAMO CIGARS for
cigars and this cancellation proceeding involves
petitioner’s mark ALAMO for cigars. Further, petitioner
argues that the instant proceeding features the “entirely
different claim” that, because petitioner has now filed an
application for registration that was refused on the basis
of respondent’s registration, “the continued registration of
[respondent’s] mark is causing harm by precluding
[petitioner] from obtaining a federal trademark registration
for its ‘ALAMO’ mark.”
The latter issue does not require much discussion. The
“new” harm to petitioner, if any, caused by the refusal of
registration of petitioner’s trademark application (filed
after entry of judgment in the opposition proceeding)
affects only petitioner’s standing to bring this action.
See Trademark Rule 2.112. The refusal of registration of
petitioner’s trademark application does not, in and of
itself, constitute a cause of action for cancellation of
respondent’s registration. See Trademark Act §14(3), 15
U.S.C. §1064(3), specifying grounds for cancellation. The
same claims of priority of use and likelihood of confusion
decided in the opposition proceeding are the only claims
Cancellation No. 29,785
9
that can possibly be read into the petition to cancel, as
discussed supra.
Petitioner’s second argument that claim preclusion is
inapplicable because two different marks of the petitioner
are involved in the two different proceedings is also
unpersuasive. The difference between petitioner’s “first”
mark ALAMO CIGARS (with CIGARS disclaimed) and
petitioner’s “second” mark ALAMO, is merely the deletion
of the generic term CIGARS. Generic terms are incapable
of functioning as registrable trademarks denoting origin
or any specific source. Continental Airlines Inc. v.
United Air Lines Inc., 53 USPQ2d 1385, 1387 (TTAB 1999).
The addition or deletion of generic matter is seldom held
to change a mark’s commercial impression or constitute a
material alteration. In re Dixie Restaurants Inc., 41
USPQ2d 1531, 1534 (Fed. Cir. 1997)(“Neither the design
element nor the generic term "cafe" offers sufficient
distinctiveness to create a different commercial
impression”); In re CTB Inc., 52 USPQ2d 1471, 1476 (TTAB
1999)(“For example, the Office often finds that the
deletion of the generic name of the goods [e.g., from
"TURBO BLOWERS" to simply "TURBO"] would not generally
constitute a material alteration [unless it was so
integrated into the mark that the deletion would alter the
commercial impression]”).
Cancellation No. 29,785
10
Because petitioner’s marks ALAMO CIGARS and ALAMO
create the same commercial impression when applied to
cigars, and the evidence of likelihood of confusion would
likely be identical in the opposition and cancellation
proceedings, the Board decision on the issues of priority
of use and likelihood of confusion between respondent’s
mark ALAMO CIGARS (and design) and petitioner’s mark ALAMO
CIGARS in the prior opposition proceeding must preclude
petitioner in this cancellation proceeding from raising
the same issues of priority of use and likelihood of
confusion between respondent’s mark ALAMO CIGARS (and
design) and petitioner’s mark ALAMO. See Aromatique Inc.
v. Lang, 25 USPQ2d 1359 (TTAB 1992)(prior decision
equitably estops applicant from seeking to register a mark
that differs slightly in typeface and capitalization);
Miller Brewing Co., supra (prior decision involving LITE
and design estops applicant seeking registration of LITE
and new design with disclaimed terminology "CASK NO. 32"
and additional sheaves of grain outside the oval design in
stylized form mark); J. I. Case Company v. F.L.
Industries, Inc., 229 USPQ 697 (TTAB 1986)(prior decision
involving HI in typed form mark estops applicant seeking
registration of HI in stylized form mark).
Cancellation No. 29,785
11
Petitioner is barred by the principle of claim
preclusion from raising the allegations of priority of use
and likelihood of confusion.
Accordingly, respondent’s motion for summary judgment
is granted, judgment is entered against petitioner, and the
petition to cancel is dismissed with prejudice.