Fumeroism, LLCv.John Beltran

Trademark Trial and Appeal Board

Sep 30, 2019

92070333 (T.T.A.B. Sep. 30, 2019)

RSC
September 30, 2019

Cancellation No. 92070333

Fumeroism, LLC

v.
John Beltran1

Before Wellington, Adlin, and Coggins,
Administrative Trademark Judges.

By the Board:

On January 9, 2019, Petitioner Fumeroism, LLC filed a petition to cancel
Respondent John Beltran’s Registration No. 5288474 for the mark THE ART OF
GRAFSTRACT (in standard characters) for “Original works of art, namely, art
painted or applied directly on a wall, ceiling or other large permanent surfaces in the
nature of paintings; original art paintings on canvas” in International Class 16 (the
“Registration”).2 As grounds for cancellation, Petitioner alleges priority and
likelihood of confusion, fraud based on Respondent claiming a false date of first use,

1 The appearance of counsel for Respondent is noted and entered. 8 TTABVUE. Respondent’s
correspondence address has been updated accordingly.
2 Registered September 19, 2017.
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
General Email: TTABInfo@uspto.gov
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92070333

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and fraud based on Respondent’s prior knowledge, at the time he filed his application,
of Petitioner’s confusingly similar mark.3
On February 19, 2019, in lieu of filing an answer, Respondent filed a motion to
dismiss under Fed. R. Civ. P. 12(b)(1) for lack of subject matter jurisdiction, arguing
that the dismissal of related Opposition No. 91227266 (the “Prior Opposition”)
precludes Petitioner’s claims in this case.4 The motion has been construed as one
seeking summary judgment5 and briefed as such by the parties.
I. The Prior Opposition
In the Prior Opposition, Petitioner opposed the application (Serial No. 86494601)
which matured into the Registration.6 The ESTTA cover sheet to the notice of
opposition listed the grounds as deceptiveness and false suggestion of a connection
under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); priority and likelihood
of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); non-use of
the mark under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); dilution by
blurring and tarnishment under Section 43(c) of the Trademark Act, 15 U.S.C.
§ 1125(c); and fraud, based on essentially the same conduct alleged in the petition.7
The priority and likelihood of confusion claim was based on Petitioner’s alleged
ownership of the mark GRAFSTRACT for art displays, murals, and original works of
art.8 In support of its fraud claim Petitioner alleged that when Respondent filed his

3 Petition to Cancel (1 TTABVUE).
4 4 TTABVUE.
5 5 TTABVUE.
6 4 TTABUVE 14-27.
7 Id. at 14.
8 Id. at 17-19, ¶¶ 4, 5, 8, and 9.
Cancellation No. 92070333

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application he asserted a false date of first use, and filed despite having prior
knowledge of Petitioner and its mark.9
Ultimately, Respondent filed a motion to compel Petitioner’s compliance with a
discovery-related order, or in the alternative for sanctions.10 Because Petitioner failed
to respond to the motion, it was granted as conceded and the opposition was dismissed
with prejudice.11 Petitioner did not appeal the judgment.
II. Respondent’s Motion for Summary Judgment
Summary judgment is appropriate only 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. Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317,
323-324 (1986); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
USPQ2d 1793, 1796 (Fed. Cir. 1987); Freki Corp. N.V. v. Pinnacle Entm’t, Inc., 126
USPQ2d 1697, 1700 (TTAB 2018). In deciding a motion for summary judgment, the
Board may not resolve any factual dispute; it may only determine whether a genuine
dispute of material fact exists. See, e.g., Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 16
USPQ2d 1055, 1056 (Fed. Cir. 1990); Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d
766, 25 USPQ2d 2027 (Fed. Cir. 1993). The evidence must be viewed in a light most
favorable to the non-moving party, and all reasonable inferences are to be drawn in
the non-movant’s favor. Lloyd’s Food Prods., 25 USPQ2d at 2029; Opryland USA Inc.
v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).

9 Id. at 17, 19-21, ¶¶ 2, 12-14, 19, and 22.
10 Id. at 32.
11 Id. at 32-33.
Cancellation No. 92070333

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By his motion, Respondent seeks to preclude Petitioner’s claims in this case based
on the final judgment in the Prior Opposition. The doctrine of res judicata, also
referred to as claim preclusion, bars a second action when there is: (1) an identity of
parties or their privies; (2) 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. See
Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir.
2000); Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1868 (TTAB 2016).
“A valid and final judgment rendered in favor of the defendant bars another action
by the plaintiff on the same claim and encompasses claims that were raised or could
have been raised in the earlier action.” Chutter, 119 USPQ2d at 1868.
A. Identity of Parties or Privies
Obviously, and as Petitioner concedes, the parties here were also parties to the
Prior Opposition.12 Accordingly, there is no genuine dispute of material fact as to the
first element of claim preclusion.
B. Final Judgment on Merits of Earlier Claim
As to the second element, Petitioner contends that it “never had the chance to
properly litigate its claims in the Opposition due to a gross failure on the part of”
Petitioner’s former attorney, and because “the case was dismissed without a
resolution on the merits.”13 These contentions are not well-taken. It is well settled
that a party and its attorney share a duty to remain diligent in prosecuting the party’s
case, and inaction or even neglect by the party’s chosen attorney will not excuse the

12 6 TTABVUE 3.
13 Id. at 5.
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inattention of the party so as to provide the party another day in court. CTRL Sys.
Inc. v. Ultraphonics of N. Am. Inc., 52 USPQ2d 1300, 1302 (TTAB 1999) (citing
Williams v. The Five Platters, Inc., 510 F.2d 963, 184 USPQ 744 (CCPA 1975), aff’g
181 USPQ 409 (TTAB 1974); Syosset Labs., Inc. v. TI Pharm., 216 USPQ 330 (TTAB
1982); Marriott Corp. v. Pappy’s Enters., Inc., 192 USPQ 735 (TTAB 1976); and
Columbia Broad. Sys., Inc. v. De Costa, 165 USPQ 95 (TTAB 1970)).
Moreover, “whether the judgment in a prior proceeding was the result of a
dismissal with prejudice or even default, for claim preclusion purposes, it is a final
judgment on the merits.” Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411
(TTAB 2015); see also Chutter, 119 USPQ2d at 1867-68 (dismissal for loss of interest,
when the plaintiff failed to amend its pleadings, was a final adjudication on the merits
for purposes of claim preclusion); Orouba Agrifoods Processing Co. v. United Food
Import, 97 USPQ2d 1310, 1314-15 (TTAB 2010) (“[E]ven default judgments for failure
to answer, or dismissals for failure to prosecute, where there has been no decision ‘on
the merits,’ can act as a bar under the doctrine of claim preclusion.”); Flowers Indus.
Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987) (claim preclusion
applies “even when the prior judgment resulted from default, consent, or dismissal
with prejudice”).
In view thereof, there can be no dispute that the Prior Opposition’s dismissal with
prejudice was a final judgment which gives rise to claim preclusion.
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C. Same Set of Transactional Facts
There is also no genuine dispute of material fact as to the final element, that the
claims in this cancellation proceeding are based on the same set of transactional facts
as those pleaded in the Prior Opposition. Indeed, the application involved in the Prior
Opposition matured into the Registration, and here Petitioner has again asserted
priority and likelihood of confusion and fraud based on the following common
allegations:
• Petitioner alleges ownership of and prior common law rights to the mark
GRAFSTRACT for art displays, murals, and original works of art, including
commissioned works of art, commissioned murals, original works of art,
brand collaborations and sponsorship, merchandise, and art education;14
• Petitioner alleges ownership of Application Serial No. 86773499 for the
mark GRAFSTRACT;15
• Petitioner alleges a likelihood of confusion between its mark,
GRAFSTRACT, and Respondent’s mark, THE ART OF GRAFSTRACT;16
• Petitioner alleges Respondent committed fraud in the procurement of his
registration by asserting a false date of first use in his application;17
• Petitioner alleges Respondent committed fraud in the procurement of his
registration because, at the time he filed the application, Respondent knew
of Petitioner’s superior rights to an allegedly confusingly similar mark.18

Petitioner offers no argument as to why claim preclusion should not bar its fraud
claims.
As for likelihood of confusion, Petitioner contends that new facts and
circumstances, specifically expanded channels of trade, make claim preclusion
inappropriate.19 This argument is not well-taken. The identification of goods in

14 Petition to Cancel, ¶¶ 1, 19-21 (1 TTABVUE 4, 7); 4 TTABVUE 17-19, ¶¶ 4, 5, 8-11.
15 Petition to Cancel ¶ 8 (1 TTABVUE 5-6); 4 TTABVUE 18-19, ¶ 8.
16 Petition to Cancel, ¶¶ 24-27 (1 TTABVUE 8); 4 TTABVUE 22-23, ¶¶ 24-27.
17 Petition to Cancel, ¶¶ 30-32 (1 TTABVUE 9); 4 TTABVUE 17, 19, 20 ¶¶ 2, 12, 18.
18 Petition to Cancel, ¶¶ 34-46 (1 TTABVUE 9-10); 4 TTABVUE 19, 21-22, ¶¶ 13, 22.
19 6 TTABVUE 6-7.
Cancellation No. 92070333

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Registration No. 5288474 is the same as the identification in the underlying
application: “Original works of art, namely, art painted or applied directly on a wall,
ceiling or other large permanent surfaces in the nature of paintings; original art
paintings on canvas.” Neither the application nor registration includes any limitation
on the channels of trade for these goods.
When there is no limitation in a party’s identification of goods, we must presume
that the party’s goods move in all channels of trade that would be normal for such
goods. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1261 (Fed. Cir. 2011) (where there are no limitations as to channels of trade or
classes of purchasers in either the involved application or registration, we must
presume that the identified goods and services move in all channels of trade normal
for such goods or services and are available to all potential classes of ordinary
consumers of such goods or services); Morton-Norwich Prods., Inc. v. N. Siperstein,
Inc., 222 USPQ 735, 736 (TTAB 1984); see also Levi Strauss & Co. v. Abercrombie &
Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013) (“PTO
proceedings are ‘based on the content of the registration application’ and not upon
any specific use of the challenged mark in commerce.”) (quoting Mayer/Berkshire
Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1313 (Fed. Cir.
2005) (“an opposition to registration is based on the content of the registration
application.”).
There is nothing in the record to suggest that online exhibitions were outside the
customary channels of trade at the time of the Prior Opposition. To the contrary,
Cancellation No. 92070333

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Petitioner specifically pleaded in the Prior Opposition that it offered its goods online,
and that the parties’ goods travelled in the same channels of trade.20 Respondent’s
“new” use of online channels of trade is therefore not a new fact or circumstance and
has no bearing on claim preclusion.
In view thereof, we find no genuine dispute of material fact that the third element
of claim preclusion has also been met.
Accordingly, the dismissal of the Prior Opposition precludes Petitioner’s claims in
this case.
III. Conclusion
Respondent’s motion is GRANTED and the petition for cancellation is
DISMISSED with prejudice.

20 4 TTABVUE 22-23, ¶¶ 25-26.