Geoffrey, LLCv.Hair Are Us, Inc.

Trademark Trial and Appeal Board

Apr 24, 2017

No. 91221951 (T.T.A.B. Apr. 24, 2017)

mbm Mailed: April 24, 2017

Opposition No. 91221951
Geoffrey, LLC

v.
Hair Are Us, Inc.

Before Quinn, Wolfson, and Shaw,
Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of (1) Geoffrey,
LLC’s (“Opposer”) motion for summary judgment on the ground of res judicata based
on the Board’s entry of default judgment against Hair Are Us, Inc. (“Applicant”) in a
prior proceeding, i.e., Opposition No. 91210675 (the “Prior Proceeding”); (2)
Applicant’s motion for Fed. R. Civ. P. 56(d) discovery; (3) Applicant’s motion to cure
its request for discovery; and (4) Opposer’s motion to strike.
On November 18, 2016, Opposer filed a motion for summary judgment. On
November 29, 2016, Applicant filed a motion for discovery pursuant to Fed. R. Civ. P.
56(d). On December 13, 2016, Opposer filed a response brief titled “reply to
Applicant’s opposition to Opposer’s motion for summary judgment and Applicant’s
request for discovery to respond to summary judgment.” In Opposer’s response,
Opposer argued that Applicant failed to provide an affidavit in support of its motion
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
Opposition No. 91221951

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for Fed. R. Civ. P. 56(d) discovery. On January 5, 2017, Applicant then filed a motion
to “cure” its November 29, 2016 motion by including an affidavit in support of its
request for Fed. R. Civ. P. 56(d) discovery. On January 31, 2017, Opposer moved to
strike Applicant’s motion to cure. Finally, Applicant filed a response to Opposer’s
motion for summary judgment on the merits on February 13, 2017.1
Because Applicant filed a substantive response to Opposer’s summary judgment
motion, its request for Fed. R. Civ. P. 56(d) discovery is DENIED as moot. See TBMP
§ 528.06 (Jan. 2017); Bad Boys Bail Bonds, Inc. v. Yowell, 115 USPQ2d 1925, 1930
(TTAB 2015). Accordingly, Applicant’s motion to cure its request for Fed. R. Civ. P.
56(d) discovery and Opposer’s motion to strike Applicant’s motion to cure are also
both DENIED as moot. The Board now turns to Opposer’s motion for summary
judgment.
I. Background of Prior Proceeding
As res judicata forms the basis of Opposer’s motion for summary judgment, we
must necessarily review the circumstances and outcome of the Prior Proceeding.
In the Prior Proceeding, Opposer opposed registration of Applicant’s mark HAIR
ARE US and Design, as shown below, for: (1) “Hair care preparations; Hair

1 The Board notes that Applicant’s certificate of service attached to its February 13, 2017
response indicates that service was made via First Class mail. Pursuant to Trademark Rule
2.119(b), as amended effective January 14, 2017, absent an agreement by the parties, service
of all papers must be made via email. Moreover, the parties agreed to service via email during
the discovery conference, as set forth in the Board’s July 14, 2015 order memorializing the
discovery conference. It is unclear if the parties stipulated to service by First Class mail. The
Board exercises its discretion to consider Applicant’s January 31, 2017 response to Opposer’s
motion for summary judgment on the merits; however, in the future the parties shall serve
papers by email unless they clearly stipulate, or show that they have stipulated, to service
by other means, such as by First Class mail.
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conditioners; Hair relaxers; Hair relaxing preparations; Hair shampoos and
conditioners; Hair styling preparations” in International Class 3; (2) “Hair
extensions; Hair pieces and wigs; Wigs, hairpieces, and add-in and add-on hair
accessories constructed primarily of synthetic and/or human hair” in International
Class 26; and (3) “Hair salon services; Hair salon services, namely, hair cutting,
styling, coloring, and hair extension services” in International Class 44:2

On May 16, 2013, Opposer filed a notice of opposition opposing registration of
Applicant’s HAIR ARE US and Design mark on the grounds of likelihood of confusion
and dilution. Applicant failed to file an answer by the deadline set forth in the Board’s
institution order. Accordingly, a notice of default was issued on July 18, 2013, and
Applicant was allowed until thirty days from the mailing date of the notice of default
in which to show cause why judgment by default should not be entered against
Applicant. After Applicant failed to respond to the notice of default within the time
specified, the Board entered default judgment against Applicant and sustained the
opposition on September 10, 2013. The judgment was not appealed and is final.

2 Application Serial No. 85723673, filed on September 7, 2012, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging June 15,
2011 as the date of first use and July 13, 2011 as the date of first use in commerce in each
International Class.
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II. Background of Current Proceeding
Applicant seeks to register the mark HAIR ARE US and Design, as shown below,
for “Hair extensions; add-in and add-on hair accessories constructed primarily of
synthetic and/or human hair” in International Class 26:3

On May 13, 2015, Opposer filed a notice of opposition opposing registration of
Applicant’s HAIR ARE US and Design mark on the grounds of likelihood of confusion
and dilution. In its answer, Applicant denied the salient allegations in the notice of
opposition.
III. Opposer’s Motion for Summary Judgment
Opposer contends that as a consequence of the default judgment entered against
Applicant in the Prior Proceeding, Applicant’s current mark is barred from
registration under the doctrine of res judicata. As an initial matter, the Board notes
that Opposer did not plead res judicata in its notice of opposition. A party may not
obtain summary judgment on an issue that has not been pleaded. See Fed. R. Civ. P.
56(a); TBMP § 528.07(a). However, the Board may deem the pleadings to have been
amended, by agreement of the parties, to allege the matter if the parties, in briefing
a summary judgment motion, have treated the unpleaded issue on its merits, and the

3 Application Serial No. 86222809, filed on March 17, 2014, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging January 31,
2011 as both the date of first use and the date of first use in commerce.
Opposition No. 91221951

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nonmoving party has not objected to the motion on the ground that it is based on an
unpleaded issue. Here, Applicant has treated the unpleaded issue on its merits and
has not objected to the motion on the ground that it is based on an unpleaded issue.
The Board accordingly deems Opposer’s notice of opposition to have been amended to
allege res judicata as grounds for opposition. See TBMP § 528.07(a); Fed. R. Civ. P.
15(a); see also Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1772 (TTAB
1994). The Board deems Opposer’s allegation of res judicata to be denied.
In support of its motion, Opposer submitted, inter alia, the following: (1) the
notice of opposition filed in the Prior Proceeding; and (2) the Board’s September 10,
2013 order in the Prior Proceeding entering default judgment against Applicant.
Opposer argues that (1) the parties in both proceedings are identical, (2) a final
judgment on the merits was entered in the Prior Proceeding, and (3) the Prior
Proceeding involves the same transactional facts as the current proceeding. Opposer
argues that the two proceedings involve the same transactional facts, because the
claims are identical, the marks are identical, and the goods in the current proceeding
are fully encompassed by the identification of goods at issue in the Prior Proceeding.
In response to Opposer’s motion for summary judgment, Applicant submitted,
inter alia, print-outs of USPTO records for Applicant’s Serial No. 86222809. Applicant
concedes that the parties in the Prior Proceeding are identical to the parties in this
proceeding. Applicant contends, however, that (1) entry of default judgment does not
constitute a final judgment on the merits and (2) the Prior Proceeding does not
involve the same transactional facts as the current proceeding. Applicant contends
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that the two proceedings involve different transactional facts, because the
identification of goods are not identical, the Examining Attorneys used different
search codes in the prosecution of each application, and the two applications each
claim different first use dates.
IV. Summary Judgment Standard
Summary judgment is appropriate where the movant shows that there is no
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). A party asserting that a fact cannot be or is genuinely
disputed must support its assertion by either (1) citing to particular parts of materials
in the record, or (2) showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment carries the burden of proof in regard to its
motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of fact, but to determine if there
are any genuine disputes of material fact to be tried. See TBMP § 529.01 and cases
cited therein. When the moving party has supported its motion with sufficient
evidence that, if unopposed, indicates there is no genuine dispute of material fact, the
burden then shifts to the non-moving party to demonstrate the existence of a genuine
dispute of material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP,
92 USPQ2d 1537, 1540 (TTAB 2009).
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The nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed facts, must be viewed
in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great
Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
V. Decision
Initially, we note that there is no question that Opposer has standing to bring
this action. Opposer has attached copies of its notice of opposition and the Board’s
order in the Prior Proceeding in support of its motion for summary judgment. The
parties do not dispute that Opposer was the plaintiff in the Prior Proceeding or that
judgment was entered against Applicant as defendant in the Prior Proceeding. See
Domino’s Pizza, Inc. v. Little Caesar Enters., Inc., 7 USPQ2d 1359, 1363 (TTAB 1988)
(finding standing where opposer was defendant in a civil action between the parties
regarding the same mark). In view thereof, we find that there is no genuine dispute
of material fact as to Opposer’s standing. Further, Applicant has not challenged
Opposer’s standing.
We turn next to the merits of Opposer’s motion. The form of res judicata involved
in this proceeding is claim preclusion, because the pleaded grounds of likelihood of
confusion and dilution were not litigated and decided in the Prior Proceeding, and
issue preclusion cannot arise when issues are not tried and necessary to a final
decision. See Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.3d 1368, 79
Opposition No. 91221951

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USPQ2d 1376, 1378 (Fed. Cir. 2006). For the reasons explained below, we find that
the doctrine of claim preclusion applies to this case.
Under the doctrine of claim preclusion, the entry of a final judgment “on the
merits” of a claim (i.e., the cause of action) in a proceeding serves to preclude the
relitigation of the same claim in a subsequent proceeding between the parties or their
privies, even in those cases where the prior judgment was the result of a default or
consent. See Lawlor v. Nat’l Screen Service Corp., 349 U.S. 322, 75 S. Ct. 865, 99 L.
Ed. 1122 (1955); Chromalloy Am. Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222
USPQ 187 (Fed. Cir. 1984); Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ2d
1580, 1583 (TTAB 1987).
For claim preclusion to be applied, the following factors must be present:
(1) the parties (or their privies) are identical;
(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 Am. Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
In this case, the parties do not dispute that the present opposition involves the
same parties as the Prior Proceeding. Accordingly, no genuine issue of material fact
exists regarding the first factor of the claim preclusion analysis.
With regard to the second factor, there is no genuine dispute of material fact that
there has been an earlier final judgment on the merits of a claim. “A judgment of a
court having jurisdiction of the parties and of the subject matter operates as res
judicata, in the absence of fraud or collusion, even if obtained upon a default.” Morris
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v. Jones, 329 U.S. 545, 550-51, 67 S. Ct. 451, 91 L. Ed. 468 (1947) (quoting Riehle v.
Marolies, 279 U.S. 218, 225, 49 S. Ct. 310, 73 L. Ed. 669 (1929)); Int’l Nutrition Co. v.
Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000)
(“default judgments can give rise to res judicata”); Bass Anglers Sportsman Soc’y of
Am., Inc. v. Bass Pro Lures, Inc., 200 USPQ 819, 822 (TTAB 1978) (“[T]he application
of a legal doctrine which would be appropriate to a judgment after trial is equally
appropriate to a judgment by default.”); Wells Cargo, Inc. v. Wells Cargo, Inc., 197
USPQ 569, 571 (TTAB 1977), aff’d, 606 F.2d 961, 203 USPQ 564 (CCPA 1979) (finding
that for preclusion to apply, default “is all that is necessary to support the
judgment.”). Care must be taken to ensure fairness in applying the claim preclusive
effect of res judicata, however. See Parklane Hosiery Co. v. Shore, 439 U.S. 322, 327
n.5, 99 S. Ct. 645, 58 L. Ed. 2d 552 (1979).
Applicant argues that the present proceeding is analogous to the facts before the
Court of Appeals for the Federal Circuit in Sharp, 448 F.3d 1368. The Board
disagrees. In Sharp, the Federal Circuit refused to apply the doctrine of claim
preclusion. Significantly, not only were the marks at issue different, the court noted
that the applicant had filed its two applications within a few months of each other
and the second application was filed prior to the entry of judgment in the prior
proceeding. The court therefore agreed with the Board that the applicant could choose
to defend only one of the pending applications and that its second application was not
an attempt to evade an earlier judgment. Here, Applicant filed its second application
for the identical mark approximately six months after the entry of default judgment
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in the prior proceeding. As a result, the Board does not find that any of the facts at
issue in this proceeding warrant excusing the application of the doctrine of claim
preclusion to the extent the remaining elements are met. Thus, there is no genuine
dispute of material fact that there was a final decision on the merits in the Prior
Proceeding.4
With respect to the third factor, there is no genuine dispute of material fact that
the claims asserted by Opposer are identical to those Opposer asserted in the Prior
Proceeding, i.e., likelihood of confusion and dilution. There is also no genuine dispute
of material fact that the marks are identical. Applicant contends that the two
proceedings nevertheless involve different transactional facts because (1) the design
codes used by the Examining Attorney during the prosecution of the two applications
are not identical, (2) the claimed dates of first use are not identical, and (3) the goods
are not identical. We address each of Applicant’s arguments in turn.
The fact that the Examining Attorneys used different design codes in conducting
their respective search of Office records does not create a genuine dispute of material
fact that the two proceedings involve the same transactional facts. There is no dispute
that the marks are identical. Design codes are used by Examining Attorneys merely
to facilitate searches during the prosecution of applications filed with the USPTO,
and are entirely irrelevant to the claims and defenses at issue in inter partes

4 Applicant also argues that failure to apply preclusive effect to the Prior Proceeding would
not prejudice Opposer and that Applicant has a meritorious defense. 31 TTABVUE at 14.
Even assuming, arguendo, that Applicant’s assertions are correct, neither raises a genuine
dispute of material fact that there was a final judgment on the merits in the Prior
Proceeding.
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proceedings that may be brought following publication. The claims herein as well as
any of the claims at issue in the Prior Proceeding are not impacted by the selection of
design codes relative to each mark. Cf. In re Guitar Straps Online, LLC, 103 USPQ2d
1745, 1749 (TTAB 2012) (noting that the use of design search codes are “purely an
administrative practice” that had “no bearing” on the Board’s determination of
whether a change in the mark constituted a material alteration).
Similarly, the different first use dates do not create a genuine dispute of material
fact that the two proceedings involve the same transactional facts. In the Prior
Proceeding, Applicant’s HAIR ARE US and Design application claimed July 13, 2011
as its date of first use in commerce. In the current proceeding, Applicant’s at issue
HAIR ARE US and Design application claims January 31, 2011 as its date of first use
in commerce. In this proceeding, Opposer alleges use of its “R” US marks since at
least as early as 1960. 1 TTABVUE at 21. The fact that the two applications at issue
each claimed different dates of first use in commerce—less than six months apart and
both subsequent to Opposer’s alleged priority date—does not alter the material
transactional facts between the Prior Proceeding and the instant proceeding so as to
preclude the application of the doctrine of claim preclusion.
Finally, the Board finds that the differences in the identification of goods in each
application does not create a genuine dispute of material fact that the two proceedings
involve the same transactional facts. Although the identification of goods in the Prior
Proceeding were broader than those in the current proceeding, each of the goods
identified in Applicant’s second application appeared, in identical form, in the earlier
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filed application. Specifically, both applications claimed use in connection with “Hair
extensions” and “add-in and add-on hair accessories constructed primarily of
synthetic and/or human hair” in International Class 26.
Claim preclusion is applicable, “not only with respect to the identical description
of goods as had been previously litigated, but with respect to all goods that could be
said to be encompassed by that description of goods….” General Electric Co. v.
Raychem Corp., 204 USPQ 148, 150 (TTAB 1979) (citing Toro Co. v. Hardigg Indus.,
Inc., 549 F.2d 785, 193 USPQ 149 (CCPA 1977)). Claim preclusion applies where, as
here, the goods or services in the second filed application are completely subsumed
by the goods or services in the earlier filed application. See J. I. Case Co. v. F.L.
Indus., Inc. 229 USPQ 697, 700 (TTAB 1986) (finding that the doctrine of claim
preclusion barred a second application for the same mark where the goods in the
second application were “fully encompassed by those claimed in the prior
proceeding.”). Thus, there is no genuine dispute of material fact that the goods at
issue in this proceeding are identical to a portion of the goods at issue in the Prior
Proceeding.
In sum, there is no genuine dispute of material fact that the requisite elements
of res judicata, or claim preclusion, have been satisfied. In view thereof, Opposer’s
motion for summary judgment is GRANTED. Judgment is hereby entered against
Applicant, the opposition is sustained, and registration of Applicant’s mark is
refused.