GMA Accessories, Inc.v.Dorfman-Pacific Co. Dorfman-Pacific Co. v. GMA Accessories, Inc.

Trademark Trial and Appeal Board

Jun 7, 2013

No. 91203351 (T.T.A.B. Jun. 7, 2013)

BUO Mailed: June 7, 2013

Opposition No. 91196926

GMA Accessories, Inc.

v.

Dorfman-Pacific Co.

Before Cataldo, Bergsman and Wolfson, Administrative
Trademark Judges.

By the Board:
GMA Accessories, Inc. (“opposer”) filed its notice of
opposition against application Serial No. 779656161 for the
mark CAPELLI STRAWORLD, in standard character form, for
“handbags; tote bags,” in Class 18, and “hats,” in Class
25, on October 14, 2010, alleging: 1) likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C.
1052(d); 2) dilution under Trademark Act Section 43(c), 15
U.S.C. 1125(c); 3) fraud, based upon applicant’s failure to
disclose opposer’s prior ownership of its marks; and 4)
that applicant is estopped from filing the application due
to the res judicata effect of a judgment against

1 Application Serial No. 77965616, filed March 23, 2010, based on
use in commerce. Trademark Act Section 1(a), 15 U.S.C. 1051(a).

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91196926

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applicant’s predecessor-in-interest in a prior cancellation
proceeding. Opposer pleaded ownership of five
registrations for the mark CAPELLI, all in standard
character form, for use in connection with clothing,
jewelry, cosmetics, hair accessories, hair ornaments, and
blankets and linens.2
Dorfman-Pacific Co. (“applicant”) filed its answer,
November 23, 2010, denying all of opposer’s salient
allegations, and asserting a counterclaim seeking
cancellation of all of opposer’s pleaded registrations on
the grounds that: 1) opposer’s marks are descriptive and
generic under Trademark Act Section 2(e)(1), 15 U.S.C
1052(e)(1); 2) opposer has abandoned use of its marks in
connection with the claimed goods; and 3) opposer committed
fraud in the procurement of its registrations based upon
its non-use of the mark at the time statements of use were
filed in the underlying applications.
Opposer then filed a motion on December 7, 2010, for
summary judgment on its res judicata claim. Opposer
contended in its motion for summary judgment that the

2 Registration Nos. 3241182, 3241184, 3248875, 3258734, and
3322312.

Opposition No. 91196926

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cancellation of Reg. No. 2670642,3 owned by applicant’s
predecessor-in-interest, Cappelli Straworld, Inc.,4
compelled entry of judgment against applicant in this
proceeding.5 The Board, in an order dated April 4, 2011,
denied opposer’s motion for summary judgment, citing
genuine disputes of material fact as to the similarity of
the marks, and relatedness of the goods at issue with
regard to whether this proceeding is based on the same set
of transactional facts as the prior cancellation.6
On June 28, 2011, opposer filed application Serial No.
85341679, for the mark CAPELLI, based upon use in commerce
under Trademark Act Section 1(a), for various types of bags
and pet clothing.7 Applicant filed a notice of opposition

3 Reg. No. 2670642 for the mark CAPPELLI for “handbags” in
International Class 18 and “hats” in International Class 25;
cancelled October 24, 2006.

4 Dorfman-Pacific Co. acquired the mark CAPPELLI STRAWORLD, INC.
and the company’s domain name on June 19, 2009. The Board also
noted in its April 4, 2011 order that applicant has not attempted
to withdraw the admission in its answer that it in fact acquired
the company Cappelli Straworld, Inc.

5 Cancellation No. 92044972. In that case, the Board sustained
the cancellation of Registration No. 2670642 based upon
registrant, Cappelli Straworld, Inc.’s, failure to comply with a
Board order granting petitioner, GMA Accessories, Inc.’s, motion
to compel discovery responses.

6 Opposer’s request for reconsideration, filed April 18, 2011, was
also denied.

7 The identification of goods lists: “all purpose sport bags;
all-purpose carrying bags; beach bags; dog apparel; dog clothing;
dog coats; dog parkas; duffel bags; evening handbags; fashion
Opposition No. 91196926

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against the application alleging that: 1) opposer’s
applied-for mark, if registered, would cause a likelihood
of confusion with its pleaded registration for the mark
CAPPELLI STRAWORLD, INC.;8 2) opposer abandoned use of its
mark in connection with the goods claimed in the
application; and 3) opposer’s mark was not in use when
opposer filed its application claiming use of the mark in
commerce.9 In lieu of filing an answer, opposer filed a
motion to dismiss the opposition for failure to state a
claim upon which relief may be granted under Fed. R. Civ.
P. 12(b)(6), asserting that applicant could not in one
proceeding assert that the term CAPPELLI is generic for
opposer’s goods, such as clothing, hair accessories, and
hair ornaments, and in another claim exclusive rights to
use the term as a trademark in connection with tote bags,
handbags or hats.
The Board consolidated the two proceedings into the
present opposition and subsequently suspended the

handbags; flight bags; garments for pets; luggage; multi-purpose
purses; pet clothing; pocketbooks; pouches made from imitation
leather; purses; travel bags.”

8 Registration No. 2326188, for “tote bags and handbags made of
straw and rayon” in International Class 018, and “women’s hats
made of straw, felt, velvet and cotton” in International Class
025.

9 Opposition Proceeding No. 91203351.

Opposition No. 91196926

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consolidated proceeding, including consideration of
opposer’s motion to dismiss, pending the outcome of a
related federal civil action filed by opposer against
applicant and involving the same marks.10
Opposer’s complaint in the civil action alleged: 1)
infringement of its federally registered trademarks; 2)
false designation of origin; 3) violation of the New York
anti-dilution statute; 4) unfair competition; 5) an appeal
of the Board’s denial of opposer’s motion for summary
judgment on its res judicata claim; and 6) that applicant’s
registration for the mark CAPPELLI STRAWORLD, INC. should
be cancelled based upon applicant’s abandonment of the
mark. Applicant denied those allegations, and in keeping
with the parties’ litigious practice during this
proceeding, asserted a counterclaim alleging: 1)
infringement of its federally registered trademark; 2)
false designation of origin; 3) common law trademark
infringement; 4) unfair competition; and 5) that GMA’s
registered marks should be cancelled based upon the
descriptiveness and genericness of the marks, GMA’s
abandonment of those marks in connection with the claimed
goods, and opposer’s fraudulent statements in its

10 GMA Accessories, Inc. v. Dorfman-Pacific Co., Inc., Case No.
1:11-cv-03731-KBF (SDNY 2012).
Opposition No. 91196926

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application documents stating that the marks were in use,
when in fact they were not in use on the dates the
applications were filed or statements of use were
submitted.
The parties filed cross-motions for summary judgment
on all of opposer’s claims, and on November 5, 2012, the
district court issued its ruling finding that opposer
failed “to raise a triable issue of fact as to whether
Dorfman has abandoned the ‘Cappelli Straworld, Inc.’ mark.”
Memorandum & Order, p. 8. The court also noted that “the
record is devoid of evidence that Dorfman ever abandoned
the mark (i.e. there is uncontroverted evidence of
uninterrupted usage).” Id. at 3 n.1. The court also found
that “[a]s is clear from the record … Dorfman is the senior
user.” Id. at 8. As to the infringement claim, the court
found that “[t]he marks use different words that mean
different things,” and that “[t]he record is entirely
devoid of any evidence of likelihood of confusion between
the two marks.” Id. at 9.
Ruling in favor of applicant on the parties’ cross-
motions for summary judgment, the court found that
opposer’s failure to prove likelihood of confusion meant
that its infringement claim, false designation of origin
claim, unfair competition claim, and anti-dilution claim
Opposition No. 91196926

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must also fail.11 See Id. at 10. The court granted
applicant’s motion on all grounds, including abandonment
and denied opposer’s motion on all grounds asserted. On
December 6, 2012, the court issued a supplemental order,
dismissing applicant’s counterclaims without any discussion
of the merits of those claims.
Now before the Board is opposer’s motion, filed
December 14, 2012, captioned as a “Request to Lift Stay and
Dismiss Opposition Proceeding 91203351 as well as the
Counterclaims in Consolidated Case 91196926.” On December
28, 2012, applicant filed a paper captioned as a “Notice of
Final Disposition of [the] Federal Case in Favor of
Dorfman-Pacific and Request for Dismissal of Proceedings.”
Additionally, applicant filed on January 3, 2013, another
paper captioned as a “Brief in Response to [opposer’s]
Motion to Reopen Discovery.”12 We construe applicant’s
argument that the “Board should … dismiss the present
consolidated proceedings in their entireties,” as a

11 In a previous order denying opposer’s motion for summary
judgment the court dismissed opposer’s fourth cause of action,
its appeal of the Board’s denial of summary judgment, for lack of
jurisdiction.

The court also determined that opposer was not entitled to a
declaration canceling the CAPPELLI STRAWORLD, INC. registration.

12 Inasmuch as applicant’s submissions appear to present similar
arguments, we will consider them as a single submission in
response to opposer’s motion.

Opposition No. 91196926

8
concession of its claims in Opposition No. 91203351 and its
counterclaim in 91196926. Accordingly, opposer’s motion to
sever and dismiss Opposition No. 91203351 is GRANTED as
conceded and that opposition is DISMISSED.13 Additionally,
applicant’s counterclaims in Opposition 91196926 are
DISMISSED.
A. The Suspension
The parties finally appear to agree on at least one
issue in this proceeding-the stay of the Board proceeding
should be lifted and a determination should be rendered.
Therefore, opposer’s motion to lift the stay of the
proceeding is GRANTED, and Opposition No. 91196926 is
hereby resumed.
B. The Effect of the Federal Court Decision
Under the principles of issue preclusion or collateral
estoppel a federal court determination of a trademark issue
normally has a binding effect in subsequent proceedings
before the Board involving the same parties and issues.
See Jet Inc. v. Sewage Aeration Sys., 55 USPQ2d 1854 (Fed.
Cir. 2000); Midland Cooperatives, Inc. v. Midland Int’l
Corp., 421 F.2d 754, 164 USPQ 579 (CCPA 1970); In re Alfred

13 Accordingly, Opposition 91203351 is no longer consolidated with
91196926. No further filings for that proceeding should be filed
in this proceeding. Judgment shall be entered in that proceeding
separately pursuant to the Board’s July 9, 2012, consolidation
order. Consequently, opposer’s motion to dismiss is moot and
will be given no further consideration.
Opposition No. 91196926

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Dunhill Ltd., 224 USPQ 501 (TTAB 1984); Societe E.
Blanchard Et Fils v. Blanchard Imp. & Distrib. Co., Inc.,
150 USPQ 221 (TTAB 1966), aff’d 402 F.2d 797, 159 USPQ 520
(CCPA 1968); De Costa v. Columbia Broad. Sys., Inc., 498
F.2d 1383, 182 USPQ 169 (CCPA 1974); Whopper-Burger, Inc.
v. Burger King Corp., 171 USPQ 805 (TTAB 1971). Court
decisions held binding on the Board include findings
regarding the likelihood of confusion between marks. See
Midland Cooperatives, Inc., 164 USPQ at 583; Wella Corp. v.
Cal. Concept Corp., 194 USPQ 419, 423 (CCPA 1977).
Collateral estoppel requires four factors: 1) identity
of the issues in a prior proceeding; 2) the issues were
actually litigated; 3) the determination of the issues was
necessary to the resulting judgment; and 4) the party
defending against preclusion had a full and fair
opportunity to litigate the issues. See Jet Inc., 55
USPQ2d at 1859.
The likelihood of confusion issue presented here is
identical to that presented in the civil suit, involving
the same marks and the same parties. The issue of
likelihood of confusion was necessary in the determination
of the infringement suit brought by opposer. Further, not
only did opposer have a “full and fair” opportunity to
litigate the issue, but opposer in fact brought the suit
Opposition No. 91196926

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and filed the motion for summary judgment that led to the
court’s discussion and final judgment on the issue.
In its determination of the likelihood of confusion
issue, the federal court took into account:
1) applicant’s priority of use, finding that the
record was clear that “Dorfman is the senior
user.” Memorandum & Order, p. 8;

2) the overall similarity and connotation of the
marks, finding that “the marks use different
words that mean different things.” Id. at 9;
and

3) actual confusion, finding, “[t]he record is
entirely devoid of any evidence of likelihood
of confusion between the two marks.” Id. at
9.

While the federal court listed the eight factors
considered under Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492 (2d Cir. 1961), which includes elements
outside the scope of a Board proceeding, the court
concluded that there was no “need to review the individual
factors,” in view of its findings that applicant was the
senior user, the marks are different and have different
meanings, and that there was no evidence of actual
confusion. Memorandum & Order, p. 9. Therefore, the
court’s analysis regarding likelihood of confusion and its
ultimate determination that there was in fact no likelihood
of confusion does not extend outside the scope of the
thirteen Du Pont factors normally considered by this Board,
Opposition No. 91196926

11
which include the similarity of the marks, the connotation
of the marks, the relatedness of the goods or services
involved and any actual confusion. See In re E. I. du Pont
de Nemours & Co., 177 USPQ 563 (CCPA 1973); Cf. Jet Inc.,
55 USPQ2d 1854.
Where the findings of the federal court regarding
likelihood of confusion are binding on the Board, the
parties may not now relitigate the likelihood of confusion
issue before the Board. Accordingly, opposer’s claim of
likelihood of confusion is DISMISSED.
In view of the court’s determination regarding the
similarity of the marks and priority, opposer’s claims of
dilution and fraud in this proceeding must also fail.
Dilution fails because dilution cannot be proven where it
has been determined that the marks are not similar. See 15
U.S.C. § 1125(c)(“arises from the similarity between a mark
or trade name and a famous mark…”). See also Citigroup
Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1667
(TTAB 2010)(“dilution is defined by identical or
substantially similar marks.”), aff’d, 98 USPQ2d 1253 (Fed.
Cir. 2011); Carefirst of Md. Inc. v. Firsthealth of the
Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005); Toro Co. v.
ToroHead, Inc., 61 USPQ2d 1164 (TTAB 2001). Fraud cannot
lie because applicant has been found to be the senior user
Opposition No. 91196926

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and was under no obligation to disclose opposer’s junior
use. See Marshall Field & Co. v. Mrs. Fields Cookies, 11
USPQ2d 1355 (TTAB 1989), citing Rosso and Mastracco, Inc.
v. Giant Food Inc., 219 USPQ 1052 (Fed. Cir. 1983)( “a
senior user ordinarily need not identify junior users in
the oath.”). Accordingly opposer’s claims of dilution and
fraud are also DISMISSED.
C. Opposer’s Res Judicata Claim
Left for consideration is opposer’s claim that the
subject application is barred by the doctrine of res
judicata. Under the doctrine of res judicata or claim
preclusion, “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., 55 USPQ2d
at 1856 (quoting Parklane Hosiery Co. v. Shore, 439 U.S.
322, 326 n. 5 (1979)). “A default judgment can operate as
res judicata in appropriate circumstances.” Id. at 1378
(citing Morris v. Jones, 329 U.S. 545, 550-51 (1947)).
However, “[f]or claim preclusion based on a judgment in
which the claim was not litigated, there must be: 1) an
identity of the parties or their privies, 2) a final
judgment on the merits of the prior claim, and 3) the
second claim must be based on the same transactional facts
as the first and should have been litigated in the prior
Opposition No. 91196926

13
case.” Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 79
USPQ2d 1376, 1378 (Fed. Cir. 2006).
Where, as here, the plaintiff raises claim preclusion
in support of its own claim, rather than to preclude a
claim against it, we must examine the use of res judicata
“carefully to determine whether it would be unfair to the
defendant.” Id. at 1378-79.
When applying res judicata to bar causes of
action that were not before the court in the
prior action, due process of law and the interest
of justice require cautious restraint. Restraint
is particularly warranted when the prior action
was dismissed on procedural grounds.

Id. at 1379.

Following the Federal Circuit’s reasoning in Sharp
Kabushiki Kaisha, we find that the dissimilarity of
applicant’s previously cancelled mark with its mark at
issue herein, combined with the fact that the issues of
likelihood of confusion and dilution were not litigated in
the defaulted cancellation proceeding precludes barring the
present application based upon res judicata. 79 USPQ2d at
1379-80.
Accordingly, opposer’s motion for judgment on the
ground of res judicata is DENIED. Inasmuch as we
previously dismissed herein opposer’s grounds for
opposition alleging likelihood of confusion, dilution and
Opposition No. 91196926

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fraud, no grounds remain for the opposition, the proceeding
is DISMISSED and judgment is entered in favor of applicant.