HBP, Inc.v.Becker Designs, Inc.

Trademark Trial and Appeal Board

Jul 17, 2008

No. 92046543 (T.T.A.B. Jul. 17, 2008)

PTH
Mailed: July 17, 2008

Cancellation No. 92046543

HBP, Inc.

v.

Becker Designs, Inc.

Before Hairston, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

HBP, Inc. (“HBP”) seeks to cancel a registration owned
by Becker Designs, Inc. (“Becker”) for the mark DAYTONA
THUNDERWEAR in standard character form for “clothing,
namely, women’s blouses and shorts” in International Class
25.1
As grounds for cancellation, HBP alleges that it is a
wholly owned subsidiary of International Speedway
Corporation (“ISC”); that it is the exclusive licensee of
ISC’s family of marks comprised in whole or in part of the
term DAYTONA; that HPB has used the DAYTONA family of marks
by granting sublicenses to these marks; that since at least
as early as 1953, HBP and its predecessors-in-interest have

1 Registration No. 3105440 issued June 20, 2006. The word
DAYTONA is disclaimed apart from the mark as shown.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, Virginia 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92046543
2
used the DAYTONA family of marks in connection with the
promotion and hosting of motorcycle and other motor sports
related events; that HBP has also used the DAYTONA family of
marks on numerous goods and services, including, but not
limited to clothing, sunglasses, toys, games, smokers’
articles, and household utensils; and that Becker’s DAYTONA
THUNDERWEAR mark, when applied to Becker’s goods, so
resembles HBP’s previously used DAYTONA family of marks, as
to be likely to cause confusion under Section 2(d) of the
Trademark Act.
Becker, in its answer, denied the essential allegations
of the petition to cancel. As affirmative defenses, Becker
asserts, inter alia, that the petition is barred by the
doctrines of res judicata and collateral estoppel in view of
the Board’s decision in Opposition No. 91154068 involving
the same parties; that “the word ‘Daytona’ is primarily
geographically descriptive as applied to respondent’s mark
DAYTONA THUNDERWEAR;” and that “the word ‘Daytona’ is in
such widespread use as a prefix for business names in the
Daytona area, as to afford no distinctiveness to any party
when ‘Daytona’ is used alone.” (Answer, Affirmative Defenses
3, 4 and 6).

Cancellation No. 92046543
3
This case now comes up for consideration of
(1) Becker’s motion for summary judgment on the grounds that
(a) “the word ‘Daytona’ is primarily a geographic
descriptor, and as such [HBP] has no basis to maintain this
action” (Motion at p. 10), and (b) the petition is barred by
res judicata in view of Opposition No. 91154068; and
(2) HBP’s motion to reopen the summary judgment period to
introduce additional evidence. The motions have been fully
briefed.
We first turn to Becker’s motion for summary judgment
on the ground that the petition is barred by res judicata in
view of Opposition No. 91154068. In that opposition
proceeding, HBP (who was in the position of opposer in that
case) challenged Becker’s underlying application under
Section 2(d) of the Trademark Act. HBP alleged that it was
a wholly owned subsidiary of ISC; that it was the exclusive
licensee of ISC’s family of marks comprised in whole or in
part of the term DAYTONA; that since at least as early as
1953 HBP and its predecessors-in-interest had used the
DAYTONA family of marks in connection with the promotion and
hosting of motorcycle and other motor sports related events;
that HBP had also used the DAYTONA family of marks on
numerous goods and services, including, but not limited to
clothing, sunglasses, toys, games, smokers’ articles, and
household utensils, video games, computer game programs,
Cancellation No. 92046543
4
novelty items, and educational materials; that because of
HBP’s and its predecessors-in-interest long and extensive
use of the DAYTONA family of marks, the marks had become
famous; and that Becker’s mark DAYTONA THUNDERWEAR, when
applied to Becker’s goods, so resembled HBP’s previously
used DAYTONA family of marks, as to be likely to cause
confusion. HBP also listed over twenty-five registrations
and applications for DAYTONA marks and alleged that it was
the exclusive licensee of the marks in such registrations
and applications.
The Board, in a decision issued December 16, 2005,
dismissed the opposition, finding that HBP had failed to
establish its standing and priority of use. Specifically,
the Board noted that HBP did not introduce at trial status
and title copies of the pleaded registrations. Rather, HBP
attempted to rely on statements in Becker’s answer to make
the registrations of record. The Board found, however, that
Becker’s assertions in its answer did not constitute
admissions by Becker sufficient to make the pleaded
registrations of record in the opposition or to establish
HBP’s standing. Further, although the Board found that
Becker’s listing and discussion of the pleaded registrations
in its brief constituted an admission that the registrations
were valid and subsisting and, thus, of record, this did not
constitute an admission that HBP was the owner of the
Cancellation No. 92046543
5
registrations or that HBP was otherwise entitled to rely on
such registrations. After dismissal of the opposition, the
opposed application then matured into the registration that
is the subject of this proceeding.
In its summary judgment motion, Becker argues that the
requisite elements of the doctrine of res judicata have been
satisfied insofar as the parties in the prior opposition and
this proceeding are the same; the claims in both proceedings
are the same, namely, that Becker’s DAYTONA THUNDERWEAR
mark, when applied to “clothing, namely, women’s blouses and
shorts” is likely to cause confusion with HBP’s DAYTONA
family of marks; and the Board’s decision in the opposition
constitutes a final judgment on the merits.
HBP does not dispute that the parties and the claims in
both proceedings are the same. Rather, HBP contends that
“[b]ecause the prior opposition was dismissed on procedural
grounds and not the merits, the second element of the
doctrine of res judicata is not met.” (Brief at
10)(emphasis in original). Further, HBP argues that it
should not be penalized in this case for its failure to
properly make the pleaded registrations of record in the
opposition.
Under the doctrine of res judicata, the entry of a
final judgment “on the merits” of a claim in a proceeding
serves to preclude the relitigation of the same claim in a
Cancellation No. 92046543
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subsequent proceeding between the parties or their privies,
even where the prior judgment was the result of a default or
consent. See Lawlor v. National Screen Service Corp., 349
U.S. 322, 75 S.Ct. 865, 99 L.Ed. 1122 (1955); Chromalloy
American Corp. v. Kenneth G. Gordon Ltd., 736 F.2d 699, 222
USPQ 187 (Fed. Cir. 1984); and Flowers Industries Inc. v.
Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987). A
second suit is barred by res judicata or claim preclusion
if: (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 and should have been
litigated in the prior case. Jet, Inc. v. Sewage Aeration
Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000).
Upon review of the notice of opposition in Opposition
No. 91154068 and the petition to cancel herein, we conclude
that the doctrine of res judicata is applicable in this
proceeding. There is no dispute that the same parties have
been involved in the respective proceedings and the
likelihood of confusion claims are essentially identical in
each case. Further, a final judgment on the merits was
issued in the opposition proceeding in the December 16, 2005
decision dismissing the opposition.
HBP’s contention that the final determination issued in
the opposition proceeding does not constitute a judgment on
Cancellation No. 92046543
7
the merits is not well taken. As noted, inter alia, courts
have long held that even default judgments give rise to res
judicata. See International Nutrition Co. v. Horphag
Research Ltd., 55 USPQ2d 1492 (Fed. Cir. 2000) and cases
cited therein. See generally Wright, Miller & Cooper, 18 A
Federal Practice and Procedure Civil 2d § 4440 (1999). As
explained above, the Board found that HBP failed to prove
its standing and priority of use, a finding which
constituted a decision on the merits of the case.
Finally, HBP’s contention that it should not be
penalized in this case for its failure to properly make the
pleaded registrations of record in the opposition
is without merit. HBP was represented by counsel in the
opposition and counsel should have known of the consequences
of the failure of HBP to prove its standing and priority of
use.
In view of the foregoing, Becker’s motion for summary
judgment on the ground that the petition is barred by res
judicata is hereby granted.2
Decision: The petition is hereby dismissed.

2 Under the circumstances, HBP’s motion to reopen the summary
judgment period is moot.