May Flower International, Inc.v.Teh-San Sun

Trademark Trial and Appeal Board

Sep 24, 2020

92072841 (T.T.A.B. Sep. 24, 2020)

September 24, 2020

Cancellation No. 92072841

May Flower International, Inc.

v.
Teh-San Sun

Before Cataldo, Shaw and Larkin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

May Flower International, Inc. (“Petitioner”) seeks to cancel Registration No.
4082684 on the ground of fraud, pursuant to Trademark Act Section 14(3). 1
TTABVUE.1 See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).
Teh-San Sun (“Respondent”) filed a motion on January 6, 2020 to dismiss this
proceeding under the doctrine of res judicata. 5 TTABVUE. The motion was filed
concurrently with Respondent’s answer and is fully briefed. 4 TTABVUE. Although
Respondent’s motion to dismiss relies on Fed. R. Civ. P. 12(b)(6), the substance of the

1 Citations to the briefs and record throughout this decision reference “TTABVUE,” the
Board’s online docketing system. The number preceding “TTABVUE” corresponds to the
docket entry number(s), and any number(s) following “TTABVUE” refer to the page
number(s) of the docket entry where the cited materials appear. See, e.g., Turdin v. Trilobite,
Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).

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. 92072841

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motion rests on the doctrine of res judicata following a Board decision, dated April
22, 2019, denying Cancellation No. 92070528 (filed by “Harry Li” against
Respondent), with prejudice. 5 TTABVUE 57.
Because Respondent’s motion necessarily rests on matters outside the pleadings,
i.e., the order dismissing with prejudice the referenced prior proceeding, the Board
issued an order on May 21, 2020 construing the motion to dismiss as a motion for
summary judgment. Fed. R. Civ. P. 12(b). 9 TTABVUE. See TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 503.04 (2020) and cases cited
therein. The Board order further provided the parties an opportunity to present
additional material relevant to the motion for summary judgment in regard to
whether the doctrine of claim or issue preclusion is applicable to this proceeding,
pursuant to Fed. R. Civ. P. 56 and Trademark Rule 2.127(e), 37 C.F.R. § 2.127(e). 9
TTABVUE. The parties submitted supplemental evidence and briefing with regard
to the motion. 7-11 TTABVUE.
This case now comes before the Board for consideration of Respondent’s motion
for summary judgment. We have carefully considered all of the parties’ arguments,
presume the parties’ familiarity with their arguments and the record and do not
recount the facts or arguments here except as necessary to explain this decision. See
Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
Entry of summary judgment is appropriate only where there are no genuine
disputes as to any material facts, thus allowing the case to be resolved as a matter of
Cancellation No. 92072841

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law. Fed. R. Civ. P. 56(a). A factual dispute is genuine if, on the evidence of record, a
reasonable fact finder could resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471,
1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed
in a light favorable to the non-movant, and all justifiable inferences are to be drawn
in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board
may not resolve genuine disputes as to material facts on summary judgment; it may
only ascertain whether genuine disputes as to material facts exist. See Lloyd’s Food
Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
I. Res Judicata - Claim Preclusion
Res judicata is the earlier name for the judicial doctrine now generally known as
claim preclusion. See Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.4
(TTAB 2015) (citing Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 110 USPQ2d
1261, 1263 (Fed. Cir. 2014)). Under the doctrine of 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. v. Sewage Aeration Sys., 55 USPQ2d 1854,
1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5
(1979)).
For claim preclusion to apply, therefore, there must be:
(1) identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
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(3) a second claim based on the same set of transactional facts as the first.

Id.
A. First Requirement – Identity of Parties
Respondent alleges, inter alia, that Harry Li, the petitioner in prior Cancellation
No. 92070528, acted on behalf of Petitioner herein, shares an address with Petitioner
and utilized an email address associated with Petitioner. 5 TTABVUE 4. Respondent
further alleges Harry Li filed the prior cancellation and other TTAB proceedings in
retaliation for a civil suit brought by Respondent against Petitioner, in addition to a
counterclaim in the civil suit. 5 TTABVUE 4-5. Respondent also alleges that the
metadata underlying documents filed by Harry Li, Petitioner and another party all
were created by an individual named “austin,” presumably Austin Njiang, who is
associated with Petitioner. 8 TTABVUE 3-6. Respondent argues that, as a result,
Harry Li is in privity with Petitioner, or is an alias therefor. 7 TTABVUE 7.
Petitioner argues in response that it moved from the address it purportedly shared
with Harry Li six years prior, and that the address in question is a business complex
housing over 50 different companies. 10 TTABVUE 5. Petitioner further argues that
without additional evidence or testimony, the appearance of the name “austin” in the
metadata of PDF documents submitted by Harry Li and a company affiliated with
Petitioner is not probative of a relationship between them. 10 TTABVUE 7-8.
Petitioner also submitted with its response the declaration of its General Manager
Min Liu, averring that Petitioner does not have an employee named Harry Li and
never employed anyone by that name, that neither Petitioner nor its affiliated
Cancellation No. 92072841

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companies have any relationship with a Harry Li, and that because there are over 50
other businesses located at its former address, the mere fact that it and Harry Li may
have shared an address in the past does not indicate the two are related. 10
TTABVUE 14.
In reply, Respondent argues that Petitioner’s declaration does not address the
possibility that Harry Li is an alias or fictitious cover for Petitioner, 11 TTABVUE 4,
and that its other arguments fail to traverse Respondent’s arguments and evidence
regarding privity. 12 TTABVUE.
Based upon our review of the parties’ arguments and evidentiary submissions,
and drawing all reasonable inferences as we must in favor of Petitioner as the non-
movant, we find that genuine disputes of material fact exist as to whether there is
privity between Harry Li and Petitioner herein.
B. Second Requirement – An Earlier Final Judgment on the Merits of
a Claim
Whether the judgment in a prior proceeding was the result of a dismissal with
prejudice or even default, claim preclusion may still apply. See, e.g., Urock Network,
LLC, 115 USPQ2d at 1411 (“[W]hether 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.”); Orouba Agrifoods Processing Co. v. United Food
Imp., 97 USPQ2d 1310 (TTAB 2010) (granting summary judgment to registrant on
claim preclusion where petitioner’s opposition had been dismissed with prejudice);
Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987)
(claim preclusion applies “even when the prior judgment resulted from default,
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consent, or dismissal with prejudice”); USOC v. Bata Shoe Co., 225 USPQ 340, 342
(TTAB 1984) (“default judgments generally operate as res judicata”).
In view thereof, there can be no dispute that the Board’s dismissal with prejudice
of Harry Li’s prior Cancellation No. 92070528 on the basis of failure to state a claim
under Fed. R. Civ. P. 12(b)(6) was a final judgment which gives rise to claim
preclusion. We note in addition that Petitioner so acknowledges. 7 TTABVUE 7.
C. Third Requirement – A Second Claim Based on the Same Set of
Transactional Facts as the First

This case implicates the defensive doctrine of “bar,” wherein the Board must
analyze whether a plaintiff can bring a subsequent action against a defendant. See
Jet Inc., 55 USPQ2d at 1856 (stating that the doctrine of claim preclusion “has come
to incorporate common law concepts of merger and bar, and will thus also bar a second
suit raising claims based on the same set of transactional facts”) (citing Migra v.
Warren City School Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984)). “This bar extends
to relitigation of ‘claims that were raised or could have been raised’ in an earlier
action.” Urock Network, LLC, 115 USPQ2d at 1412 (citing Allen v. McCurry, 449 U.S.
90, 94 (1980)); Migra, 465 U.S. at 77 n.1. Under claim preclusion, a plaintiff is barred
from a “subsequent assertion of the same transactional facts in the form of a different
cause of action or theory of relief.” Vitaline Corp. v. Gen. Mills Inc., 891 F.2d 273,
13 USPQ2d 1172, 1173 (Fed. Cir. 1989).
Cancellation No. 92072841

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Harry Li’s petition for cancellation in prior Cancellation No. 92070528 was
grounded in deceptiveness; immoral or scandalous matter;2 and fraud. Li’s fraud
allegations, to the extent they are understood, were grounded in Respondent’s
asserted violations of restrictions on the import of certain products from China into
the United States, and falsification of Respondent’s first use dates and specimen of
use.3 With regard to the latter, paragraph 6 of Li’s earlier petition for cancellation
alleges “False specimens used for the trademark application violate Trademark Law
Section 1.1.1 and 1.5.1 that do not allow registration.”4 The instant cancellation is
based upon fraud also grounded in Respondent’s asserted violations of restrictions on
the import of certain products from China and falsification of Respondent’s specimen
of use, specifically, that the photo of the specimen submitted by Respondent in
support of its application was digitally altered. 1 TTABVUE 4-7. Respondent argues
that the two cancellation proceedings are based upon the same transactional facts ,
while Petitioner argues that the allegations regarding digital alteration of
Respondent’s specimen constitutes a different set of transactional facts .
Both Li’s earlier petition for cancellation and the current cancellation involve
Respondent’s Reg. No. 4082684 and are grounded, inter alia, in Respondent’s
asserted submission of a “false specimen” or a “digitally altered specimen” with the
underlying application. Considering the pleadings in both cancellations, it is clear

2 This ground for cancellation presently is unavailable, the Supreme Court having found that
portion of Section 2(a) to be unconstitutional. Iancu v. Brunetti, 139 S. Ct. 2294, 2019
USPQ2d 232043 (2019).
3 5 TTABVUE 13-16.
4 5 TTABVUE 15.
Cancellation No. 92072841

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that Li’s and Petitioner’s claims of fraud are based upon the same set of transactional
facts, i.e., Respondent’s asserted violations of import restrictions and submission of a
falsified specimen. Petitioner in the present cancellation has provided a fuller basis
for its allegations than Harry Li, appearing pro se, provided in the earlier
cancellation. We further observe that the evidence necessary to prove the allegations
of fraud in the earlier proceeding would establish fraud in the current proceeding.
We find, therefor, based upon our review of the parties’ arguments and evidentiary
submissions, and drawing all reasonable inferences in favor of Petitioner as the non-
movant, no genuine disputes of material fact that the present cancellation is based
upon the same transactional facts present in the original cancellation filed by Harry
Li.
II. Decision
Based on the record before us, we find that genuine disputes as to the facts
underlying the allegation of claim preclusion in this case with regard to privity
preclude the determination of this proceeding by summary judgment. Respondent’s
motion for summary judgment on the basis of claim preclusion or res judicata is
denied.
III. Proceedings Suspended
It has come to the Board’s attention that Respondent is the principal of Shandong
Shinho Food Industries Co., Ltd., and that on December 11, 2018, Shandong Shinho
commenced a proceeding in the United States District Court for the Southern District
of Texas captioned Shandong Shinho Food Indus. Co., Ltd. v. May Flower
Cancellation No. 92072841

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International, Inc., 4:18-cv-2496 involving allegations and marks related to those at
issue herein.5 Venue in this civil action has been transferred to the United States
District Court for the Eastern District of New York (19-cv-01621-KB-RER).6
Whenever it comes to the attention of the Board that any party to a case pending
before it is involved in a civil action that may have a bearing on the Board case,
proceedings before the Board may be suspended until final determination of the civil
action. Trademark Rule 2.117(a), 37 C.F.R. § 2.117(a). See also, e.g., Gen. Motors
Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933, 1936-37 (TTAB 1992); TBMP
§ 510.02(a) and authorities cited therein. Further, pursuant to 37 CFR § 2.117(a), the
Board may also, in its discretion, suspend a proceeding pending the final
determination of another Board proceeding in which the parties are involved, or
another proceeding in which only one of the parties is involved. See, e.g., Tamarkin
Co. v. Seaway Food Town Inc., 34 USPW2d 1587, 1592 (TTAB 1995) (Board
proceeding suspended pending outcome of ex parte prosecution of opposer’s
application); Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1909 (TTAB 2014) (Board
suspended proceedings pending receipt of pleadings and other documentation to
determine whether proceeding in the United Kingdom may have a bearing in Board
proceeding); Argo & Co. v. Carpetsheen Mfg., Inc., 187 USPQ 366, 367(TTAB 1975)
(state court action between applicant and third party to determine ownership of
applicant’s mark).

5 5 TTABVUE 4, 17-44.
6 8 TTABVUE 4.
Cancellation No. 92072841

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Unless there are unusual circumstances not present in this case, the Board will
suspend proceedings in the case before it if the final determination of the other
proceeding may have a bearing on the issues before the Board. See, e.g., New Orleans
La. Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil action
need not be dispositive of Board proceeding, but only needs to have a bearing on issues
before the Board). Suspension of a Board proceeding pending the final determination
of another proceeding is solely within the discretion of the Board; the court in which
a civil action is pending has no power to suspend proceedings in a case before the
Board, see Opticians Ass’n of Am. v. Indep. Opticians of Am. Inc., 734 F. Supp. 1171,
14 USPQ2d 2021 (D.N.J. 1990) (district court has no control over Board docket and
no power to stay Board proceedings), rev’d on other grounds, 920 F.2d 187, 17
USPQ2d 1117 (3d Cir. 1990), nor do parties or their attorneys. See Martin Beverage
Co. v. Colita Beverage Corp., 169 USPQ 568, 570 (TTAB 1971).
Because the determination of the civil action pending in the United States District
Court for the Eastern District of New York involving the parties to the instant
cancellation, their principals and related companies, may have a bearing on issues
present in the instant cancellation, we hereby suspend action in this cancellation
pending the determination of that action.
The parties are hereby ordered to inform the Board upon determination of the civil
action within thirty days of its resolution.7

7 The parties are reminded that Fed. R. Civ. P. 11, applicable to Board proceedings by
operation of Trademark Rule 2.116(a), and U.S. Patent and Trademark Office Rule 11. 18,
require that all pleadings and submissions be made in good faith and with evidentiary
Cancellation No. 92072841

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Proceedings are otherwise suspended.

support. Specifically, all claims, defenses and allegations in support thereof must have a basis
in law or fact, and must not be filed for any improper purpose.