Nicholas Millerv.Michael Jagmin

Trademark Trial and Appeal Board

Jul 31, 2019

92070275 (T.T.A.B. Jul. 31, 2019)

RK
July 31, 2019

Cancellation No. 92070275

Nicholas Miller

v.
Michael Jagmin

Before Pologeorgis, Larkin, and English,
Administrative Trademark Judges

By the Board:

On January 3, 2019, Petitioner Nicholas Miller filed a petition to cancel
Respondent Michael Jagmin’s Registration No. 56094871 for the mark A SKYLIT
DRIVE (in standard characters) for “downloadable music files” in International
Class 9 on the following two grounds: non-ownership and fraud.2 An institution
order was issued whereby Respondent was allowed until February 12, 2019, to
answer the petition for cancellation.3

1 Underlying Application Serial No. 87387330 was filed on March 27, 2017, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and registered on the Principal Register on
November 20, 2018.
Unless otherwise indicated, citations are to the TTABVUE record in this cancellation
proceeding.
2 1 TTABVUE.
3 2 TTABVUE 3.
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. 92070275

2
This matter now comes up on Respondent’s motion (filed February 6, 2019, in
lieu of an answer) seeking to dismiss this proceeding on the ground of res judicata
based on the judgment rendered in a prior Board proceeding, namely, Opposition
No. 91236230. The motion has been construed as one seeking summary judgment,4
and has been briefed as such by Petitioner.5
The Prior Proceeding: Opposition No. 912362306
On August 21, 2017, Petitioner, as the opposer in the opposition, filed a notice of
opposition against Application Serial No. 87387330 (the underlying application that
matured into the involved registration).7 The ESTTA cover sheet to the notice of
opposition listed the grounds of opposition as non-ownership under Section 1 of the
Trademark Act, 15 U.S.C. § 1051, and deceptiveness8 under Section 2(a) of the
Trademark Act, 15 U.S.C. § 1052(a).9 Shortly after the filing of Respondent’s
answer, a notice of appearance was filed on behalf of Petitioner by Petitioner’s
counsel in this proceeding.10 Under the schedule in the Board’s institution order in
the opposition, Petitioner’s trial period closed on July 27, 2018.11 No testimony or
other evidence was submitted by Petitioner during his trial period. On August 11,

4 5 TTABVUE.
5 6 TTABVUE.
6 As Petitioner has treated the file history of the prior opposition proceeding as being of
record, we deem the file history as being stipulated into the record for purposes of deciding
Respondent’s motion. Cf. Riceland Foods Inc. v. Pac. E. Trading Corp., 26 USPQ2d 1883,
1885 (TTAB 1993) (although status and title copy of pleaded registration not submitted,
considered to be of record in view of defendant’s non-objection and treatment as if properly
of record).
7 1 TTABVUE (in Opposition No. 91236230).
8 Although deceptiveness was identified as a ground for opposition on the ESTTA cover
sheet, no such ground was pleaded in the accompanying notice of opposition.
9 1 TTABVUE 1 (in Opposition No. 91236230).
10 5 TTABVUE (in Opposition No. 91236230).
11 2 TTABVUE 4 (in Opposition No. 91236230).
Cancellation No. 92070275

3
2018, the deadline for Respondent’s pretrial disclosures, Respondent moved to
dismiss the opposition for Petitioner’s failure, inter alia, to comply with the trial
schedule.12 Respondent’s motion was, in essence, a motion to dismiss for failure to
prosecute under Trademark Rule 2.132(a), 37 C.F.R. § 2.132(a). Petitioner did not
file a response to the motion. Accordingly, on October 15, 2018, Respondent’s motion
was granted as conceded and the opposition was dismissed with prejudice.13 The
judgment against Petitioner in the opposition was not appealed.
Respondent’s Motion for Summary Judgment
A motion for summary judgment is a pretrial device intended to save the time
and expense of a full trial when the moving party is able to demonstrate, prior to
trial, that there is no genuine dispute of material fact, and that it is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477
U.S. 317 (1986); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992); Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). 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., Inc. v. Eli’s, Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472.
By his motion, Respondent seeks to preclude Petitioner from bringing the
instant action based on the final judgment in Opposition No. 91236230. The
doctrine of res judicata, also referred to as claim preclusion, will bar a second action

12 7 TTABVUE (in Opposition No. 91236230).
13 9 TTABVUE (in Opposition No. 91236230).
Cancellation No. 92070275

4
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).
A. Identity of Parties or Privies
Petitioner has acknowledged that the parties in the earlier proceeding are
identical to those in this proceeding.14 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, it is Petitioner’s position that “no judgement [sic] on
the merits has been had [because] [t]he prior opposition was dismissed absent a
trial and finding of fact.”15 But a judgment for failure to prosecute is a final
judgment on the merits for purposes of claim preclusion. See URock Network, LLC
v. Sulpasso, 115 USPQ2d 1409 (TTAB 2015) (finding claim preclusion where prior
proceeding was dismissed for plaintiff’s failure to submit evidence and explaining
that “whether the judgment in the 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”). Accordingly, there is no genuine dispute that the second element of
claim preclusion has been met.

14 6 TTABVUE 5.
15 Id.
Cancellation No. 92070275

5
C. Same Set of Transactional Facts
As to this final element, we find no genuine dispute of material fact that the
claims in this proceeding as against Registration No. 5609487 are based on the
same set of transactional facts as those pleaded in the prior opposition. There is no
dispute that the subject application in the prior opposition matured into the
registration that is the subject of this cancellation and that Petitioner has again
asserted a claim of non-ownership against Respondent based on the following set of
facts common to both the prior and present proceedings:16
- A Skylit Drive is the name of a musical band founded by Petitioner prior to
Respondent’s joining the band;
- A corporation was formed to which all assets, including the name of the band,
were assigned by the band members;
- In March 2017, it was decided that the corporation would dissolve and that
Petitioner would retain sole rights to the band’s name.

These same allegations also form the core of Petitioner’s fraud claim wherein
Respondent’s claim of ownership over the mark constitutes the alleged material and
false representation to the USPTO. Indeed, the superfluous nature of Petitioner’s
fraud claim, i.e., there would be no need to go beyond a finding of non-ownership to
cancel the registration, simply underscores the identity of transactional facts
between the two proceedings.
In view thereof, we find no genuine dispute of material fact that the third
element of claim preclusion has also been met.

16 1 TTABVUE4-5; 1 TTABVUE 3 (in Opposition No. 91236230).
Cancellation No. 92070275

6
Accordingly, Petitioner’s claims in this proceeding are barred by the application
of the doctrine of res judicata or claim preclusion as against Registration No.
5609487.
Conclusion
Respondent’s motion is GRANTED and the petition for cancellation is
DISMISSED with prejudice.
* * *