Pan American Coffee Co., Ltd.v.Caracolillo Coffee Mills, Inc.

Trademark Trial and Appeal Board

Nov 22, 2004

No. 91160758 (T.T.A.B. Nov. 22, 2004)

Butler Mail date: November 22, 2004
Opposition No. 91160758
Pan American Coffee Co., Ltd.
v.
Caracolillo Coffee Mills, Inc.
Before Seeherman, Walters and Holtzman, Administrative Trademark
Judges.
By the Board:
Applicant seeks to register the following mark
for “coffees.”1 As grounds for the opposition, opposer alleges
that it has been using the mark CAFÉ CARACOLILLO since 1951 in
the Northeast United States including, but not limited to, the
states of New York, New Jersey, Connecticut, and Pennsylvania;
that applicant knew of opposer’s prior rights in opposer’s
trading area when applicant filed its application; and that
applicant’s mark, when used on the identified goods, so resembles
opposer’s mark, previously used in opposer’s trading area, as to
1 Application Serial No. 75667025, filed on July 20, 1999, claiming
first use since 1936 and first use in commerce since 1950. Applicant
has disclaimed the term CAFÉ and has provided a translation of
CARACOLILLO as “snail shell.”
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91160758
2
be likely to cause confusion, mistake or to deceive. Opposer
also alleges that it has pending a concurrent use application for
its CAFÉ CARACOLILLO mark for “coffee.”2
In lieu of an answer, applicant filed, on July 14, 2004, a
motion to dismiss the opposition based on the Board’s decision in
Opposition No. 91120415,3 which involved the same parties and the
same marks. Applicant asserts that opposer’s claim in the
present proceeding is barred by the doctrine of claim preclusion,
and submits with its answer a copy of the Board’s decision in the
earlier opposition. Opposer filed a response to applicant’s
motion.
As a procedural matter, if, on a motion to dismiss, matters
outside the pleadings are submitted and not excluded by the
Board, the motion will be treated as a motion for summary
judgment. Inasmuch as applicant’s motion is predicated on the
prior Board decision and, thus, involves matters outside the
pleadings, said motion will be treated as one for summary
judgment. Although the Federal Rules of Civil Procedure and
Board practice provide that both parties be given a reasonable
opportunity to present all materials made pertinent to such a
converted motion, the Board finds it unnecessary under the
2 Application Serial No. 76532622, filed on July 25, 2003, claiming
first use and first use in commerce since January 1951. A translation
of CARACOLILLO as “snail shell” has been provided.
3 In previous Board records, the “91” prefix, signifying an opposition
for purposes of database management, did not precede the opposition
number, e.g. 120415. It is now Board practice to include this prefix
with all opposition numbers.
Opposition No. 91160758
3
present circumstances. See Selva & Sons, Inc. v. Nina Footwear,
Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983). See also
Fed. R. Civ. P. 12; and TBMP §§503.04 and 504.03 (2nd ed. rev.
2004).
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56. A genuine dispute with respect to
a material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any particular factual issues are
genuinely in dispute must be resolved in the light most favorable
to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ 1542 (Fed. Cir. 1992).
Under the doctrine of claim preclusion (res judicata), the
entry of a final judgment “on the merits” of a claim (i.e., 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. National
Screen Service Corp., 349 U.S. 322, 75 S.Ct. 865, 99 L.Ed. 1122
(1955); Chromalloy American Corp. v. Kenneth Gordon, Ltd., 736
Opposition No. 91160758
4
F.2d 694, 222 USPQ 187 (Fed. Cir. 1984); and Flowers Industries,
Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987).
Turning now to the specifics of this case, in support of its
motion applicant argues that the Board previously ruled that
applicant is the “absolute” prior user of the mark CAFÉ
CARACOLILLO.4 Applicant argues that the parties in the present
proceeding and the prior opposition are the same; that the marks
are the same; and that the goods are the same, coffee. Applicant
contends that, under the doctrine of res judicata, it is entitled
to judgment in its favor. In addition, relying on U.S. Soil,
Inc. v. Colovic, 214 USPQ 471 (TTAB 1982), applicant argues that
opposer’s assertion in the present opposition of relative prior
rights in a limited geographic area is insufficient to support
the opposition.
In response, opposer acknowledges that the Board previously
determined that opposer was not entitled to an unrestricted
registration. However, according to opposer, it has filed a
concurrent use registration naming applicant as an exception to
opposer’s claim of exclusive use. Opposer argues that applicant
does not contest that opposer is the senior user in opposer’s
named trading area; that neither party is entitled to an
unrestricted registration; and that the proper venue for
resolution of the parties’ respective rights is a concurrent use
4 Caracolillo Coffee Mills, Inc. v. Pan American Coffee Co., Ltd.,
Opposition No. 120,415 (TTAB August 21, 2002).
Opposition No. 91160758
5
proceeding. Opposer requests suspension of the present
opposition pending institution of a concurrent use proceeding
involving its pending concurrent use application.
The summary judgment decision in Opposition No. 91120415
granted judgment in favor of Caracolillo Coffee Mills (CCM), as
opposer therein, on the issues of priority and likelihood of
confusion. This prior decision involved the same parties, the
same marks, and the same goods.5 The Board found that no genuine
issue of material fact existed and that the parties’ marks and
goods were identical. There being no restriction in either
party’s identification of goods, the Board also found that no
genuine issue of material fact existed and that the channels of
trade and classes of purchasers were identical. Pan American
Coffee (PAC), as applicant in the earlier proceeding, submitted
no evidence regarding its use of the mark and, thus, could rely
only on the filing date of its application which was the subject
matter of Opposition No. 91120415 (April 27, 1999). CCM, on the
other hand, by way of the declarations of two of its officers,
established first use since 1936, long prior to the filing date
of PAC’s application. Thus, the Board found that no genuine
issue of material fact existed as to priority, and that CCM was
the prior user of the mark CAFÉ CARACOLILLO. With respect to
5 Indeed, applicant, as opposer in the earlier opposition, relied upon
its ownership of application Serial No. 75667005, the subject matter
of the present opposition, then pending before the Trademark Law
Offices.
Opposition No. 91160758
6
PAC’s arguments that the parties use their marks in different
geographic areas and that a concurrent use proceeding would be
appropriate, the Board commented that geographic restrictions
cannot be determined in the context of an opposition proceeding.
In U.S. Soil, Inc. v. Colovic, supra, the question was
framed as follows:
Should an opposition proceed where it has been established
as a result of prior litigation that applicant has superior
rights in a confusingly similar mark and where opposer only
alleges that it has rights in certain geographic areas. Id.
at 472.
The Board answered that question in the negative and further
instructed that the appropriate forum for the adjudication of
concurrent rights at the USPTO is a concurrent use proceeding.
Id. See also Trademark Rules 2.99(h) and 2.133(c).
We consider the same question. In this case, the parties
are the same, the involved marks and goods are the same, and the
claims that may be considered in this opposition are the same as
those determined on summary judgment in Opposition No. 91120415.
The final judgment in Opposition No. 91120415 precludes
relitigation of issues that were or could have been raised in
that action. Thus, applicant’s superior rights having been
established previously, applicant is entitled to an unrestricted
registration despite whatever regional rights opposer may have as
a junior user. Id. Nonetheless, this decision does not preclude
opposer from seeking a concurrent use registration if it does
Opposition No. 91160758
7
indeed have lawful use prior to the filing date of the opposed
application. Id. See also Trademark Act §2(d).
In view thereof, opposer’s request to suspend this
opposition pending institution of a concurrent use proceeding
involving its concurrent use application is denied; and the
opposition is dismissed.6
☼☼☼
6 In the event that opposer’s now pending concurrent use application
Serial No. 76532622 is published for opposition subject to concurrent
use rights (and is not opposed, or all oppositions are dismissed), a
concurrent use proceeding will be instituted before the Board. See
TBMP §1106.02. It is in the context of any such concurrent use
proceeding that geographic limitations will be considered, and any
resulting concurrent use rights will be determined.