Sawatacon Limited and Thomas M. Sawav.Brace International, Inc.

Trademark Trial and Appeal Board

Feb 26, 2008

No. 92047383 (T.T.A.B. Feb. 26, 2008)

Baxley Mailed: February 26, 2008

Cancellation No. 92047383

Sawatacon Limited and Thomas
M. Sawa

v.

Brace International, Inc.

Before Hairston, Kuhlke, and Bergsman,
Administrative Trademark Judges

By the Board:

Brace International, Inc. ("respondent") is the record
owner of Registration No. 1977928 for the mark SAWA in typed
form for "orthopedic brace[s]" in International Class 10.1

1 The registration was issued on June 4, 1996 and has been
renewed. The registration includes a claim of acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
Section 1052(f).
On June 4, 2001, Sawatacon Limited ("Sawatacon") filed a
petition to cancel respondent's registration on the grounds that
1) respondent committed fraud in the declaration in the
underlying application for that registration; 2) the mark
consists of the name of its principal owner without the principal
owner’s written consent under Trademark Act Section 2(c), 15
U.S.C. Section 1052(c); and 3) priority of use and likelihood of
confusion. That petition resulted in the institution of
Cancellation No. 92032081. However, the Board dismissed
Cancellation No. 92032081 and entered judgment against Sawatacon
on June 3, 2005 after Sawatacon failed to respond to two Board
orders following its attorney's withdrawal from this case. In an
October 31, 2005 order, the Board denied Sawatacon's motion for
relief from judgment under Fed. R. Civ. P. 60(b).

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This decision is not a precedent of the
Trademark Trial and Appeal Board.
Cancellation No. 92047383
2
On April 12, 2007, Sawatacon Limited ("Sawatacon") and
Dr. Thomas M. Sawa (collectively "petitioners"), who are
appearing herein without an attorney, filed a petition to
cancel respondent's registration. A review of that petition
indicates that it consists of three unnumbered single-spaced
paragraphs which, while not a model of clarity, provides
notice pleading of the following grounds: 1) the mark
consists of Dr. Sawa's name and is unregistrable without his
written consent; 2) the mark, as used by respondent, falsely
suggests a connection with Dr. Sawa; and 3) respondent
fraudulently signed the declaration in the application for
that registration.2 Respondent, in its answer, denied the
salient allegations of the petition to cancel and asserted
affirmative defenses, including that the above-captioned
proceeding is barred by claim preclusion, or res judicata.
This case now comes up for consideration of
respondent's motion (filed October 18, 2007) for summary
judgment on its pleaded affirmative defense of claim
preclusion or res judicata. The motion has been fully
briefed.

2 Petitioners also allege infringement of Patent No. 5267928.
However, the Board is an administrative tribunal of limited
jurisdiction that, in this proceeding, is authorized only to
determine whether respondent can retain its registration for the
SAWA trademark. See TBMP Section 102.01 (2d ed. rev. 2004). The
Board cannot determine any issues regarding said patent.

Cancellation No. 92047383
3
Claim preclusion or res judicata occurs "[w]hen a valid
and final judgment rendered in an action extinguishes the
plaintiff's claim pursuant to the rules of merger or bar ...
the claim extinguished includes all rights of the plaintiff
to remedies against the defendant with respect to all or any
part of the transaction, or series of connected
transactions, out of which the action arose." Vitaline
Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172,
1173 (Fed. Cir. 1989), citing to Restatement (Second) of
Judgments Section 24(1) at 196. 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. General
Mills Inc., 13 USPQ2d at 1174 (citations omitted).
Therefore, a subsequent action will be barred by claim
preclusion if the following factors are present: (1) there
is identity of parties or their privies; (2) the second
claim is based on the same set of transactional facts as the
first; and (3) there has been a final judgment on the
merits. Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360,
55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
As regards the first factor, the identity of parties or
their privies, "[p]rivity has been characterized as a
relationship where ‘there was a substantial identity of
parties'." Symbol Technologies Inc. V. Metrologic
Cancellation No. 92047383
4
Instruments Inc., 21 USPQ 1481, 1488 (D.N.J. 1991), quoting
Chicago, Rock Island & Pac. Ry. V. Schendel, 270 U.S. 611,
621 (1926). Although Dr. Sawa was technically not a party
to the earlier cancellation proceeding, the basis for
applying preclusion against him rests on his being
Sawatacon's president and his actual participation in the
prior litigation. Section 39 of the Restatement (Second) of
Judgments (1982) states the applicable black-letter law:
A person who is not a party to an action but who
controls or substantially participates in the
control of the presentation on behalf of a party
is bound by the determination of issues decided as
though he were a party.

See also 18 Wright & Miller, Federal Practice and Procedure
Section 4451 (updated by pocket part 2004).
The record of the prior action reveals that Dr. Sawa
was Sawatacon's president during that case and that he
substantially participated in Sawatacon's presentation
therein by personally filing several submissions on
Sawatacon's behalf following the withdrawal of its attorney
from the case. As such, Dr. Sawa is bound by the dismissal
of the first petition. See, e.g., Kraeger v. General
Electric Co., 497 F.2d 468, 472 (2d Cir. 1974) (The
president and sole shareholder of a corporation was bound by
the corporation's defeat in an action that he effectively
controlled).
Cancellation No. 92047383
5
Turning to factor two, the requirement that the
subsequent claims be based on the same transactional facts
as the first, the transactional facts which are the basis of
petitioners' claims in this proceeding are identical to
those that formed the basis of the claims in the prior
proceeding. In particular, the claims are all based on
respondent's registration of the involved SAWA mark without
Dr. Sawa's knowledge and consent, by falsely asserting
ownership of that mark. Further, the claims that respondent
fraudulently executed the declaration in the underlying
application for the involved registration and that the mark
consists of Dr. Sawa's name without his written consent were
brought in the earlier proceeding, and the claim that the
mark falsely suggests a connection with Dr. Sawa have, and
should have, been brought in that proceeding.
With regard to factor three, the requirement that there
must have been a final decision on the merits, by its
decision in Cancellation No. 92032081, the Board entered
final judgment against Sawatacon and dismissed the case with
prejudice.
In view of the foregoing, respondent's motion for
summary judgment is hereby granted. The petition for
cancellation is dismissed with prejudice.