Sharp Kabushiki Kaishav.ThinkSharp, Inc.

Trademark Trial and Appeal Board

Oct 26, 2004

No. 91118745re (T.T.A.B. Oct. 26, 2004)

October 26, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Sharp Kabushiki Kaisha,
a/t/a Sharp Corporation
v.
ThinkSharp, Inc.
_____
Opposition No. 91118745
to application Serial No. 75652878
filed on February 26, 1999
_____
Request for Reconsideration
_____
Robert W. Adams and Diane M. Byers of Nixon & Vanderhye P.C.
for Sharp Kabushiki Kaisha, a/t/a Sharp Corporation.
Sherry H. Flax of Saul Ewing LLP for ThinkSharp, Inc.
______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
The Board, in a decision dated March 31, 2004,
dismissed the opposition of Sharp Kabushiki Kaisha a/t/a
Sharp Corporation to ThinkSharp Inc.’s application to
register the mark THINKSHARP for “computer software for use
as education programs in the fields of problem solving and
critical thinking, pre-recorded videocassette tapes
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91118745
2
featuring education programs in the field of problem solving
and critical thinking; and CD-ROMS containing education
programs” in class 16; and “educational services, namely
providing information, conducting educational seminars and
distributing education materials via classroom instruction,
the global computer information network and satellite
transmission, in the fields of problem solving and critical
thinking” in class 41.
The Board found that applicant’s mark THINKSHARP for
the identified goods was not likely to cause confusion with
opposer’s previously used and registered mark SHARP for
computers, videocassette players and CD-ROM players. In
addition, the Board found that opposer did not properly
plead a claim of dilution because opposer failed to plead
that its SHARP mark had become famous prior to applicant’s
use of its mark. Further, the Board found that opposer
failed to timely raise a claim of res judicata based on a
prior opposition between the parties.
Opposer has filed a timely motion for reconsideration
of the Board’s decision; applicant has filed a brief in
opposition thereto and opposer has filed a reply brief.1
We turn first to the Board’s finding that opposer first
1 The Board notes that the time for applicant to file a brief and
the time for opposer to file a reply brief were extended pursuant
to the parties’ stipulation.
Opposition No. 91118745
3
raised the claim of res judicata in its brief on the case,
and thus the claim is untimely. Opposer maintains that the
Board’s finding is in error and that opposer first raised
the claim of res judicata in its notice of reliance.
Opposer has submitted a copy of a cover letter that
accompanied opposer’s notice of reliance which identifies
the prior opposition (Opposition No. 91123480) and includes
a statement that “[o]pposer is relying on this judgment for
its res judicata and/or collateral estoppel effect or its
other legal/equitable effect upon the proceedings and issues
in this Opposition No. [91118745].”2
Inasmuch as applicant did not object to opposer’s
introduction of the judgment in Opposition No. 911234480 and
opposer’s cover letter clearly states that the judgment was
being offered in support of its res judicata claim, we
consider the claim to have been tried by the implied consent
of applicant. Fed. R. Civ. P. 15(b).3
Opposer argues that registration of applicant’s
involved application is barred by res judicata (claim
preclusion) in view of Opposition No. 91123480 involving the
2 As the result of an inadvertency, the cover letter was
misplaced at the Board and, thus, was not part of the record
reviewed at the time of the decision.
3 The better practice would have been for opposer to move for
leave to amend the notice of opposition to assert that applicant
was barred from seeking registration of its mark by the prior
judgment.
Opposition No. 91118745
4
same parties. Opposition No. 91123480 involved applicant’s
application Serial No. 75721542 to register the mark
THINKSHARP and design for goods and services which are
identical to those in the application involved herein.
Applicant filed an abandonment of that application prior to
trial; the oppostion was sustained and judgment was entered
against applicant pursuant to Trademark Rule 2.135. It is
opposer’s position that the judgment in Opposition No.
91123480 operates as res judicata herein because the marks
are virtually identical and the goods and services are the
same. Opposer relies on Miller Brewing Company v. Coy
International Corporation, 230 USPQ 675 (TTAB 1986) wherein
the Board found that the doctrine of res judicata applied to
an applicant’s second mark because the second mark differed
from the first mark only insignificantly, and applicant had
abandoned the application for the first mark resulting in a
judgment against the applicant. The Board in Miller Brewing
Company at 678 stated that it “does not wish to encourage
losing parties to insignificantly modify their marks after
an adverse ruling and thereby avoid the res judicata effect
of the prior adjudication.”
Under the doctrine of res judicata or claim preclusion,
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 subsequent proceeding between the parties or
Opposition No. 91118745
5
their privies, even in those cases where the prior judgment
was the result of default. One of the purposes of res
judicata is to promote judicial economy by preventing
repetitive litigation.
This case, however, differs from Miller Brewing Co. v.
Coy International Corp. in that this is not a situation
where the applicant, after a judgment had been entered
against it, adopted a second mark in an attempt to avoid the
preclusive effect of a previous judgment. The applicant
herein began using both its THINKSHARP (typed drawing form)
and THINKSHARP and design marks at the same time and indeed
both applications were pending at the time judgment was
entered in Opposition No. 91123480. Applicant did not file
its application to register the mark THINKSHARP in typed
drawing form merely as an attempt to evade the preclusive
effect of the judgment entered against it in the application
to register THINKSHARP and design. Applicant was entitled
to decide if it wanted to pursue the registration of only
one of its marks, rather than defending two oppositions.
In view of the foregoing, we find that the doctrine of
res judicata (claim preclusion) does not bar registration of
the involved application.
We turn next to opposer’s contention that the Board
erred in finding that it failed to properly plead a claim of
dilution. Opposer argues that “it used notice pleading to
Opposition No. 91118745
6
properly set forth its dilution claim.” (Brief, p. 5). We
are not persuaded by opposer’s contention. Where as here, a
party seeks to assert a claim of dilution against a use-
based application, the party alleging fame must plead that
the mark had become famous prior to the applicant’s use of
the mark. See Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164
(TTAB 2001).4
Finally, opposer states that it requests
reconsideration of the decision concerning likelihood of
confusion in order to preserve its rights on appeal.
Opposer has pointed to no specific findings which it
believes are in error. We adhere to our findings of fact
and conclusions of law that the relevant duPont factors
favor a finding of no likelihood of confusion herein.
In view of the foregoing, opposer’s request for
reconsideration is denied with respect to the Board’s
finding that opposer failed to properly plead a claim of
dilution and the Board’s finding of no likelihood of
confusion. The request for reconsideration is granted to
the extent that we have considered opposer’s claim of res
4 We note that opposer, in its brief, made several references to
a likelihood of dilution. Nonetheless, as indicated, opposer
failed to properly plead such a claim and the claim was not tried
by the express or implied consent of applicant. We add that even
if opposer had properly pled a claim of dilution, it did not
prove such claim. See Toro Co. v. ToroHead, Inc., supra.
Opposition No. 91118745
7
judicata, but find that it is not well taken and the
opposition is dismissed on this ground.