Sheila Lyons DVMv.American College of Veterinary Sports Medicine and Rehabilitation, Inc.

Trademark Trial and Appeal Board

Aug 1, 2019

91244796 (T.T.A.B. Aug. 1, 2019)

al
August 1, 2019

Opposition No. 91244796

Sheila Lyons DVM

v.
American College of Veterinary Sports
Medicine and Rehabilitation, Inc.

Before Kuhlke, Pologeorgis, and Hudis,
Administrative Trademark Judges.

By the Board:

American College of Veterinary Sports Medicine and Rehabilitation, Inc.
(“ACVSMR”) seeks to register the mark AMERICAN COLLEGE OF VETERINARY
SPORTS MEDICINE AND REHABILITATION1 on the Principal Register under
Section 2(f) of the Trademark Act for the following services:
“Association services, namely, promoting public awareness of the
benefits of working with certified specialists in veterinary medicine” in
International Class 35;

“Educational services, namely, establishing and conducting continuing
education seminars, conferences, programs, trainings, classes and

1 Application No. 86218298, filed March 11, 2014, alleging June 17, 2011 as the date of first
use and first use in commerce for the services in International Class 35, alleging July 2012
as the date of first use and first use in commerce for the services in International Class 41,
and alleging May 2012 as the date of first use and first use in commerce for the services in
International Class 42.
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
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discussions in the field of veterinary medicine” in International Class
41; and

“Testing, analysis and evaluation of the knowledge, skills and abilities
of others for the purpose of certification and re-certification in the field
of veterinary medicine” in International Class 42.

Sheila Lyons DVM (“Lyons”) opposes registration of the subject mark on the
ground that she is the true owner of the subject mark. In her notice of opposition,
Lyons pleads prior common law rights in the subject mark.
ACVSMR seeks summary judgment in its favor on the ground that the issue of
ownership of the subject mark was already decided in ACVSMR’s favor by the U.S.
Court of Appeals for the Federal Circuit in Lyons v. Am. College of Veterinary Sports
Med. & Rehab, 859 F.3d 1023 (Fed. Cir. 2017) (affirming Am. College of Veterinary
Sports Med. & Rehab v. Lyons, 2016 TTAB Lexis 113 (TTAB Mar. 17, 2016)
(Cancellation No. 92053934), cert. denied, 138 S.Ct. 366. ACVSMR asserts that the
doctrine of collateral estoppel applies because this prior matter involved the same
parties, the same legal issues, and the same factual allegations as the present
matter.
I. Prior Proceedings
The prior dispute between the parties, like the present proceeding, involved a
trademark ownership dispute between Lyons, a former organizing committee
member, and ACVSMR, the veterinary specialty organization she helped found.
Specifically, the prior proceeding involved Lyons’ Registration No. 3088963 issued
on the Supplemental Register for the service mark THE AMERICAN COLLEGE OF
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VETERINARY SPORTS MEDICINE AND REHABILITATION. On April 25, 2011,
ACVSMR petitioned to cancel this registration on the grounds of priority of use,
likelihood of confusion, misrepresentation of source, and fraud.2 This Board
proceeding was suspended for nearly three years during the pendency of a civil
action filed by Lyons in the United District Court of the District of Massachusetts.
Lyons et al. v. Gillette, et al., Civil Action No. 1:11-CV-12192-WGY (D. Mass. 2011).
Upon resumption of the cancellation proceeding by the Board, ACVSMR filed an
amended petition to cancel Registration No. 3088963 claiming, in pertinent part,
that it had superior rights in the subject mark; that Lyons was not the rightful
owner of the mark at the time she filed the underlying application of her subject
registration; that ACVSMR was the first entity to use the mark in commerce; that
Lyons only began using the mark in commerce as a result of her association with
ACVSMR; and that Lyons’ use of the mark would likely cause confusion in violation
of Section 2(d) of the Trademark Act. On March 17, 2016, the Board concluded that
Lyons was not the owner of the mark and her registration on the Supplemental
Register is void ab initio.
Thereafter, Lyons appealed the Board’s decision in the cancellation proceeding
regarding her Supplemental Registration No. 3088963 to the U.S. Court of Appeal
for the Federal Circuit. In a June 8, 2017 decision, the Federal Circuit court
affirmed the Board. Lyons v. Am. College of Veterinary Sports Med. & Rehab., 859

2 Cancellation Proceeding No. 92053934. In a related proceeding, Opposition No. 91206077,
ASVSMR filed a notice of opposition to Lyons’ application for the same mark on the
Principal Register for services in International Class 41. Such application was ultimately
refused registration by the Board.
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F.3d at 1032. On October 16, 2017, the Supreme Court of the United States denied
certiorari. Lyons v. Am. Coll. Of Veterinary Sports Med. & Rehab., 138 S. Ct. 366
(2017). On November 9, 2017, the USPTO canceled Lyons’ Registration No. 3088963
issued on the Supplemental Register.
II. Motion for Summary Judgment
In support of its motion for summary judgment, ACVSMR asserts that Lyons is
estopped from opposing the subject application and relitigating the same issue in
this proceeding as was addressed in the prior proceeding. ACVSMR argues that the
parties were the same; the issue of ownership was the same; the issue was fully
litigated; and Lyons was represented by counsel during all phases of the prior
proceeding.3
In response, Lyons argues that the issues in the prior proceeding and this
proceeding are different; that the parties are different because in the prior
proceeding ACVSMR was “an unincorporated, unidentified group of individual
veterinarians prior to the incorporation of the corporate [ACVSMR]”4; and that
Lyons’ common law rights in the subject mark prohibit registration of the mark by
ACVSMR.5
In reply, ASVSMR argues that Lyons’ response brief further demonstrates that
she is merely seeking to relitigate prior matters because she “asks the Board to
recognize her as the true owner of the mark, by virtue of alleged priority of use, a

3 4 TTABVUE 5.
4 6 TTABVUE 10.
5 6 TTABVUE 10.
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claim that was already decided….”6 ACVSMR further argues that Lyons’ assertion
that ACVSMR is not the same party as in the prior proceeding is erroneous.
ACVSMR states that this issue too was already litigated by the Board in the prior
cancellation proceeding. ACVSMR points out that “the Board found that Applicant
at one time consisted of an unincorporated association of veterinarians until 2011,
when it incorporated upon being official [sic] recognized as a veterinary specialty
organization by the American Veterinary Medical Association.”7 ACVSMR explains
that the Board “expressly held that [ACVSMR] was the ‘successor in interest to the
former unincorporated association,” and therefore ‘substituted the corporation as
the party plaintiff.’”8
Summary judgment is appropriate only when there is no genuine dispute as to
any material fact and the moving party is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(a). The Board may not resolve issues of material fact; it may
only ascertain whether a genuine dispute regarding a material fact exists. See
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992). 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. Opryland USA
Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir.
1992); Olde Tyme Foods, Inc., 22 USPQ2d at 1544. The non-moving party may not

6 7 TTABVUE 2.
7 7 TTABVUE 3.
8 Id. quoting Am. College of Veterinary Sports Med. & Rehab. v. Lyons, 2016 TTAB LEXIS
113 at *1 n.1.
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rest on the mere allegations of its pleadings and assertions of counsel, but must
designate specific portions of the record or produce additional evidence showing the
existence of a genuine dispute of material fact for trial. In general, to establish the
existence of disputed facts requiring trial, the non-moving party “must point to an
evidentiary conflict created on the record at least by a counterstatement of facts set
forth in detail in an affidavit by a knowledgeable affiant.” Octocom Systems Inc. v.
Houston Comp. Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990)
(citing Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831,
221 USPQ 561, 564 (Fed. Cir. 1984)).
The doctrine of collateral estoppel or issue preclusion may bar relitigation of the
same issue between the parties in a second action. See B&B Hardware, Inc. v.
Hargis Industries, Inc., 135 S.Ct. 1293, 191 L.Ed. 2d 222, 113 USPQ2d 2045 (2015);
Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d
1310, 1314 (Fed. Cir. 2005). Collateral estoppel normally will bar the relitigation of
an issue of law or fact that was raised, litigated, and actually decided in a prior
proceeding between the parties, if the determination of that issue was essential to
the judgment, regardless of whether or not the two proceedings are based on the
same claim. NLRB v. United Tech. Corp., 706 F.2d 1254, 1260 (2d Cir. 1983).
The application of issue preclusion requires: (1) identity of an issue in the
current and a prior proceeding; (2) actual litigation of that issue in the prior
proceeding; (3) necessity of a determination of the issue in entering judgment in the
prior proceeding; and (4) a full and fair opportunity existed, for the party with the
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burden of proof on that issue in the second proceeding, to have litigated the issue in
the prior proceeding. See Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 76
USPQ2d at 1313.
Upon careful consideration of the arguments presented by the parties, we find
that the doctrine of collateral estoppel applies.
We find that there is no genuine dispute that the first collateral estoppel
element is met to the extent that the issue of ownership of the subject mark is
identical in both the prior cancellation proceeding and in our determination
regarding the pleaded claim in this opposition.9 With regard to Lyons’ assertion that
ACVSMR is not the same party as in the prior proceeding, we find that ACVSMR is
correct that the Board expressly held that Applicant was the successor in interest to
the former unincorporated association of veterinarians and, hence, the same parties
have litigated the issue of ownership.10 We further find that there is no genuine
dispute of material fact that the second collateral estoppel element concerning
actual litigation of this issue in the prior Board proceeding is clearly met as
evidenced by the Board’s decision in that case that issued on March 17, 201611 and
by the Federal Circuit’s decision that issued on June 8, 2017.12 Similarly, we find
that there is no genuine dispute that there was the necessity of a determination of
the issue of ownership, as shown by the entry of judgment by the Federal Circuit.13
Additionally, we find that there is no genuine dispute that a full and fair

9 Am. College of Veterinary Sports Med. & Rehab v. Lyons, 2016 TTAB Lexis 113 at *1 n.1.
10 Id. at *64.
11 Id.
12 Lyons v. Am. College of Veterinary Sports Med. & Rehab, 859 F.3d at 1032.
13 Id.
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opportunity existed for Lyons to have litigated the issue of ownership in the prior
cancellation proceeding. Therefore, there are no genuine disputes of material fact
that all the elements of collateral estoppel have been met. In view thereof, it is
established under the doctrine of collateral estoppel that Lyons’ is not the owner of
the mark.
Because there is no dispute that the doctrine of collateral estoppel is applicable
in this proceeding, and it is established that Lyon’s is not the owner of the mark,
Lyons’ claim of ownership fails and ACVSMR’s motion for summary judgment is
granted. The opposition is therefore dismissed with prejudice.
* * *