Shirley A. Dickov.Everett and Jones Barbeque – Jack London, LLC

Trademark Trial and Appeal Board

Dec 5, 2016

No. 92061096 (T.T.A.B. Dec. 5, 2016)

wbc Mailed: December 5, 2016

Cancellation No. 92061096

Shirley A. Dicko

v.

Everett and Jones Barbeque –
Jack London, LLC

Before Zervas, Wellington, and Masiello,
Administrative Trademark Judges.

By the Board:

Shirley A. Dicko (“Petitioner”) seeks to cancel Everett and Jones Barbeque – Jack
London, LLC’s (“Respondent”) registration for the mark EVERETT AND JONES in
standard characters for “clothing, namely, jackets, shirts, tee shirts, sweat shirts,
hats, caps, pants and shorts,”1 on the basis of fraud and likelihood of confusion under
Section 2(d). 19 TTABVUE.
This case now comes before the Board on Respondent’s motion for summary
judgment (filed August 22, 2016) on grounds of issue preclusion and claim preclusion

1 Registration No. 3747512 issued February 9, 2010 claiming a date of first use anywhere and
in commerce of January 1, 1980.
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
This Decision is not a
Precedent of the TTAB
Cancellation No. 92061096
2

based on a civil action before the Superior Court of California (the “Prior Civil
Action”).2 The motion is fully briefed.3
Preliminary Matter
Pursuant to the Board’s October 15, 2015 order granting Respondent’s motion to
dismiss for failure to state a claim of fraud, Petitioner was allowed time to file an
amended petition to cancel to properly plead her claim of fraud. In response,
Petitioner filed an amended pleading on November 5, 2015. Although Petitioner
indicates in the amended petition to cancel that the “grounds for cancellation are
[f]raud,” Petitioner also includes allegations regarding likelihood of confusion under
Section 2(d). See 19 TTABVUE 4, ¶ 4.
Grounds for cancellation under Section 14 of the Trademark Act are limited for a
registration that has been in existence for five years; Section 2(d) is not one of those
grounds. See Otto Internat’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB
2007); TBMP § 307.02 . The original petition to cancel was filed March 12, 2015 after
the February 9, 2015 five-year anniversary for the registration at issue. Therefore,

2 Superior Court of California, styled Shirley Everett-Dicko v. Everett and Jones Barbeque-
Jack London, LLC, et al, case no. RG12634726.
3 Although neither party has objected to the evidence submitted in connection with this
motion for summary judgment on the basis of lack of authentication, several of the documents
submitted are unauthenticated. See TBMP § 528.05 (2016). The 2010 amendments to Fed. R.
Civ. P. 56(c)(2) allow a court to consider unauthenticated documents on summary judgment,
eliminating the unequivocal requirement that documents submitted in connection with such
a motion must be authenticated. Fed. R. Civ. P. 56(c)(2) (Advisory Committee notes) (2010
amendment). Inasmuch as neither party has objected to the evidence submitted in connection
with the motion for summary judgment based on lack of authentication, we have considered
it.

Cancellation No. 92061096
3

any claim of likelihood of confusion is time-barred and will be given no consideration
by the Board. Paragraph 4 of the November 5, 2015 amended petition to cancel is
hereby stricken. See Fed. R. Civ. P. 12(f); Alcatraz Media, Inc. v. Chesapeake Marine
Tours, Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d, 565 F. App’x 900 (Fed.
Cir. 2014); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292 (TTAB
1999); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d
1435, 1438 (TTAB 1996); TBMP § 506.01 (on its own initiative, the Board may strike
an impermissible claim from a pleading).
We now turn to the merits of the motion.
Summary Judgment
Entry of summary judgment is appropriate only where there are no genuine
disputes as to any material facts, thus allowing the case to be resolved as a matter of
law. Fed. R. Civ. P. 56(a). 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. See
Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471,
1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed
in the light most favorable to the non-movant, and all justifiable 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. The
Board may not resolve genuine disputes as to material facts on summary judgment;
Cancellation No. 92061096
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it may only ascertain whether genuine disputes as to material facts exist. See Lloyd’s
Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
Issue Preclusion
Collateral estoppel or issue preclusion bars relitigation of the same issue in a
second action. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113
USPQ2d 2045, 2051 (2015). In Parklane Hosiery Co., Inc. v. Shore, 439 U.S. 322
(1979), the Supreme Court explained that “[u]nder the doctrine of collateral estoppel,
… the second action is upon a different cause of action and the judgment in the prior
suit precludes re-litigation of issues actually litigated and necessary to the outcome
of the first action.” Parklane, 439 U.S. at 326 n.5. 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) that determination of the issue was
necessary in entering judgment in the prior proceeding; and (4) that the party with
the burden of proof on that issue in the second proceeding had a full and fair
opportunity to litigate the issue in the prior proceeding. See NH Beach Pizza LLC v.
Cristy’s Pizza Inc., 119 USPQ2d 1861, 1864 (TTAB 2016) (citing Montana v. United
States, 440 U.S. 147, 153-54 (1979)). State court findings of fact have been found to
allow issue preclusion. See, e.g., Mother’s Restaurant, Inc., 221 USPQ at 397; Midland
Coop., Inc. v. Midland Internat’l Corp., 164 USPQ 579 (C.C.P.A. 1970).
Respondent argues that Petitioner is precluded from bringing her fraud claim
because that claim was litigated in the Prior Civil Action.

The Prior Civil Action
In the Prior Civil Action, Petitioner asserted ten claims,4 including, fraud.
Petitioner included the following pertinent allegations in the complaint for the Prior
Civil Action:
56. [Respondent]’s5 intentional and willful false and misleading
statements … was done in silence and concealment ...

64. On February 9, 2010, [Respondent] fraudulently became the
registered owner of trademark registration number 3,747,512 (Everett
and Jones) after falsely claiming to be the owner of trademark
registration number 2,612,132 (Everett and Jones Barbeque) on its
trademark application.

149. The applications and registrations by [Respondent] in the United
States Patent and Trademark Office on the Principal Register were
obtained fraudulently and should be invalidated ...

150. [Respondent] intentionally, willfully and without justification made
false and misleading statements [in the application] to obtain … Reg.
No. 3747512 on the Principle Register at the United States Patent and
Trademark Office. The trademarks had been assigned to [Petitioner]
and Super Que, LLC …

152. [Petitioner] desires a judicial determination of her rights and a
declaration as to the validity of [Respondent’s application and
registration] ….

20 TTABVUE 59, 62-63, and 93-94. Petitioner sought various forms of relief,
including, in pertinent part:

4 The claims for relief asserted by Petitioner in the Prior Civil Action were entitled as: 1)
gross negligence, 2) breach of contract, 3) breach of fiduciary duty, 4) fraud, 5) fraudulent
conveyance, 6) retaliation, 7) unfair competition, 8) right of inspection of corporate records,
9) expulsion of members, and 10) declaratory and injunctive relief. 20 TTABVUE 15-96.
5 The defendants in the Prior Civil Action are Respondent and other individuals and
companies. For ease of reference, however, the Board refers to the defendants, when
including Everett and Jones Barbeque – Jack London, LLC, as “Respondent.”
Cancellation No. 92061096
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B. That this court order a temporary, preliminary and/or permanent
injunctive relief: … that …[Respondent] and its agents, officers and
employees be enjoined and restrained from all activity based upon the
unlawful registration of the three trademarks on file at the United
States Patent and Trademark Office on the Principal Register; …

D. That this Court issue a temporary, preliminary or permanent
injunctive relief; restraining [Respondent] from acting on the
applications and registrations by [Respondent] in the United States
Patent and Trademark Office on the Principal Register be enjoined and
be invalidated and declare to be lawfully in the name of [Petitioner] and
Super Que LLC ….

20 TTABVUE 96-99. The court issued an order stating, in pertinent part:
[O]ral and documentary evidence was introduced on behalf of the
respective parties … and the cause was argued and submitted for
decision. The court having considered the evidence and heard and read
the arguments of counsel and being fully advised, issues the following
judgement based thereon: …

[Petitioner] asserted and sought damages and other relief based on the
following alleged matters in the Fourth Cause of Action for Fraud: …

The Complaint alleged that [Respondent] falsely stated to the United
States Patent and Trademark Office that [Respondent was the owner]
of the U.S. Trademark Registration Numbers 2612132 and/or 2571217
to fraudulently obtained one of the United States Trademark
Registrations.

The Complaint alleged that on February 9, 2010 [Respondent]
fraudulently became the registered owner of the Trademark
Registration Number 3,872,512 …

[Petitioner] asserted and sought relief in the Tenth Cause of Action for
Declaratory and Injunctive Relief based on all of the facts and
allegations set forth above.

In the Complaint, [Petitioner] requested a judicial determination of her
rights and as to the validity of the [Respondent’s] applications and
registration for the trademarks “Everett and Jones,” “Everett and Jones
Barbeque” … in the United States Patent and Trademark Office on the
Principal Register.

Cancellation No. 92061096
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Upon the close of [Petitioner’s] presentation of evidence, [Respondent],
moved for non-suit pursuant to California Code of Civil Procedure § 581c
and said motion was GRANTED by the Court with respect to claims for
relief numbers 1,2,3,4,6,7,8 and with respect to the claim for Injunctive
Relief in the 10th cause of action. After granting of said motions, further
testimony and evidence was presented by the parties with respect to the
claim for declaratory relief in the 10th cause of action. After receiving
and considering the evidence and closing arguments, the Court
determined that [Petitioner] is not entitled to any relief on the 10th cause
of action.

WHEREFORE, the Court having considered all of the issues, claims,
testimony, evidence and arguments presented before it including
[Petitioner’s] objection to this proposed Judgment, IT IS ADJUDGED,
that [Petitioner] takes nothing on each of [Petitioner’s] causes of action
from [Respondent].

31 TTABVUE 89, 93-94, and 98-99.6

One of the issues litigated in the Prior Civil Action was whether Reg. No. 3747512
was obtained fraudulently. The court’s findings were based on all evidence presented
regarding whether Respondent deceived the USPTO by falsely claiming it was the
owner of other registrations, namely Registration Nos. 2612132 and 2571217, in
order to obtain the registration at issue.
In the petition to cancel before the Board, Petitioner alleges, in pertinent part,
that:
[Respondent] made the misrepresentation that it was the owner of
[Petitioner’s] U.S. Registration No. 2612132 which was material to the
determination by the USPTO to grant the registration at issue and the
misrepresentation was made by the [Petitioner] with the intent to
deceive the USPTO into issuing the registration.

6 Petitioner’s appeal of the Superior Court’s judgment was dismissed by the California Court
of Appeal, First Appellate District, Division Three on October 20, 2015. 31 TTABVUE 200-
201.
Cancellation No. 92061096
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[Respondent] falsely claimed ownership of [Petitioner’s] “EVERETT
AND JONES BARBEQUE” mark and registration. [Respondent] did not
believe that it was the owner of U.S. Registration No. 2612132 because
the [Respondent] had a license agreement with the listed owner on the
registration; Everett and Jones Barbeque Inc.

19 TTABVUE 5-6.
Identity of Issues
Petitioner argues that the Prior Civil Action does not involve an identity of issues
because, inter alia, at the time of the Prior Civil Action her “concurrent use
application rights had not yet arisen because she had not filed a concurrent use
application. New allegations of [Respondent’s] infringement, actual fraud,
misrepresentations, and fraudulent statements have occurred after the CA Superior
Court Action ended, and were never actually litigated or finally determined”; and that
concurrent use rights can only be determined by the USPTO, not the California
Superior Court. 32 TTABVUE 10 and 12. This proceeding is not a concurrent use
proceeding, and Reg. No. 3747512 is not geographically restricted. During the
pendency of this proceeding, Petitioner filed concurrent use application Serial No.
86820463 for EVERETT AND JONES BARBEQUE for “aprons; baseball caps; t-
shirts” on November 14, 2015 but that application is still pending. 31 TTABVUE 93-
94. Petitioner fails to explain how a recently filed concurrent use application could
affect the parties’ rights relevant to a fraud allegedly committed in 2010. See Fed. R.
Civ. P. 56(c)(1); Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295,
1297-98 (Fed. Cir. 1991) (“A nonmovant, on the other hand, ‘must do more than
merely raise some doubt as to the existence of a fact; evidence must be forthcoming
Cancellation No. 92061096
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from the nonmovant which would be sufficient to require submission to the jury of
the dispute over the fact.’”); Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1783 (Fed. Cir. 1990) (“Where a motion for summary
judgment is made and supported in accordance with [Fed. R. Civ. P. 56], it is
incumbent on the non-movant in a summary judgment proceeding to proffer
countering evidence sufficient to create a genuine factual dispute.”); Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1795-96 (Fed. Cir. 1987);
Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986).
Upon the record before us, the requirement of identity of issues in the Prior Civil
Action and this cancellation proceeding is met. In its order, the court in the Prior
Civil Action considered whether Respondent knowingly and wilfully claimed, falsely,
to be the owner of Registration Nos. 2612132 and/or 2571217 in order to obtain the
registration at issue. Likewise, in the petition to cancel, Petitioner makes the same
allegations.
Actually Litigated
The issue of whether Respondent obtained its registration fraudulently was
actually litigated in the Prior Civil Action as contemplated by the doctrine of issue
preclusion. This requirement is “generally satisfied if the parties to the original action
disputed the issue and the trier of fact resolved it.” Mothers’ Restaurant Inc., 221
USPQ at 397 (quoting Continental Can Co. v. Marshall, 603 F.2d 590, 596 (7th Cir.
1979)). As noted in the Court’s order, the parties presented “oral and documentary
evidence” and the Court considered and based its decision on “all of the issues, claims,
Cancellation No. 92061096
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testimony, evidence and arguments presented before it.” That the issue was litigated
is reconfirmed by the fact that the Court also considered Petitioner’s objection to the
entry of the Court’s judgment.
While Petitioner argues that “[n]ew allegations of [Respondent’s] infringement,
actual fraud, misrepresentations, and fraudulent statements have occurred after the
CA Superior Court Action ended, and were never actually litigated or finally
determined,” Petitioner, as noted above, has not pleaded any new allegations relevant
to her fraud claim. In any event, any such allegations relevant to Respondent’s
alleged fraudulent prosecution of the registration at issue would have existed at the
time Petitioner filed the Prior Civil Action and therefore do not defeat the application
of issue preclusion. Cf., e.g., NH Beach Pizza LLC, 119 USPQ2d at 1865.
Determinations Necessary to the Judgment
In order to give preclusive effect to a particular finding in a prior case, that finding
must have been necessary to the judgment rendered in the previous action. The
requirement that a finding be “necessary” to a judgment does not mean that the
finding must be so crucial that, without it, the judgment could not stand. Mother’s
Restaurant, Inc., 221 USPQ at 398. The purpose of the requirement is to prevent the
incidental or collateral determination of a nonessential issue from precluding
reconsideration of that issue in later litigation. Id.
Petitioner’s claim of fraud upon the USPTO was a central claim in the Prior Civil
Action and was clearly addressed and determined by the Court. Though the court’s
Cancellation No. 92061096
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final judgment did not specify why Petitioner’s fraud claim was denied,7 the court’s
summary of Petitioner’s claims and legal conclusions found in the judgment detail
the scope of the court’s determination leading to its judgment. After consideration,
the court denied Petitioner’s claims for relief, including those based on fraud, in their
entirety.
This is not a case where the consequences of a second proceeding involving the
same issues were unforeseen. The Board suspended this proceeding pending the
outcome of the Prior Civil Action. 22 TTABVUE. “Because the proceedings in the PTO
were stayed pending the completion of the state action, [Petitioner] should have been
aware of the possibility that the Board would accord preclusive effect to the state
court findings.” Mother’s Restaurant Inc., 221 USPQ at 399.
Opportunity to Litigate the Issue
Petitioner was the sole plaintiff in the Prior Civil Action. As noted, the court’s
judgment in the Prior Civil Action issued only after Petitioner presented her
arguments and evidence in support of all her claims, including those of fraud. See,
e.g., NH Beach Pizza, 119 USPQ2d at 1865. Accordingly, this last factor of issue
preclusion has been satisfied.
Having considered the parties’ arguments and submissions, and confronted with
a judicial determination denying Petitioner all relief on its claims based on fraud,
including her claim that Respondent obtained its registration by means of fraud on
the USPTO, and viewing the record before us in the light most favorable to Petitioner

7 The transcript of the proceedings before the Court is incomplete. 31 TTABVUE 67-72.
Cancellation No. 92061096
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as the non-movant, we find that issue preclusion bars Petitioner from re-litigating
the allegation of fraud presented in this cancellation proceeding. Accordingly,
Respondent’s motion for summary judgment on the basis of issue preclusion is
granted. The petition for cancellation is dismissed with prejudice. In light of our
determination, we need not and do not address Respondent’s motion for summary
judgment on the basis of claim preclusion.