Standard International Management, LLCv.One Step Up, Ltd.

Trademark Trial and Appeal Board

Nov 26, 2019

91243645 (T.T.A.B. Nov. 26, 2019)

RK
November 26, 2019

Opposition No. 91243645

Standard International Management, LLC

v.
One Step Up, Ltd.

Before Cataldo, Bergsman, and Shaw,
Administrative Trademark Judges

By the Board:

On September 17, 2018, Opposer Standard International Management, LLC
filed a notice of opposition1 against Applicant One Step Up, Ltd.’s Application Serial
No. 877393822 for the mark BROOKLYN STANDARD in standard characters for
“Surgical scrub tops; surgical scrub pants” in International Class 10 and “Men’s and
women’s work apparel, namely, jackets, sweaters, sweatshirts, tops, t-shirts, shirts,
pants, shorts, hats. Men’s apparel, namely, jackets, sweaters, tops, T-shirts, shirts,
shorts, underwear, athletic pants, athletic shirts, athletic sweatshirts, athletic
shorts, bottoms” in International Class 25. As grounds for the opposition, Opposer

1 1 TTABVUE. Unless otherwise specified, citations are to the TTABVUE record in this
opposition proceeding.
2 Filed on December 31, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), with a disclaimer of BROOKLYN.
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
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91243645

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has asserted a claim of priority and likelihood of confusion, based on its common
law use of and federal registrations3 for marks comprised wholly or consisting in
part of the term STANDARD (“Opposer’s STANDARD marks”), as well as a claim of
res judicata.4 The Board issued an institution order whereby Applicant was allowed
until October 27, 2018, to answer the notice of opposition.5 Applicant timely filed its
answer on October 26, 2018.6
This matter now comes up on Opposer’s motion (filed May 28, 2019) seeking
summary judgment on its claim of res judicata based on judgments rendered

3 Registration No. 2272545 for THE STANDARD in typed form for, inter alia, “T-shirts,
headwear, jackets, sweatshirts, robes and shoes” in International Class 25. Issued August
24, 1999, on the Principal Register under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a). Combined declaration under Sections 8 and 15 of the Trademark Act, 15 U.S.C.
§§ 1058 and 1065, accepted and acknowledged on March 8, 2005; combined declaration
under Sections 8 and 9 of the Trademark Act, 15 U.S.C. §§ 1058 and 1059, accepted and
granted on May 19, 2009.
Registration No. 2293007 for STANDARD in typed form for, inter alia, “T-shirts,
headwear, jackets, sweatshirts, robes and shoes” in International Class 25. Issued
November 16, 1999, on the Principal Register under Section 1(a) of the Trademark Act.
Combined declaration under Sections 8 and 15 of the Trademark Act accepted and
acknowledged on March 8, 2005; combined declaration under Sections 8 and 9 of the
Trademark Act accepted and granted on May 19, 2009.
Registration No. 3830438 for THE STANDARD and design for, inter alia, “Wearing
apparel, namely, T-shirts, men’s and women’s underwear, headwear, jackets, sweatshirts,
robes, bathing suits” in International Class 25. Issued August 10, 2010, on the Principal
Register under Section 1(a) of the Trademark Act. Declaration under Section 8 of the
Trademark Act accepted on May 13, 2017. Declaration under Section 15 of the Trademark
Act acknowledged on May 13, 2017, as to services in International Classes 37, 38, 39, 41, 43
and 44. Goods, including those listed in International Class 25, were not claimed in the
Section 15 affidavit of incontestability.
4 1 TTABVUE 4-5, 7-8.
5 2 TTABVUE 3.
6 4 TTABVUE.
Opposition No. 91243645

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against Applicant in two (2) prior Board proceedings between the parties, namely,
Opposition Nos. 91231240 and 91237233.7
Prior Proceeding I: Opposition No. 91231240
On November 16, 2016, Opposer filed a notice of opposition8 against Application
Serial No. 86903435 for the mark BROOKLYN STANDARD in standard characters
for “Men’s apparel, namely, jackets, sweaters, tops, T-shirts, shirts, shorts,
underwear, athletic pants, athletic shirts, athletic sweatshirts, athletic shorts,
bottoms” in International Class 25.9 Opposer asserted a claim of priority and
likelihood of confusion based on the same registrations pleaded herein as well as
common law use.10 Applicant failed to file an answer so the Board issued a notice of
default, whereby Applicant was allowed thirty days to show cause why default
judgment should not be entered against Applicant.11 Applicant did not respond, so
the Board entered default judgment against Applicant on August 22, 2017.12
Applicant neither appealed nor sought relief from the judgment.
Prior Proceeding II: Opposition No. 91237233
Opposer filed a notice of opposition on September 27, 2017, against Application
Serial No. 87045385 for the mark BROOKLYN STANDARD in standard characters

7 8 TTABVUE 5-6. A copy of the motion for summary judgment is also noted at 7
TTABVUE. Since we presume the later-filed motion was intended to supersede the earlier
motion, we have taken the motion at 8 TTABVUE as the operative motion.
8 1 TTABVUE (Opposition No. 91231240).
9 Filed February 10, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b);
BROOKLYN disclaimed.
10 1 TTABVUE 4-5 (Opposition No. 91231240).
11 12 TTABVUE (Opposition No. 91231240).
12 13 TTABVUE (Opposition No. 91231240).
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for “Medical wearing apparel, namely, scrub tops and pants” in International Class
10 and “Men’s and women’s work apparel, namely, jackets, sweaters, sweatshirts,
tops, t-shirts, shirts, pants, shorts, hats” in International Class 25.13 Opposer
asserted a claim of priority and likelihood of confusion based on the registrations
pleaded herein as well as common law use, and further asserted a claim of res
judicata based on Opposition No. 91231240.14 Applicant failed to answer so the
Board issued notice of default.15 Applicant failed to respond, thereby resulting in
the entry of default judgment on January 23, 2018.16 Applicant neither appealed
nor sought relief from the judgment.
Opposer’s Motion for Summary Judgment
A motion for summary judgment is a pretrial device intended to save the time
and expense of a full trial when the moving party is able to demonstrate, prior to
trial, that there is no genuine dispute of material fact, and that it is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477
U.S. 317 (1986); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992); Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The evidence must be viewed in a light
most favorable to the non-moving party, and all reasonable inferences are to be

13 1 TTABVUE (Opposition No. 91237233).
14 Id. at 4-5, 7-8.
15 4 TTABVUE (Opposition No. 91237233).
16 5 TTABVUE (Opposition No. 91237233).
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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.
By its motion, Opposer seeks summary judgment on its claim of res judicata. We
note that the doctrine of res judicata encompasses both issue preclusion and claim
preclusion. See Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.3d 1368, 79
USPQ2d 1376, 1378 (Fed. Cir. 2006). Opposer’s motion is based on claim preclusion.
Claim preclusion bars a second action if there is: (1) an identity of parties or
their privies; (2) an earlier final judgment on the merits of a claim; and (3) the
second claim is based on the same set of transactional facts as the first. See Jet, Inc.
v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
A. Identity of Parties or Privies
It is readily apparent from the records of the present and prior proceedings that
the parties are identical. This is undisputed by Applicant. Accordingly, there is no
genuine dispute of material fact as to the first element of claim preclusion.
B. Final Judgment on Merits of Earlier Claim
As to the second element, Applicant contends that the dispositions in the prior
oppositions should not operate as res judicata because “[t]he merits were not
decided” in those proceedings.17 However, default judgments have been consistently
found sufficient to support the application of res judicata. See Morris v. Jones, 329
U.S. 545, 550-51, 67 S.Ct. 451, 91 L.Ed. 488 (1947) (“‘A judgment of a court having
jurisdiction of the parties and of the subject matter operates as res judicata, in the

17 12 TTABVUE 5.
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absence of fraud or collusion, even if obtained upon a default.’”) quoting Riehle v.
Margolies, 279 U.S. 218, 225, 49 S.Ct. 310, 73 L.Ed. 669 (1929); Int’l Nutrition Co. v.
Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000)
(“default judgments can give rise to res judicata”); Wells Cargo, Inc. v. Wells Cargo,
Inc., 606 F.2d 961, 203 USPQ 564, 566 (CCPA 1979) (“[d]efault judgments generally
operate as res judicata”). Applicant has put forth no argument or support for its
position to the contrary. Accordingly, we find no genuine dispute that the second
element of claim preclusion has been satisfied.
C. Same Set of Transactional Facts
As to this final element, one of the considerations in determining “whether two
opposition proceedings, against two applications, involve the same ‘claim’ for
purposes of the claim preclusion doctrine [is to] look[] to whether the mark involved
in the first proceeding is the same mark, in terms of commercial impression, as the
mark involved in the second proceeding ….” Institut National des Appellations
d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1894 (TTAB 1998). Such a
determination requires more than that the marks be “similar enough to each other,
in terms of commercial impression, to be deemed to be confusingly similar under a
likelihood of confusion analysis ….” Id. at 1895. “[T]he proper test for determining
whether two marks have the same commercial impression, for purposes of the claim
preclusion doctrine, is the test used in tacking situations, i.e., whether the marks
are legal equivalents.” Id. Marks will be considered as legal equivalents if they
“create the same, continuing commercial impression so that consumers consider
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both as the same mark.” Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 113 USPQ2d
1365, 1367 (2015) (internal quotation marks and citations omitted).
The subject application, like the applications in the prior oppositions, was filed
under Section 1(b) of the Trademark Act, and the mark involved herein, i.e.,
BROOKLYN STANDARD in standard characters, is identical to the marks that
were the subject of the prior oppositions. Applicant’s contention that “[t]he marks
are not the same” is unexplained by Applicant and is, in any event, incorrect on its
face.
Further, the present application seeks to register the mark for the same goods
that Applicant sought to previously register. Specifically, the Class 25 goods in
Application Serial No. 86903435 (“Men’s apparel, namely, jackets, sweaters, tops, T-
shirts, shirts, shorts, underwear, athletic pants, athletic shirts, athletic sweatshirts,
athletic shorts, bottoms”) and Application Serial No. 87045385 (“Men’s and women’s
work apparel, namely, jackets, sweaters, sweatshirts, tops, t-shirts, shirts, pants,
shorts, hats”), the subjects of Opposition Nos. 91231240 and 91237233 respectively,
have simply been combined to form the Class 25 goods in the application involved
herein. Moreover, the Class 10 goods in Application Serial No. 87045385 (“Medical
wearing apparel, namely, scrub tops and pants”) have merely been narrowed to
“Surgical scrub tops; surgical scrub pants” in the present application. Since the
Class 10 goods in the present application are encompassed by the Class 10 goods in
the prior application, there is no genuine dispute that there is identity, or at least
substantial identity, between the Class 10 goods in the prior and present
Opposition No. 91243645

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applications. See Super Valu Stores, Inc. v. Exxon Corp., 11 USPQ2d 1539, 1542
(TTAB 1989) (tacking permitted where the marks’ goods or services are the same or
substantially identical).
Additionally, Opposer’s bases for its likelihood of confusion claim in this
proceeding are the same three (3) federal registrations for and common law use of
Opposer’s STANDARD marks that were asserted to support the likelihood of
confusion claim in the prior oppositions. As such, there is no dispute that evidence
of priority and likelihood of confusion to be presented in this proceeding would be
identical to evidence of priority and likelihood of confusion that Opposer would have
presented in the prior proceedings. See Institut National des Appellations d’Origine,
47 USPQ2d at 1894 (likely identity of evidence between prior and present
proceedings a factor to be considered in claim preclusion analysis).
Accordingly, we find no genuine dispute that the prior and present proceedings
are based on the same set of transactional facts. Indeed, in view of the identity of
the marks and the lack of any significant or material difference between the present
and prior applications, the application herein can only be seen as an attempt to
avoid the preclusive effect of the previous judgments. See Miller Brewing Co. v. Coy
Int’l Corp., 230 USPQ 675, 678 (TTAB 1986). This we cannot allow.
Opposer’s motion for summary judgment on its claim of res judicata is
GRANTED. Judgment is entered against Applicant and Application Serial No.
87739382 is refused registration.
* * *