Studio van Goghv.Annie Sloan Interiors, Ltd.

Trademark Trial and Appeal Board

Jun 15, 2015

No. 92056853 (T.T.A.B. Jun. 15, 2015)

wbc Mailed: June 15, 2015

Opposition No. 91208788 (parent)

Annie Sloan Interiors, Ltd.

v.

Studio van Gogh

Cancellation No. 92056853

Studio van Gogh

v.

Annie Sloan Interiors, Ltd.

Before Seeherman, Wellington and Shaw,
Administrative Trademark Judges.

By the Board:

In Cancellation No. 92056853, Studio van Gogh (“SVG”) seeks to cancel Annie
Sloan Interiors, Ltd.’s (“ASI”) registration No. 4232734 for the mark CHALK
PAINT in standard characters for “paints for arts and crafts; paints for decorative
purposes”1 asserting claims of genericness and descriptiveness. In Opposition No.
91208788, ASI opposes SVG’s application Serial No. 95600814 for the mark KATHY
VAN GOGH CHALK PAINT COLLECTION in standard characters for “coatings for

1 Registration No. 4232734 issued October 30, 2012.
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
Opposition No. 91208788 and Cancellation No. 92056853
2

wood as paints,”2 asserting claims of likelihood of confusion, dilution and lack of
bona fide intent to use.
This case now comes before the Board on ASI’s motion for summary judgment3
(filed February 10, 2015) based on res judicata or alternatively, licensee estoppel, in
Cancellation No. 92056853 only. The motion has been fully briefed.
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 a light 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

2 Filed April 18, 2012 based on a claim of intent to use under Section 1(b).
3 Although SVG argues that the “issue of licensee estoppel cannot be raised prior to [ASI’s]
filing of Initial Disclosures,” the Board notes that the deadline for making initial
disclosures was November 22, 2014. Response at p. 4. Because ASI’s motion for summary
judgment was filed February 10, 2015 and ASI asserts, in its reply, that it served initial
disclosures on August 5, 2013, the motion is timely. See TBMP § 528.02 and cases cited
therein. Additionally, with respect to ASI’s claim of res judicata, a party may file its motion
for summary judgment based on res judicata even if prior to making its initial disclosures.
See Trademark Rule 2.127(e)(1); Zoba Int’l Corp. v. DVD Format/LOGO Licensing Corp.,
98 USPQ2d 1106, 1108 n.4 (TTAB 2011).
Opposition No. 91208788 and Cancellation No. 92056853
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summary judgment; 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.
Res Judicata - Claim Preclusion
ASI asserts, inter alia, that its Application Serial No. 85408522 was opposed by
SVG in Opposition No. 91207306 (the “’306 opposition”), a proceeding which
involved the same parties and was based on the same claims, namely,
descriptiveness and genericness. Upon motion by ASI to dismiss the ‘306 opposition
pursuant to Fed. R. Civ. P. 12(b)(6) alleging that SVG failed to state a claim upon
which relief can be granted, the Board dismissed the opposition with prejudice in its
March 15, 2015 decision.4 ASI asserts that these undisputed facts establish that
this cancellation proceeding is barred by the doctrine of res judicata.
In its response to the motion for summary judgment, SVG argues, inter alia,
that “there are several different material facts between the two cases, the most
glaring of which is the issue of fraud on the part of ASI in their declaration
regarding Use in Commerce”; and that the ‘306 opposition was not a decision on the
merits. Response at p. 4.
Under the doctrine of claim preclusion, “a judgment on the merits in a prior suit
bars a second suit involving the same parties or their privies based on the same
cause of action.” Jet Inc. v. Sewage Aeration Sys., 55 USPQ2d 1854, 1856 (Fed. Cir.
2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979)).

4 The application then issued as Registration No. 4322847 on April 23, 2013.
Opposition No. 91208788 and Cancellation No. 92056853
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For claim preclusion to apply, therefore, there must be:
(1) identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional facts as the first.

Id.
First Factor – Identity of Parties
There is no dispute that the parties involved in the current cancellation and the
‘306 opposition are the same.
Second Factor – An Earlier Final Judgment on the Merits of a Claim
In its dismissal with prejudice of the ‘306 opposition, the Board granted ASI’s
motion to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6) as
conceded.
Whether the judgment in a prior proceeding was the result of a dismissal with
prejudice or even default, claim preclusion may still apply. See, e.g., Orouba
Agrifoods Processing Co. v. United Food Import, 97 USPQ2d 1310 (TTAB 2010)
(granting summary judgment to registrant on claim preclusion where petitioner’s
opposition had been dismissed with prejudice); La Fara Importing Co. v. F. Lli de
Cecco di Filippo Fara S. Martino S.p.a., 8 USPQ2d 1143, 1146 (TTAB 1988) (“Issue
preclusion operates only as to issues actually litigated, whereas claim preclusion
may operate between the parties simply by virtue of the final judgment.”); Flowers
Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987) (claim
preclusion applies “even when the prior judgment resulted from default, consent, or
Opposition No. 91208788 and Cancellation No. 92056853
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dismissal with prejudice”); USOC v. Bata Shoe Co., 225 USPQ 340, 342 (TTAB
1984) (“default judgments generally operate as res judicata”).
In view thereof, there can be no dispute that the Board’s dismissal with
prejudice for failure to state a claim in the ‘306 opposition was a final judgment
which gives rise to claim preclusion.
Third Factor – A Second Claim Based on the Same Set of Transactional
Facts as the First
This case implicates the defensive doctrine of “bar,” wherein the Board must
analyze whether a plaintiff can bring a subsequent action against a defendant. See
Jet Inc., 55 USPQ2d at 1856 (stating that the doctrine of claim preclusion “has come
to incorporate common law concepts of merger and bar, and will thus also bar a
second suit raising claims based on the same set of transactional facts”) (citing
Migra v. Warren City School Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984)).
RESTATEMENT (SECOND) OF JUDGMENTS § 19 (1982) provides that “a valid and final
personal judgment rendered in favor of the defendant bars another action by the
plaintiff on the same claim.” This bar extends to relitigation of “claims that were
raised or could have been raised” in an earlier action. Allen v. McCurry, 449 U.S. 90,
94 (1980) (emphasis added); Migra, 465 U.S. at 77 n.1. Thus, 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., 891 F.2d 273, 13 USPQ2d 1172, 1173 (Fed. Cir.
1989).
Opposition No. 91208788 and Cancellation No. 92056853
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The Court of Appeals for the Federal Circuit has stated that it is guided by the
analysis set forth in the Restatement of Judgments in determining whether a
plaintiff’s claim in a particular case is barred by claim preclusion. See Jet Inc., 55
USPQ2d at 1856; Chromalloy American Corp. v. Kenneth Gordon (New Orleans),
Ltd., 736 F.2d 694, 222 USPQ 187, 189-90 (Fed. Cir. 1984). Section 24 of the
Restatement, which addresses splitting claims, provides that:
(1) When 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.
(2) What factual grouping constitutes a “transaction”, and what grouping
constitutes a “series”, are to be determined pragmatically, giving weight to
such considerations as whether the facts are related in time, space, origin or
motivation, whether they form a convenient trial unit, and whether their
treatment as a unit conforms to the parties' expectations or business
understanding or usage.

Furthermore, Section 25 of the Restatement provides that the rule of Section 24
applies to extinguish a claim by the plaintiff against the defendant even though the
plaintiff is prepared in the second action
(1) To present evidence or grounds or theories of the case not presented in the
first action, or

(2) To seek remedies or forms of relief not demanded in the first action.

To assess whether the claims are based on the same set of transactional facts,
comment b to Section 24 of the Restatement considers whether there is a common
nucleus of operative facts. As noted, relevant factors include whether the facts are
so woven together as to constitute a single claim in their relatedness in time, space,
Opposition No. 91208788 and Cancellation No. 92056853
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origin, or motivation, and whether, taken together, they form a convenient unit for
trial purposes. Id. The same comment notes that:
Though no single factor is determinative, the relevance of trial convenience
makes it appropriate to ask how far the witnesses or proofs in the second
action would tend to overlap the witnesses or proofs relevant to the first. If
there is a substantial overlap, the second action should ordinarily be held
precluded. But the opposite does not hold true; even when there is not a
substantial overlap, the second action may be precluded if it stems from the
same transaction or series.

Id. Courts have defined “transaction” in terms of a “core of operative facts,” the
“same operative facts,” or the “same nucleus of operative facts,” and “based on the
same, or nearly the same, factual allegations.” Jet Inc., 55 USPQ2d at 1856 (quoting
Herrmann v. Cencom Cable Assoc., Inc., 999 F.2d 223, 226 (7th Cir. 1993)); see also
United States v. Haytian Rep., 154 U.S. 118, 125 (1894) (“One of the tests laid down
for the purpose of determining whether or not the causes of action should have been
joined in one suit is whether the evidence necessary to prove one cause of action
would establish the other.”).
Applying this analysis, we note that SVG, in the ESTTA coversheet5 and body of
the complaint in the ‘306 opposition,6 opposed application Serial No. 85408522 for
the stylized mark:

5 The ESTTA coversheet is read in conjunction with the notice of opposition as an integral
component. See PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928
(TTAB 2005) (“Since ESTTA’s inception, the Board has viewed the ESTTA filing form and
any attachments thereto as comprising a single document or paper being filed with the
Board”).
Here, the ESTTA coversheet also indicates a claim of functionality under Section 2(e)(5) as
a ground for opposition. However, the body of the complaint does not specifically address
this ground.
Opposition No. 91208788 and Cancellation No. 92056853
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for “house paint; interior paint; paints for arts and crafts” in International Class 2
alleging, inter alia, that “’Chalk’ is far too generic a term to be given exclusive
rights to anyone”; that “[c]halk has been used as an ingredient in paint”; and
indicating in the ESTTA coversheet that SVG was asserting the grounds of
descriptiveness under Section 2(e)(1) and genericness under Section 23. ‘306 Notice
of Opposition at p. 1.
In the cancellation proceeding7 now before us, SVG seeks to cancel Registration
No. 42327348 for the mark CHALK PAINT in standard characters for “paints for
arts and crafts; paints for decorative purposes” in International Class 2, indicating
in the ESTTA coversheet that it is asserting the grounds of descriptiveness under
Section 2(e)(1) and genericness under Section 23 and alleging, inter alia, that “the
mark CHALK PAINT is merely descriptive of [ASI’s] products”; that “the term
CHALK PAINT is commonly used in the painting and crafting industry to describe
an ingredient found in the paint”; and that CHALK PAINT is not entitled to
protection because it is generic. Petition to Cancel, ¶¶ 4-9.

6 Filed October 4, 2012.
7 Filed March 4, 2013.
8 The application was filed November 22, 2011 and resulting registration issued October 30,
2012, all during the pendency of the ‘306 opposition.
Opposition No. 91208788 and Cancellation No. 92056853
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Both the ‘306 opposition and the current cancellation involve CHALK PAINT
marks. Although the ‘306 opposition involved a slightly stylized version and the
present mark is shown in standard characters, the marks create substantially the
same commercial impression for purposes of claim preclusion – both marks are for
the term CHALK PAINT and the stylized version does not contain a distinctive
design and the font is only minimally stylized—unless one were to examine it
carefully it would appear to be only block capital letters. See Aromatique, Inc. v.
Arthur H. Lang, 25 USPQ2d 1359, 1361 (TTAB 1992); Miller Brewing Co. v. Coy
International Corp., 230 USPQ 675, 678 (TTAB 1986); J. I. Case Company v. F.L.
Industries, Inc., 229 USPQ 697, 700 (TTAB 1986). Additionally, each proceeding
involves the same or highly similar goods in International Class 2; and each
proceeding involves claims of descriptiveness and genericness.9
Furthermore, prior to the institution of the ‘306 opposition, ASI filed the
application which resulted in Registration No. 4232734, which is the subject of the
current proceeding. As noted, during the pendency of the ‘306 opposition, this
registration issued to ASI. SVG could have included this application and resulting
registration in the ‘306 opposition, but did not.
Considering the pleadings in the ‘306 opposition and the instant cancellation, it
is clear that SVG’s claims of descriptiveness and genericness are based on the same

9 SVG’s argument that the proceedings involve different transactional facts because of
alleged fraud on the part of ASI in its use declaration is unavailing. SVG has neither pled
fraud in the petition to cancel nor has it sought to amend the petition to cancel. See Fed. R.
Civ. P. 15(a). In view thereof, the Board gives this argument no further consideration.
Opposition No. 91208788 and Cancellation No. 92056853
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set of transactional facts, specifically, whether the terms CHALK PAINT as used by
ASI on various types of paint are descriptive or generic. In short, the evidence
necessary to prove descriptiveness and genericness in the ‘306 opposition would
establish descriptiveness and genericness in the current cancellation. Said another
way, the ‘306 opposition and this cancellation are based on the same, or nearly the
same, factual allegations.
Decision
Based on the record before us, we find that there is no genuine dispute as to the
facts underlying the allegation of claim preclusion in this case in light of the Board’s
March 15, 2015 decision rendered in the ‘306 opposition. ASI’s motion for summary
judgment is granted. Judgment is entered against SVG and the petition for
Cancellation No. 92056853 is dismissed with prejudice.10
Cancellation No. 92056853 and Opposition No. 91208788 are no longer
consolidated. Opposition No. 91208788 is resumed and dates are reset as follows:
Expert Disclosures Due 7/6/2015
Discovery Closes 8/5/2015
Plaintiff's Pretrial Disclosures 9/19/2015
Plaintiff's 30-day Trial Period Ends 11/3/2015
Defendant's Pretrial Disclosures 11/18/2015
Defendant's 30-day Trial Period Ends 1/2/2016
Plaintiff's Rebuttal Disclosures 1/17/2016
Plaintiff's 15-day Rebuttal Period Ends 2/16/2016

10 In view of the Board’s order herein, the Board need not and does not reach a decision
regarding the claim of licensee estoppel.
Opposition No. 91208788 and Cancellation No. 92056853
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In each instance, a copy of the transcript of testimony together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of taking of testimony. Trademark Rule 2.125. Briefs shall be filed in
accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129.