Taleda Ford, as Personal Represent-ative of the Estate of Willie L Fordv.Larry Reynolds

Trademark Trial and Appeal Board

Nov 20, 2019

92070410 (T.T.A.B. Nov. 20, 2019)

LTS
November 20, 2019

Cancellation No. 92070410

Taleda Ford, as Personal Representative of
the Estate of Willie L Ford

v.
Larry Reynolds

Before Thurmon, Kuhlke, and Goodman,
Administrative Trademark Judges.

By the Board:

This case comes up on the following motions: (1) Respondent’s motion, filed March
8, 2019, for summary judgment on claim and issue preclusion; (2) Petitioner’s motion,
filed April 30, 2019, to strike Respondent’s reply brief in support of his motion for
summary judgment on the ground that the reply brief exceeds the allowable length
of ten pages; and (3) the motion by Telada Ford, filed July 24, 2019, to substitute for
Petitioner as the personal representative of Petitioner’s estate.
While the parties have not yet exchanged initial disclosures, because the bases for
Respondent’s motion for summary judgment are claim and issue preclusion, the
motion is timely under Trademark Rule 2.127(e)(1). The motion for summary
judgment and motion to substitute are fully briefed. Respondent did not file a
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 ORDER IS NOT A
PRECEDENT OF THE
TTAB
Cancellation No. 92070410

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response to Petitioner’s motion to strike. Petitioner’s motion to strike is granted as
conceded and as well-taken. See Trademark Rule 2.127(a) (“A reply brief shall not
exceed ten pages in length in its entirety.”). We have given no consideration to
Respondent’s reply brief in support of his motion for summary judgment.
The Board has carefully considered all of the parties’ arguments and evidence,
presumes the parties’ familiarity with the factual bases for their filings, and does not
recount the facts or arguments here except as necessary to explain this decision. See
Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
I. Background
A. The Prior Proceeding
On August 29, 2017, Petitioner filed a notice of opposition in Opposition No.
91236388 (the “Prior Proceeding” or “the ’388 Opposition”) against Respondent’s
application for the mark THE DRAMATICS, in standard characters, for
“entertainment in the nature of live performances by music; live performances by a
musical group” in International Class 41.1 As grounds for opposition, Petitioner
alleged: (1) priority and likelihood of confusion under Section 2(d) of the Trademark
Act based on Petitioner’s prior use of the mark THE DRAMATICS in connection with
entertainment services in the nature of live performances by a musical group; and
(2) fraud based on, inter alia, Respondent falsely declaring that no other person has
the right to use the mark in commerce when Respondent knew of Petitioner’s prior

1 Application Serial No. 86519608, filed January 30, 2015, based on use of the mark in
commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). The application issued as
Registration No. 5548100 on August 28, 2018.
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and superior rights to use the mark THE DRAMATICS. ’388 Opposition, 1
TTABVUE. In his answer, Respondent denied the salient allegations in the notice of
opposition and asserted certain affirmative defenses.2 ’388 Opposition, 4 TTABVUE.
On April 18, 2018, the Board granted the motion of Petitioner’s counsel to
withdraw as counsel for Petitioner, and allowed Petitioner thirty days from the date
of the order to appoint new counsel, or to file a paper stating that Petitioner chooses
to represent himself. ’388 Opposition, 9 TTABVUE 1. The Board warned Petitioner
that if he does not file a response, “the Board may issue an order to show cause why
default judgment should not be entered against Opposer [Petitioner] based on
Opposer’s [Petitioner’s] apparent loss of interest in the proceeding.” Id.
Petitioner did not file a response to the Board’s April 18, 2018 order, and on June
8, 2018, the Board issued an order allowing Petitioner thirty days from the date of
the order “to show cause why default judgment should not be entered against Opposer
[Petitioner] based on Opposer’s [Petitioner’s] apparent loss of interest in this
proceeding.” ’388 Opposition, 10 TTABVUE 1.
Petitioner did not respond to the Board’s June 8, 2018 order, and on July 19, 2018,
the Board dismissed the opposition with prejudice based on Petitioner’s apparent loss
of interest in the proceeding. ’388 Opposition, 11 TTABVUE.

2 Respondent also included a counterclaim against Petitioner’s pleaded application in the
notice of opposition. ’388 Opposition, 4 TTABVUE 4-7. In an order dated November 9, 2017,
the Board stated that it would not give the counterclaim any consideration because “the only
type of counterclaim that may be entertained by the Board is a counterclaim for cancellation
of a registration owned by an adverse party.” ’388 Opposition, 5 TTABVUE 1.
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B. The Instant Proceeding
On January 16, 2019, Petitioner filed a petition to cancel in the instant proceeding
against Respondent’s Registration No. 5548100. As grounds for cancellation,
Petitioner alleged: (1) lack of ownership; and (2) priority and likelihood of confusion
under Section 2(d) of the Trademark Act based on Petitioner’s prior use of the mark
THE DRAMATICS. 1 TTABVUE. On February 6, 2019, Petitioner filed an amended
petition to cancel as of right, alleging “lack of ownership (void ab initio)” as the sole
ground for cancellation. 4 TTABVUE.
In lieu of filing an answer, Respondent filed a motion for summary judgment based
on claim and issue preclusion in view of the Board’s July 19, 2018 order in the Prior
Proceeding. 6 TTABVUE.
While Respondent’s motion for summary judgment was pending, the parties
informed the Board that Petitioner passed away, and pursuant to the parties’
agreement, proceedings were suspended on June 26, 2019, “so that Petitioner’s
counsel can learn whether the decedent’s successor in interest intends to continue
litigating this matter.” 16 TTABVUE 1. On July 24, 2019, Telada Ford, as “Personal
Representative of the estate of Willie Ford,” filed a motion to substitute in place of
Mr. Ford and stated her desire “to continue litigating this proceeding as Mr. Ford’s
successor in interest.” 17 TTABVUE 2.
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II. Motion to Substitute
A. Legal Standard
Rule 25 of the Federal Rules of Civil Procedure allows for “Substitution of Parties”
only upon death, incompetence, or transfer of interest. See Fed. R. Civ. P. 25(a)-(c).
Rule 25(a)(1) specifically provides for substitution of parties in the event of death:
If a party dies and the claim is not extinguished, the court may order
substitution of the proper party. A motion for substitution may be made
by any party or by the decedent’s successor or representative. If the
motion is not made within 90 days after service of a statement noting
the death, the action by or against the decedent must be dismissed.
See Fed. R. Civ. P. 25(a)(1). As such, in deciding a motion to substitute under Rule
25(a)(1), we must consider whether: (1) the motion is timely; (2) the pleaded claims
are not extinguished; and (3) the person being substituted is a proper party. In
addition to these substantive requirements, a motion to substitute must also be
properly served. See Fed. R. Civ. P. 25(a)(3). When the requirements of Rule 25(a)(1)
and (a)(3) are satisfied, “[t]he substituted party steps into the same position as the
original party.” Hilao v. Estate of Marcos, 103 F.3d 762, 766 (9th Cir. 1996).
B. The Parties’ Arguments
Ms. Ford argues that she should be substituted in place of Mr. Ford as the
Petitioner because: (1) Mr. Ford died in Michigan on May 28, 2019; (2) the Wayne
County Probate Court in Michigan appointed Ms. Ford as a “Personal Representative
of the estate of Willie Ford on June 26, 2019[;]” and (3) Ms. Ford “desires to continue
litigating this proceeding as Willie Ford’s successor in interest.” 17 TTABVUE 2.
In response, Respondent argues that: (1) Ms. Ford is not currently and has never
performed under the name THE DRAMATICS, nor ever been a member of the group,
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and therefore “she cannot make a claim for the exclusive rights in the name for the
listed services[;]” (2) Ms. Ford married Mr. Ford after he had already abandoned any
rights in the name THE DRAMATICS; and (3) Mr. Ford’s claims were previously fully
and finally adjudicated against Mr. Ford, and therefore Ms. Ford is also barred from
pursuing the same claims. 18 TTABVUE 2-5.
In reply, Ms. Ford argues that: (1) Respondent fails to address the merits of her
motion to substitute and instead reargues Respondent’s motion for summary
judgment; and (2) she has satisfied the requirements of Fed. R. Civ. P. 25(a) to
substitute for the deceased Mr. Ford. 19 TTABVUE 2-4.
C. Determination
We find that Ms. Ford has satisfied the substantive requirements of Rule 25(a)(1)
and the service requirement of Rule 25(a)(3). First, Respondent does not dispute the
timeliness of Ms. Ford’s motion. Nor could he. Mr. Ford died on May 28, 2019, and
Ms. Ford filed the motion to substitute, with the notice of Mr. Ford’s death included
therein, on July 24, 2019. As such, the motion to substitute is timely. See Fed. R. Civ.
P. 25(a)(1).
Second, Mr. Ford’s pleaded claims are not extinguished by his death. See Fed. R.
Civ. P. 25(a)(1). To the extent that Mr. Ford owned rights in the name THE
DRAMATICS, those rights became part of the assets of his estate upon his death. See
Estate of Presley v. Russen, 513 F. Supp. 1339, 211 USPQ 415, 428 (D.N.J. 1981)
(“[E]ven if Presley had licensed certain property rights such as service marks, the
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ownership of these rights and standing to protect them, remained with Presley, and,
after his death became part of the assets of his estate.”)
Third, Ms. Ford is a proper party for substitution. In determining the “proper
party” for substitution, courts generally look to the “legal representative” of the
deceased. See Sinito v. U.S. Dep’t of Justice, 176 F.3d 512, 516 (D.C. Cir. 1999). Here,
Ms. Ford attached a document from the State of Michigan Probate Court in Wayne
County, appointing Ms. Ford as “Personal Representative” of Mr. Ford’s estate. 17
TTABVUE 6.
Finally, Ms. Ford has satisfied the service requirements of Rule 25(a)(3) by serving
her motion to substitute by email on Respondent’s counsel. See Trademark Rule
2.119(b).
Because all three requirements of Rule 25(a)(1) and the service requirement of
Rule 25(a)(3) are satisfied, Ms. Ford’s motion to substitute is granted. Ms. Ford, as
Personal Representative of the Estate of Mr. Ford, may step into the same position
as Mr. Ford as a party in this action. The case caption has been updated accordingly.
III. Motion for Summary Judgment
A. Legal Standard
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). The party seeking summary judgment bears the burden of
demonstrating the absence of any genuine dispute of material fact, and that it is
entitled to a judgment under the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
Cancellation No. 92070410

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317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting, 833 F.2d 1560, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). 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 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; 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 1544.
B. The Parties’ Arguments
Respondent moves for summary judgment on the grounds that Petitioner’s claims
are barred by claim and issue preclusion. 6 TTABVUE. As to claim preclusion,
Respondent argues that: (1) the parties to the Prior Proceeding are identical; (2) the
Prior Proceeding and the instant proceeding are based on the same set of
transactional facts; and (3) a final judgment was entered in the Prior Proceeding,
dismissing Petitioner’s claims. Id. at 10-14. As to issue preclusion, Respondent argues
that: (1) “the issues of fraud and ownership of the trademark are the same issues that
were litigated” in the Prior Proceeding; (2) the specific issues Petitioner raises in its
petition to cancel were fully litigated in the Prior Proceeding; (3) the issues decided
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9
in the Prior Proceeding were necessary to the judgment there; and (4) Petitioner had
a full and fair opportunity in the Prior Proceeding to litigate the same issues that he
raises in his amended petition to cancel. Id. at 16.
In response, Petitioner argues that claim preclusion does not apply because:
(1) Petitioner’s void ab initio claim does not arise out of the same transactional facts
as those at issue in the Prior Proceeding in that Petitioner’s ownership claim is based
on Petitioner’s established right as an owner and none of the evidence presented in
this proceeding was presented in the Prior Proceeding; (2) Petitioner’s claim in this
proceeding is different because the bases of the claim, and the evidence and proofs
necessary to sustain the claims in the Prior Proceeding and the void ab initio claim
raised in this proceeding, are distinct; and (3) the Prior Proceeding was never
adjudicated on the merits. 10 TTABVUE 11-14. As to issue preclusion, Petitioner
argues that issue preclusion does not apply because: (1) the issue of sole ownership of
THE DRAMATICS mark in this proceeding is not identical to the issues decided in
the Prior Proceeding, where Respondent did not argue or submit evidence to support
his position that he was the sole owner of THE DRAMATICS mark; and (2) the issue
of ownership of THE DRAMATICS mark was not decided in the Prior Proceeding
because it was not raised. Id. at 8-11. Petitioner further argues that his claim should
be heard on the merits “in view of the blatant misconduct of [Respondent]” and
because granting Respondent’s motion for summary judgment “would undoubtedly
impair Petitioner’s established rights in The Dramatics name.” Id. at 14.
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C. Determination
Res judicata is the earlier name for the judicial doctrine now generally known as
claim preclusion. See Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.4
(TTAB 2015) (citing Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 110 USPQ2d
1261, 1263 (Fed. Cir. 2014)). Broadly stated, 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.,
223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co.
v. Shore, 439 U.S. 322, 326 n.5 (1979)). More specifically, in the circumstances
presented by the case at hand, “[c]laim preclusion refers to the effect of a judgment
in foreclosing litigation of a matter that never has been litigated, because of a
determination that it should have been advanced in an earlier suit. Claim preclusion
therefore encompasses the law of merger and bar.” Migra v. Warren City School Dist.
Bd. of Educ., 465 U.S. 75, 77 n.1 (1984); Nasalok Coating Corp. v. Nylok Corp., 522
F.2d 1320, 86 USPQ2d 1369, 1371 (Fed. Cir. 2008).
A valid and final judgment rendered in favor of the defendant bars another action
by the plaintiff on the same claim and encompasses claims that were raised or could
have been raised in the earlier action. See Urock Network, 115 USPQ2d at 1412
(citing Allen v. McCurry, 449 U.S. 90, 94 (1980)). However, “[i]f the claim did not exist
at the time of the earlier action, it could not have been asserted in that action and is
not barred by res judicata.” Aspex Eyewear Inc. v. Marchon Eyewear Inc., 672 F.3d
1335, 101 USPQ2d 2015, 2021 (Fed. Cir. 2012). In view of the foregoing, “a second
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suit will be barred by claim preclusion if: (1) there is identity of parties (or their
privies); (2) there has been 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.” Jet
Inc., 55 USPQ2d at 1856 (citing Parklane Hosiery, 439 U.S. at 326 n.5).
1. First Factor: Identity of Parties
There is no dispute that Respondent is the same defendant in both the instant
proceeding and the Prior Proceeding. Likewise, Mr. Ford was the plaintiff in the Prior
Proceeding and the plaintiff in this proceeding, until substituted by Ms. Ford, who is
in privity with Mr. Ford as the personal representative of Mr. Ford’s estate. See Furst
v. U.S., 678 F.2d 147, 155 (Ct. Cl. 1982) (“The plaintiff as executor of decedent’s estate
is a party in privity with the decedent.”).
Accordingly, there is no genuine dispute of material fact that there is an identity
of parties between the two proceedings. The first factor of claim preclusion is
therefore satisfied.
2. Second Factor: An Earlier Final Judgment On The Merits
of a Claim
The Board dismissed the Prior Proceeding with prejudice based on Petitioner’s
loss of interest. ’388 Opposition, 11 TTABVUE. “A judgment of a court having
jurisdiction of the parties and of the subject matter operates as res judicata, in the
absence of fraud or collusion, even if obtained upon a default.” Morris v. Jones, 329
U.S. 545, 550-51 (1947) (quoting Riehle v. Marolies, 279 U.S. 218, 225 (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”); Bass Anglers Sportsman
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Soc’y of Am., Inc. v. Bass Pro Lures, Inc., 200 USPQ 819, 822 (TTAB 1978) (“[T]he
application of a legal doctrine which would be appropriate to a judgment after trial is
equally appropriate to a judgment by default.”).
Accordingly, there is no genuine dispute of material fact that there has been an
earlier final judgment on the merits of a claim. The second factor of claim preclusion
is therefore satisfied.
3. Third factor: A Second Claim Based on the Same Set of
Transactional Facts as the First
Respondent’s motion for summary judgment 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. As noted above, “[t]his
bar extends to relitigation of ‘claims that were raised or could have been raised’ in an
earlier action.” Urock Network, LLC, 115 USPQ2d at 1412 (citing Allen v. McCurry,
449 U.S. at 94) (emphasis provided in Urock). “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.’” Id. (quoting Vitaline Corp. v.
General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1173 (Fed. Cir. 1989)). Here, we
must determine whether Petitioner’s claim of “lack of ownership” in the instant
proceeding arises out of the same set of transactional facts and thus could have been
brought in the previous proceeding. Id.
“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
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plaintiff’s claim in a particular case is barred by claim preclusion.” Id. 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.
Restatement (Second) of Judgments § 24 (1982).
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,
origin, or motivation, and whether, taken together, they form a convenient unit for
trial purposes. Id. “Courts have defined ‘transaction’ in terms of a ‘core of operative
facts,’ the ‘same operative facts,’ the ‘same nucleus of operative facts,’ and ‘the same,
or nearly the same, factual allegations.’” Urock Network, LLC, 115 USPQ2d at 1413
(quoting Jet Inc., 55 USPQ2d at 1856); see also U.S. 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.”).
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Applying this analysis, Petitioner sought to prevent the registration of what would
become Registration No. 5548100 when he filed the notice of opposition in the Prior
Proceeding, and Petitioner now seeks to cancel that registration in this proceeding.
In the Prior Proceeding, Petitioner alleged that: (1) Respondent’s application for the
mark THE DRAMATICS “was filed in bad faith with knowledge of [Petitioner’s] prior
and superior rights to use the mark in interstate commerce[;]” (2) “[Respondent] knew
it was not entitled to the mark for which it seeks registration, but nevertheless
wrongfully and fraudulently alleged ownership of the mark and swore that no one
else had the right to use the same or similar mark in commerce[;]” and
(3) “[Respondent] should, therefore, not be entitled to registration of its alleged
mark.” ’388 Opposition, 1 TTABVUE 5, ¶ 10.
By comparison, in the instant proceeding, Petitioner alleges that: (1) “[i]n the
application for registration [Respondent] falsely identified himself as the sole owner
of THE DRAMATICS mark[;]” (2) “[Respondent] misrepresented that he was the sole
owner of THE DRAMATICS mark[;]” and (3) “[a]s a result of not being the sole owner
of THE DRAMATICS mark at the time of applying to register the mark,
[Respondent’s] Registration is void ab initio.” 4 TTABVUE 3-5.
Although Petitioner includes details about the history of the parties’ use of THE
DRAMATICS mark and the litigation history between the parties in the amended
petition to cancel that are not included in the notice of opposition, the notice of
opposition and amended petition to cancel share a common nucleus of operative facts.
More specifically, both the fraud claim in the notice of opposition and the lack of
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ownership claim in the amended petition to cancel share the same nucleus of facts in
that Petitioner alleges that he used THE DRAMATICS mark before Respondent,
Respondent does not have the sole right to use THE DRAMATICS mark, and
Respondent knowingly misrepresented to the USPTO that he was the sole owner of
THE DRAMATICS mark.
That Petitioner labeled his claim “fraud” in the notice of opposition and “lack of
ownership” in the amended petition to cancel, and that Petitioner had a higher
evidentiary burden with his fraud claim in the Prior Proceeding than the lack of
ownership claim in the instant proceeding, are immaterial. Petitioner had the facts
necessary to bring the lack of ownership claim in the Prior Proceeding, and indeed,
Petitioner based his fraud claim on Respondent’s representations concerning his
alleged ownership of THE DRAMATICS mark. Thus, whether Respondent had any
ownership rights in THE DRAMATICS mark was the central factual issue in dispute
underlying the fraud claim, just as it underlies the lack of ownership claim. See
Vitaline Corp., 13 USPQ2d at 1174 (“The abandonment theory clearly could have
been brought in the original proceeding because Vitaline had access to the affidavit
and related specimens” when it filed its fraud counterclaim); Orouba Agrifoods
Processing Co. v. United Food Import, 97 USPQ2d 1310, 1314 (TTAB 2010)
(“Petitioner cannot avoid the application of claim preclusion by merely bringing
additional claims in this proceeding based on the same transactional facts as the prior
opposition. … [W]hile the grounds for the prior opposition did not include priority and
likelihood of confusion, false suggestion of a connection or misrepresentation of
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source, all of these claims are based on the same facts alleged in the opposition,
perhaps with slightly more detail.”).
Accordingly, there is no genuine dispute of material fact that Petitioner’s pleaded
claim in the instant proceeding is based on the same set of transactional facts as the
fraud claim in the Prior Proceeding. The third factor of claim preclusion is therefore
satisfied.
Petitioner’s assertion that the merits of this proceeding should be considered
because of “the blatant misconduct of [Respondent,]” and because granting
Respondent’s motion for summary judgment “would undoubtedly impair Petitioner’s
established rights in The Dramatics name” (10 TTABVUE 13), does not persuade us
of a different result. “We recognize that ‘[c]aution is warranted in the application of
preclusion by the PTO, for the purposes of trademark procedures include protecting
both the consuming public and the purveyors. ... [Thus], the circumstances for
preclusion must be certain to every intent.’” Orouba Agrifoods Processing Co., 97
USPQ2d at 1314 (quoting Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d
1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005)). However, in this case, there is no
genuine dispute of material fact regarding the identity of the parties, the finality of
the judgment on the merits of the prior claim, and/or that the second claim is based
on the same transactional facts. While the circumstances may in fact be that
Petitioner owns equal or superior common law rights in the mark THE DRAMATICS,
Petitioner had an opportunity to be heard on the merits in the opposition and simply
allowed judgment to be entered against him by failing to go forward with his case.
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See id. at 1314-15 (“While the circumstances may in fact be that petitioner is the
producer and respondent is the importer, petitioner had an opportunity to be heard
on the merits in the opposition and simply allowed judgment to be entered against it
by failing to go forward with its case.”).
In view of the foregoing, Respondent’s motion for summary judgment on claim
preclusion is granted. Because such finding is sufficient to decide this case, we need
not reach the issue of issue preclusion. See TBMP § 102.01 (2019).
IV. Summary
Ms. Ford’s motion to substitute is granted.
Petitioner’s motion, filed April 30, 2019, to strike Respondent’s reply brief in
support of his motion for summary judgment is granted.
Respondent’s motion for summary judgment on claim preclusion is granted.
The petition to cancel is dismissed with prejudice.