The Urock Network, LLCv.Umberto Sulpasso

Trademark Trial and Appeal Board

Jul 17, 2015

No. 92058974 (T.T.A.B. Jul. 17, 2015)

wbc Mailed: July 17, 2015

Cancellation No. 92058974

The Urock Network, LLC

v.

Umberto Sulpasso

Before Seeherman, Ritchie and Hightower, Administrative Trademark
Judges.

By the Board:

The Urock Network, LLC (“UNL”) seeks to cancel the registration of the mark

owned by Umberto Sulpasso (“Mr. Sulpasso”) for “digital media, namely, CDs,
DVDs, downloadable audio files, featuring music” in International Class 9 and
“entertainment, namely, live performances by a musical band” in International
Class 41.1
In its petition to cancel, UNL pleads ownership of an application, Serial No.
85746452, for the mark THE UROCK NETWORK, which, as indicated in the

1 Registration No. 4493189 issued March 11, 2014 based on Section 44(e).
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 a
Precedent of the TTAB
Cancellation No. 92058974
2

ESTTA cover sheet2 submitted with the petition, seeks registration of the mark for
“downloadable MP3 files, MP3 recordings, on-line discussion board posts, webcasts,
webinars and podcasts featuring music, audio books in the field of music, and news
broadcasts” in International Class 9. UNL alleges that the continued registration of
Mr. Sulpasso’s mark “creates confusion among consumers”; that it seeks
cancellation on the ground of “[p]riority of first use and the likelihood of confusion
for goods and services” under Section 2(d) of the Trademark Act; and that Mr.
Sulpasso’s mark has “been cited against our application for registration under
[application Serial No.] 85746452.”3 TTABVue Doc. 1 (at p. 1).
In lieu of an answer, Mr. Sulpasso filed a motion to dismiss pursuant to Fed. R.
Civ. P. 12(b)(6) which the Board construed as a motion for summary judgment
based on res judicata or claim preclusion.4 The motion has been fully briefed.

2 Because the ESTTA cover sheet forms part of the petition to cancel, it provides details of
Petitioner’s pleaded application (e.g., to establish the alleged goods or services in a
plaintiff’s pleaded application or registration). 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”); Hunt Control Systems Inc. v. Koninklijke
Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (“[The ESTTA] form, along
with any attached supplementary elaboration of the basis for the opposition, serves as the
complaint in the opposition proceeding”); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3
(TTAB 2008) (“[T]he ESTTA generated filing form … is considered part of the plaintiff’s
initial pleading”).
3 The current owner for application Serial No. 85746452 is listed as John Kevin Timothy,
whose relationship to UNL is discussed infra.
4 The judicial doctrine now generally known as claim preclusion was earlier known as res
judicata. See Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 110 USPQ2d 1261, 1263 (Fed.
Cir. 2014). Because the Board construed Mr. Sulpasso’s motion to dismiss as a motion for
summary judgment based on this doctrine, the Board’s July 28, 2014 order allowed the
parties additional time to supplement their briefing. No supplemental briefing was
submitted.
Cancellation No. 92058974
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Motion for Summary Judgment5
Mr. Sulpasso asserts that he won a prior proceeding – Opposition No. 91197690
(“the ʼ690 opposition”)6 – involving the same parties and based on the same claims.
Specifically, Mr. Sulpasso asserts that John Kevin Timothy, the opposer in the
earlier proceeding, is in privity with UNL and that Timothy unsuccessfully asserted
claims of likelihood of confusion under Section 2(d) against the underlying
application that matured into Mr. Sulpasso’s Registration No. 4493189. In support
of his motion, Mr. Sulpasso has submitted copies of the notice of opposition, the
motion to dismiss the opposition, and the Board’s decision dismissing the
opposition.
UNL concedes that it is the same party as the opposer in the ’690 opposition.
TTABVue Doc. 6 (at p.3). However, UNL argues that the ’690 opposition was
decided on a “[t]echnical [p]rocedure,” and that UNL’s marks and goods and services
at issue in the ’690 opposition are different from the marks and goods and services
at issue in this cancellation. Id. (at p.2).

5 Although Mr. Sulpasso has not yet made its initial disclosures, this motion is not
premature. In general, a party may not file a motion for summary judgment until the party
has made its initial disclosures. Trademark Rule 2.127(e)(1); Qualcomm, Inc. v. FLO Corp.,
93 USPQ2d 1768, 1769-70 (TTAB 2010). However, this rule has two exceptions: 1) a motion
asserting lack of jurisdiction by the Trademark Trial and Appeal Board; or 2) a motion
asserting claim or issue preclusion. Trademark Rule 2.127(e)(1); Zoba Int’l Corp. v. DVD
Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 n.4 (TTAB 2011) (motion to dismiss
considered as one for summary judgment where it asserts claim preclusion). Since this
motion is based on claim preclusion, and we sua sponte converted it into a summary
judgment motion, there is no prematurity issue.
6 Upon motion by Mr. Sulpasso (then the applicant) to dismiss the ’690 opposition pursuant
to Trademark Act § 2.132(a) for UNL’s failure to take testimony or enter evidence, the
Board dismissed the opposition with prejudice. John Timothy v. Umberto Sulpasso
(Opposition No. 91197690) (TTAB Feb. 3, 2014).
Cancellation No. 92058974
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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
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.
Claim Preclusion
As explained by our primary reviewing court, the doctrines of claim preclusion
and issue preclusion “preclude certain attempts at second litigation chances, but
only in defined circumstances, reflecting the need to avoid depriving litigants of
their first chances.” Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719
F.3d 1367, 107 USPQ2d 1167, 1171 (Fed. Cir. 2013). 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
Cancellation No. 92058974
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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)).
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.
We act with cautious restraint when applying this equitable doctrine, in the
interests of both justice for the litigants and protecting the public from confusion.
Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310,
1314 (Fed. Cir. 2005); see also Sharp Kabushiki Kaisha v. ThinkSharp Inc., 448
F.3d 1368, 79 USPQ2d 1376, 1379 (Fed. Cir. 2006).
• First Factor – Identity of Parties
There is no dispute between the parties that Mr. Timothy and UNL are the same
entity. Although the ’690 opposition was brought by “John Kevin Timothy dba
UROCK Radio,” and the present proceeding was filed by The Urock Network, LLC,
UNL has conceded that it and the opposer in the ’690 opposition are “the same
person.” TTABVue Doc. 6 (at p.3). In this connection, we note that in the petition for
cancellation Mr. Timothy identifies himself as acting manager of UNL.7 See John
W. Carson Found v. Toilets.com Inc, 94 USPQ2d 1942, 1947 (TTAB 2010), (citing
Kraeger v. General Electric Co., 497 F.2d 468, 472 (2d. Cir. 1974) (The president and
sole shareholder of a corporation was bound by the corporation's defeat in an action

7 The petition to cancel was also signed by Mr. Timothy.
Cancellation No. 92058974
6

that he effectively controlled); and Vitronics Corp. v. Conceptronic, Inc., 27 USPQ2d
1046, 1049 (D.N.H. 1992) (founder and CEO of corporation in privity with
corporation)). Further, Mr. Sulpasso is the same party as the applicant in the ’690
opposition.
• Second Factor – An Earlier Final Judgment on the Merits of a
Claim

In its dismissal of the ’690 opposition, after analyzing whether Mr. Timothy’s
motion to reopen his testimony period to submit late-filed testimony and evidence
and subsequently denying that motion, the Board determined that Mr. Timothy
“has offered no reasons why he was not diligent in prosecuting his case” and failed
to properly introduce testimony or evidence in support of his case. Opp. No.
91197690 TTABVue Doc. 51 (at p.7). The Board went on to explain that “[Mr.
Timothy] bears the burden of coming forward with evidence to support his case and
it is clear that [Mr. Timothy] has not done so here.” Id. As a result, the Board held
that “[i]nasmuch as [Mr. Timothy] has not submitted any record evidence in support
of his case, [Mr. Sulpasso’s] motion for judgment is granted. Accordingly, the
opposition is dismissed with prejudice.” (emphasis deleted) Id. (at p.8).
Notwithstanding UNL’s contention that claim preclusion is inapplicable here
because the prior proceeding was ended by a “technical procedure,” whether the
judgment in the prior proceeding was the result of a dismissal with prejudice or
even default, for claim preclusion purposes, it is a final judgment on the merits. See,
e.g., Morris v. Jones, 329 U.S. 545, 550-51 (1947) (“A judgment of a court having
jurisdiction of the parties and of the subject matter operates as res judicata, in the
Cancellation No. 92058974
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absence of fraud or collusion, even if obtained upon a default.”) (citation omitted);
Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203 USPQ 564, 566 (CCPA
1979) (“Default judgments generally operate as res judicata . . . .”) (citations
omitted); see also Orouba Agrifoods Processing Co. v. United Food Import, 97
USPQ2d 1310, 1314-15 (TTAB 2010) (granting summary judgment to registrant on
claim preclusion where petitioner’s prior opposition had been dismissed with
prejudice for failure to prosecute the case); 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
dismissal with prejudice”); USOC v. Bata Shoe Co., 225 USPQ 340, 342 (TTAB
1984) (“default judgments generally operate as res judicata”).
In the circumstances presented here, we hold that the dismissal with prejudice
of the ’690 opposition was a final judgment which may give 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 the plaintiff can bring a subsequent case 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
Cancellation No. 92058974
8

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).
Although Mr. Sulpasso compares the commercial impressions made by marks
UNL asserted here and in the ’690 opposition (THE UROCK NETWORK and
UROCK RADIO, respectively), he does not need to do so, as that is not pertinent to
the issue before us. When, as here, the Board analyzes the defensive doctrine of bar,
we need determine only whether the proceedings arise from the same transactional
facts and thus could have been brought in the previous proceeding.8
The Court of Appeals for the Federal Circuit has stated that it is guided by the
analysis set forth in the Restatement (Second) of Judgments in determining
whether a plaintiff’s claim in a particular case is barred by claim preclusion. See Jet

8 In contrast, it is the doctrine of “merger,” or offensive claim preclusion, that requires an
assessment of whether a party’s new mark makes the same commercial impression as its
previously litigated mark and whether the goods or services are the same. See, e.g., Sharp
Kabushiki Kaisha, 79 USPQ2d at 1378-79; Chromalloy American Corp. v. Kenneth Gordon
(New Orleans), Ltd., 736 F.2d 694, 222 USPQ 187, 189-90 (Fed. Cir. 1984).
Cancellation No. 92058974
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Inc., 55 USPQ2d at 1856; Chromalloy American Corp., 222 USPQ at 189-90. Section
24 of the Restatement (Second), 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,
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
Cancellation No. 92058974
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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 reiterate first that the mark that UNL asserts in this
cancellation is THE UROCK NETWORK, and that the basis asserted for
cancellation is priority of use and likelihood of confusion. Specifically, UNL alleges
use of the mark THE UROCK NETWORK “on a continuing basis from a date which
supersedes registrant by 10 years.” TTABVue Doc. 1 (at p.1). Looking to the ’690
opposition, we note the body of the complaint in the ’690 opposition alleges priority
and apparent likelihood of confusion based on common law rights in UROCK and
various URLs “including but not limited to urockradio.net, the
urocknetwork.com, .net, urock.info, urocradio.net in all about 15 names.”
(emphasis added) Opp. No. 91197690 TTABVue Doc. 1 (at p.1).9 More specifically, in

9 While not specifically addressed in the body of the complaint, the ESTTA coversheet in the
’690 opposition indicates Mr. Timothy also alleged rights in application Serial No. 85047110
for the mark UROCK RADIO and based the opposition on the ground of priority and
likelihood of confusion under Trademark Act § 2(d). See UMG Recordings Inc. v. Mattel Inc.,
Cancellation No. 92058974
11

his Memorandum in Support of [His] Motion for Summary Judgment in the prior
’690 opposition proceeding,10 Mr. Timothy specifically asserted:
Also commencing in 1999, and continuously through the present day,
Opposer has been providing radio broadcasting and entertainment
services under one or more of a family of service marks including, but
not limited to: . . . THE UROCK NETWORK . . . and/or other
derivatives of the names and marks UROC and UROCK (hereinafter
collectively the “UROCK Marks.”).

Opp. No. 91197690 TTABVue Doc. 20 (at p.4.)

UNL’s argument that the ’690 opposition was focused on rights in the mark
UROCK RADIO thus is unpersuasive. The alleged prior use of the mark THE
UROCK NETWORK clearly not only relates to, but was a part of, the ’690
opposition. There can be no question that the ’690 opposition and this cancellation
necessarily involve the same nucleus of operative facts such that both proceedings
stem from the same set of transactional facts. UNL and its alter ego Mr. Timothy,
plainly not only had the facts necessary to bring the claim of likelihood of confusion
relating to alleged priority rights in the mark THE UROCK NETWORK based on
prior use at the time of filing the ’690 opposition, but he actually included that mark
in the ’690 proceeding. See Akhenaten v. Najee, LLC, 544 F.Supp.2d 320, 330
(S.D.N.Y. 2008) (Plaintiff’s alleged use and registration of FUBU and similar marks

100 USPQ2d 1868, 1872-73 (TTAB 2011) (Where counterclaim did not identify particular
registration to which counterclaim applies, counterclaim found to pertain to registration
identified in the ESTTA filing form. “[T]he Board considers the ESTTA filing form and the
attachment thereto, i.e., the statement of grounds for the petition to cancel, to comprise a
single document ....”); PPG Industries Inc.., 73 USPQ2d at 1928 (the ESTTA cover sheet is
read in conjunction with the notice of opposition as an integral component).
10 The Board may take notice of filings in other TTAB proceedings. Kraft, Inc. v. Balin, 209
USPQ 877, 881 n.8 (TTAB 1981).
Cancellation No. 92058974
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could have been raised in the prior action, and therefore, the subsequent action is
barred by res judicata).
Decision
Based on the record before us, we find that there is no genuine dispute as to the
applicability of claim preclusion in this case in light of the Board’s February 3, 2014
decision rendered in Opposition No. 91197690. UNL’s arguments and evidence are
insufficient to show the existence of a genuine dispute as to a material fact for trial.
Therefore, Mr. Sulpasso’s motion for summary judgment is GRANTED. Judgment
is entered against UNL, and the petition for cancellation is DISMISSED with
prejudice.11

11 We note that UNL, in the last paragraph of its response to the motion for summary
judgment makes reference to “the likelihood of ‘Abandonment’” of respondent’s mark and
the asserted failure of respondent’s band to perform “in front of a paying audience in the
USA” as a reason why this case should proceed. This throw-in sentence in the conclusion to
the response is not a sufficient pleading of a new claim, and petitioner has not submitted a
proposed amended pleading. Thus, this throw-in sentence will receive no further
consideration. See TBMP § 507.01 (“A signed copy of the proposed amended pleading should
accompany a motion for leave to amend a pleading.”). Furthermore, absent an allegation
that the facts have changed substantially since the ‘690 opposition, this claim is likely
barred by res judicata.