Vitacilina Corporation of Americav.Rosa West Labora-tories, Inc.

Trademark Trial and Appeal Board

Jun 28, 2005

No. 91159389 (T.T.A.B. Jun. 28, 2005)

az Mailed: June 28, 2005

Opposition No. 91159389

VITACILINA CORPORATION OF
AMERICA

v.

ROSA WEST LABORATORIES, INC.

Before Walters, Holtzman and Zervas, Administrative
Trademark Judges.

By the Board.

Rosa West Laboratories, Inc. (“applicant”) has filed an
application to register the mark VITASILK-C for “non-
medicated skin care products in the nature of multivitamin
facial treatments, namely, facial scrubs and masks.”1
Registration has been opposed by Vitacilina Corporation
of America (“opposer”) on the grounds of likelihood of
confusion, deceptiveness, deceptive misdescriptiveness and
dilution. Opposer has also pleaded that it successfully
opposed an earlier-filed application for the mark VITASILK
by applicant in a prior opposition proceeding.

1 Application Serial No. 76513143, filed April 21, 2003, claiming
an intent to use the mark in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 DISPOSITION
IS NOT CITABLE
AS PRECEDENT
OF THE TTAB
Opposition No. 91159389
2
Applicant, in its answer, essentially denies the
salient allegations of the notice of opposition. Applicant,
however, has admitted many of opposer's allegations
regarding the filing of a previous application for the mark
VITASILK and the ensuing opposition.
This case now comes up on (i) opposer's motion (filed
February 1, 2005) in which opposer contends that applicant
is barred from seeking to register the mark involved herein
due to the judgment in the prior opposition under the
doctrine of claim preclusion; and (ii) applicant's cross
motion (filed February 17, 2005 via certificate of mailing)
for partial summary judgment on opposer's claim of
likelihood of confusion.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). All doubts
as to whether any factual issues are genuinely in dispute
must be resolved against the moving party and all inferences
must be viewed in the light most favorable to the non-moving
Opposition No. 91159389
3
party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
We first turn to opposer's summary judgment motion.
The parties do not dispute the following facts: On May 4,
2000, applicant filed application Serial No. 76040993 for
the mark VITASILK for “non-medicated skin care products,
namely, serums featuring fruit enzymes, gels, creams,
toners, and cleansers; facial treatments, namely, masks and
scrubs; and body treatments, namely, masks and scrubs.” On
March 19, 2002, opposer commenced an opposition against
application Serial No. 76040993, which was assigned
Opposition No. 91151186. About one year later, on February
10, 2003, the Board granted opposer's summary judgment
motion as conceded under Trademark Rule 2.127(a), and
entered judgment and refused registration of the involved
application. On April 21, 2003, about two months after the
Board entered judgment in the prior opposition, applicant
filed the application which is the subject of the present
proceeding.
Opposer maintains in its motion that applicant is
barred by claim preclusion from registering the mark which
is the subject of the present application. According to
opposer, “the marks are for identical goods and differ only
slightly – the second mark adds a letter ‘C’ to the end of
the mark”; and “relatively minor alterations to a mark do
Opposition No. 91159389
4
not result in a … new mark sufficient to allow an applicant
to seek a new registration.” Opposer's motion is supported
by a copy of the Board's February 10, 2003 order in
Opposition No. 91151186.
Applicant, in turn, argues that “no issues were
actually litigated or decided in the first opposition
proceeding” because applicant, “without the benefit of
counsel, did not realize that when it has [sic] received the
notice of opposition by the Opposer, it was necessary to
respond to the Opposition and therefore, inadvertently lost
the opposition by default.”2 Applicant also maintains that
“there is truly no res judicata” because “applicant's marks
in the prior proceeding and the current proceeding are
notably different with different commercial impression[s],
such that they cannot be considered to be the same claim”;
and that “[t]he evidence relating to the issue of likelihood
of confusion with the first mark is not precisely the same
as the evidence with respect to the likelihood of confusion
with the second mark.”
Initially, we note that there is no question that
opposer has standing to bring this action. Opposer has
filed a status and title copy of its asserted U.S.

2 In its first application, applicant granted a power of attorney
to Frank Gilliam and John Duncan. The record does not reflect
that applicant revoked the power of attorney.
Opposition No. 91159389
5
registration for the mark VITACILINA3 with the notice of
opposition, and one or more of its claims is not without
merit. See Lipton Industries, Inc. v. Ralston Purina
Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Further,
applicant has not challenged opposer's standing.
Turning next to the merits of opposer's motion, under
the doctrine of res judicata or claim preclusion, the entry
of a final judgment on the merits of a claim in a proceeding
serves to preclude the relitigation of the same claim in a
subsequent proceeding between the parties or their privies,
even in those cases where the prior judgment was the result
of default. Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d
1318 (TTAB 1990). Thus, a second suit is barred by res
judicata or claim preclusion if (1) the parties (or their
privies) are identical; (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
claim. Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360,
55 USPQ2d 1854 (Fed. Cir. 2000). We discuss each of the
three Jet, Inc. elements below, as applied to this case.
(a) Identity of Parties.
Opposer maintains that “the first opposition proceeding
[was] between Vitacilina and Rosa West Labs.” Opposer is

3 Registration No. 1063707, registered April 19, 1977; renewed
June 1, 1997.

Opposition No. 91159389
6
incorrect. The first opposition was between opposer and
Rosa West Inc. Rosa West Laboratories, Inc. is the
applicant in the present proceeding. Thus, the parties are
not identical in the two proceedings.
Applicant has not pointed out in its response that the
defendants in the two proceedings differ, and has not argued
that they are not in privity, and neither party has
submitted any corporate information regarding applicant
including, e.g., whether applicant has changed its name.
However, applicant has characterized the marks of the two
proceedings as “Applicant's marks.” See p. 4 of applicant's
response and cross motion. In view thereof, and in view of
the fact that the two corporate names only differ by the
addition of the term “Laboratories,” we find that the
opposers in the two proceedings are identical and that the
applicants are either identical or in privity.
Thus, the first element of Jet, Inc. is satisfied.
(b) Earlier Final Judgment on the Merits.
Applicant maintains that in the prior proceeding, the
applicant “inadvertently lost the opposition by default”;
and that “no issues were actually litigated or decided in
the first opposition proceeding [and that t]herefore, there
really is no res judicata.” Applicant is incorrect. The
Board entered judgment on opposer's likelihood of confusion
claim because the applicant had conceded opposer's
Opposition No. 91159389
7
contentions in opposer's motion for summary judgment under
Trademark Rule 2.127(a). Also, it is not necessary for
issues to have been actually litigated in order for claim
preclusion to apply.4 See Marc A. Bergsman, TIPS FROM THE
TTAB: The Effect of Board Decisions in Civil Actions; Claim
Preclusion and Issue Preclusion in Board Proceedings, 80 TMR
540 (1990) ("An involuntary dismissal generally operates as
an adjudication upon the merits and will preclude a
subsequent action based on the same cause of action.") In
view thereof, we find that there was an earlier final
judgment on the merits. The second element of Jet, Inc. is
therefore satisfied.
(c) The Second Claim is Based on Same Set of Transactional
Facts.

In evaluating the similarity of the claims, the Board
“has looked to whether the mark involved in the first
proceeding is the same mark, in terms of commercial
impression, as the mark in the second proceeding.” Institut
National Des Appellations d'Origine v. Brown-Forman Corp.,
47 USPQ2d 1875 (TTAB 1998). The Board has also considered
whether the second mark differs from the first mark only in
minor, insignificant ways. See Polaroid Corp. v. C & E
Vision Services Inc., 52 USPQ2d 1954 (TTAB 1999).

4 The doctrine applies even in those cases where the prior
judgment was the result of a default or consent. See
International Nutrition Co. v. Horphag Research Ltd., 220 F.2d
1325, 55 USPQ2d 1492 (Fed. Cir. 2000).
Opposition No. 91159389
8
We find that there is no genuine issue of material fact
that the two marks are virtually identical to one another
and that the commercial impression of the marks is the same.
The marks differ ever so slightly - the second mark merely
adds a “-C” to the first mark. This difference is minor and
insignificant, and certainly does not create a new mark. In
fact, the specimen of use in the prior application showed
the mark in use as “VITASILK – C.”
With respect to the goods set forth in each
application, the identification of goods in the first
application is broad and encompasses the narrower
identification in the second application. That is, the
“non-medicated skin care products in the nature of
multivitamin facial treatments, namely, facial scrubs and
masks” of the second application are well within the “body
treatments, namely, masks and scrubs” of the first
application. The restriction in the present application
that the goods are “non-medicated” and “multivitamin” does
not aid applicant because, to the extent the identifications
list the same items, the identification in the earlier
application was unrestricted and has to be read to encompass
the identified masks and scrubs (as body treatments) of all
types. See, e.g., Domino's Pizza Inc. v. Little Caesar
Enterprises Inc., 7 USPQ2d 1359 (TTAB 1988). Moreover, an
applicant cannot avoid the estoppel effect of the decision
Opposition No. 91159389
9
of a prior disposition by insignificantly changing its
identification of goods. Id.
Thus, we find that the marks (and goods) are part of
the same transaction, and the third Jet, Inc. element is
also satisfied.
Conclusion
In view of the foregoing, we find that there are no
genuine issues of fact, and that, as a matter of law, the
instant opposition is barred by res judicata or claim
preclusion and, therefore, opposer is entitled to summary
judgment on this basis. Opposer, in obtaining a judgment in
the prior proceeding, had a reasonable belief that any right
applicant may have had to seek registration of its mark had
been abandoned. Applicant is bound by that abandonment and
is barred thereby from seeking to register a substantially
identical mark for identical goods. See Wells Cargo, Inc.
(Elkart, Indiana) v. Wells Cargo, Inc., (Reno, Nevada), 606
F.2d 961, 203 USPQ 564 (CCPA 1979). Opposer's motion for
summary judgment is therefore granted.
In view of our disposition of opposer's summary
judgment motion, applicant's cross motion for partial
summary judgment on opposer's claim of likelihood of
confusion is moot. Moreover, applicant has not provided any
evidence regarding the factors regarding likelihood of
confusion of In re E. I. du Pont de Nemours & Co., 476 F.2d
Opposition No. 91159389
10
1357, 177 USPQ 563 (CCPA 1973). Applicant's cross motion is
therefore denied.
DECISION: Judgment is entered against applicant, the
opposition is sustained and registration to applicant is
refused.