V.V.V. & Sons Edible Oils Limitedv.Meenakshi Overseas LLC d/b/a Meenakshi Overseas1

Trademark Trial and Appeal Board

Jul 15, 2015

No. 92060602 (T.T.A.B. Jul. 15, 2015)

RK

Mailed: July 15, 2015

Cancellation No. 92060602
V.V.V. & Sons Edible Oils Limited
v.
Meenakshi Overseas LLC d/b/a
Meenakshi Overseas1

Before Zervas, Wellington and Adlin,
Administrative Trademark Judges

By the Board:

On December 23, 2014, V.V.V. & Sons Edible Oils Limited (hereinafter
“VVV”) served and filed a petition to cancel three of Meenakshi Overseas
LLC’s (“Meenakshi”) registrations, i.e., Registration Nos. 40066542, 42251723,

1 Meenakshi’s change of correspondence address (filed January 9, 2015) has been
noted and entered.

2 For IDHAYAM in standard characters for “sesame oil” in International Class 29.
Underlying Application Serial No. 77747207 was filed by Anil Gandhi (“Gandhi”) on
May 29, 2009, under Section 1(b) of the Trademark Act and registered on the
Principal Register on August 2, 2011. The mark and registration were assigned to
Meenakshi on December 7, 2011, and recorded in the Assignment Services Division
at Reel 4674 / Frames 0303-0304.

3 For IDHAYAM in standard characters for “banana chips; cut vegetables; dried
fruits; dried lentils; frozen pre-packaged entrees consisting primarily of seafood;
frozen vegetables; fruit-based snack food; nut-based snack foods; pickles; potato-
based snack foods; pre-packaged dinners consisting of meat, poultry, seafood or
vegetables; soy-based snack foods; vegetable chips; vegetable-based snack foods;
frozen pre-packaged entrees consisting primarily of meat, fish, poultry or vegetables;
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
Cancellation No. 92060602

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and 43340004 on grounds of priority and likelihood of confusion and dilution.
The Board issued an institution order on January 5, 2015, setting
Meenakshi’s time to answer to February 14, 2015.
This matter now comes up on Meenakshi’s motion (filed January 9, 2015,
in lieu of an answer) for summary judgment on grounds of claim preclusion

frozen pre-packaged vegetable-based entrees” in International Class 29 and “bread
mixes; cereal based snack food; crepes; flour; frozen flour-free foods, namely, waffles,
pancakes, crepes, sandwich wraps, muffins and griddle cake sandwiches which are
protein-enriched; grain-based chips; mixes for making baking batters; mixes for
making batters for fried foods; packaged meal mixes consisting primarily of pasta or
rice; pancake mixes; pasta; pre-mixed pancake batter; processed cereal-based food to
be used as a breakfast food, snack food or ingredient for making other foods; relish;
rice; rice-based snack foods; roasted maize; tapioca; wafers; wheat-based snack
foods; frozen pre-packaged entrees consisting primarily of pasta or rice; pre-
packaged meals consisting primarily of pasta or rice” in International Class 30.
Underlying Application Serial No. 85552372 was filed on February 24, 2012, under
Section 1(a) of the Trademark Act and registered on the Principal Register on
October 16, 2012.

4 For IDHAYAM SOUTH INDIAN DELITE and design for “banana chips; cooking
oil; cut vegetables; dried fruits; dried lentils; edible oils; frozen pre-packaged entrees
consisting primarily of seafood; frozen vegetables; fruit-based snack food; nut-based
snack foods; pickles; potato-based snack foods; pre-packaged dinners consisting of
meat, poultry, seafood or vegetables; sesame oil; soy-based snack foods; vegetable
chips; vegetable oils; vegetable-based snack foods; frozen pre-packaged entrees
consisting primarily of meat, fish, poultry or vegetables; frozen pre-packaged
vegetable-based entrees” in International Class 29 and “bread mixes; cereal based
snack food; crepes; flour; frozen flour-free foods, namely, waffles, pancakes, crepes,
sandwich wraps, muffins and griddle cake sandwiches which are protein-enriched;
grain-based chips; mixes for making baking batters; mixes for making batters for
fried foods; packaged meal mixes consisting primarily of pasta or rice; pancake
mixes; pasta; pre-mixed pancake batter; processed cereal-based food to be used as a
breakfast food, snack food or ingredient for making other foods; relish; rice; rice-
based snack foods; roasted maize; tapioca; wafers; wheat-based snack foods; frozen
pre-packaged entrees consisting primarily of pasta or rice; pre-packaged meals
consisting primarily of pasta or rice” in International Class 30. Underlying
Application Serial No. 85684309 was filed on July 23, 2012, under Section 1(a) of the
Trademark Act and registered on the Principal Register on May 14, 2013.

Cancellation No. 92060602

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based on the judgment rendered in Opposition No. 91192693. The motion is
fully briefed.
The Prior Proceeding: Opposition No. 91192693
On November 17, 2009, VVV filed a notice of opposition against
Application Serial No. 77747207 (the underlying application for involved
Registration No. 4006654) on grounds of priority and likelihood of confusion
and fraud. After the time for making pretrial disclosures but prior to the
opening of testimony, VVV’s attorney sought to withdraw as counsel. The
request was granted and VVV was allowed time to either appoint new
counsel or to proceed pro se. As no response was received from VVV, the
Board, on November 15, 2010, ordered VVV to show cause why default
judgment should not be entered against it based on its apparent loss of
interest in the case. VVV again failed to respond so judgment was entered
against VVV and the opposition was dismissed with prejudice on January 3,
2011. The judgment and dismissal were not appealed.
Meenakshi’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 American
Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Sweats
Cancellation No. 92060602

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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 drawn in the non-
movant’s favor. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
By its motion, Meenakshi seeks to preclude VVV from bringing the
instant action based on the default final judgment entered in Opposition No.
91192693. We apply claim preclusion when there is: (1) an identity of parties
or their privies; (2) a final judgment on the merits of the prior claim; and (3)
the second claim is based on the same transactional facts as the first and
should have been litigated in the prior case. See Sharp Kabushiki Kaisha v.
Thinksharp, Inc., 448 F.3d 1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006).
A. Identity of Parties or Privies
There is no dispute that there is identity of plaintiffs as VVV is the
plaintiff in both proceedings. As to identity of defendants, Meenakshi asserts
that it is the privy of Gandhi because, inter alia, Gandhi assigned all right,
title and interest in, as well as the goodwill associated with, the mark in the
‘654 registration to Meenakshi on December 7, 2011, nearly a year after
termination of the prior opposition.5 In view of the assignment, we find no

5 The assignment was recorded in the Assignment Services Division at Reel 4674 /
Frames 0303-0304.

Cancellation No. 92060602

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genuine dispute of material fact that Meenakshi is in privity with Gandhi.6
See Int’l Nutrition Co. v. Horphag Research, Ltd., 220 F.3d 1325, 55 USPQ2d
1492, 1495 (Fed. Cir. 2000) (privity where parties hold successive interests in
the same property).
B. Final Judgment on Merits of Earlier Claim
As to the second factor, there is no genuine dispute of material fact that
there has been a final judgment on the merits of an earlier claim since a
default judgment can operate as such for purposes of res judicata. See Sharp
Kabushiki Kaisha, 79 USPQ2d at 1378.
C. Same Set of Transactional Facts
As to this factor, we find no genuine dispute of material fact that the
claims in this proceeding as against the ‘654 registration are based on the
same set of transactional facts as those of the opposition. There is no dispute
that the subject application in the prior opposition matured into the subject
registration of this cancellation and that VVV has again asserted a claim of
priority and likelihood of confusion against the same mark and goods in the
application/registration based on the same pleaded common law mark.
Although the goods pleaded by VVV in this proceeding are more broadly

6 VVV has submitted no evidence to rebut the assertion of privity. Rather, VVV has
objected to the evidence on various grounds including lack of foundation and
relevance. See Petitioner’s Objections to Evidence, 8 TTABVUE 113-114. VVV’s
objections are overruled. The file of each registration against which a petition for
cancellation is filed forms part of the record of the proceeding without any action by
the parties and reference may be made to the file for any relevant and competent
purpose. See Trademark Rule 2.122(b)(1); Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir. 2009).
Cancellation No. 92060602

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described, we note that they encompass the goods pleaded in the opposition
and do not change the “transactional facts.”
We find the same to hold true concerning VVV’s newly-raised dilution
claim, particularly in view of VVV’s allegation in the opposition that its mark
“is well known and recognized”. VVV has failed to establish that the
transactional facts are different in this case than in the earlier proceeding.
In view thereof, we find no genuine dispute of material fact and find that
VVV’s claims in this proceeding are barred by res judicata as against
Registration No. 4006654.
On the other hand, we DENY Meenakshi’s motion for summary
judgment as to Registration Nos. 4225172 and 4334000 as the
differences in the goods and, in the case of the ‘000 registration, the marks,
from those involved in the prior opposition constitute a different set of
transactional facts so as to preclude the application of claim preclusion.
Conclusion
The petition for cancellation is DISMISSED with prejudice as to
Registration No. 4006654. Proceedings herein are RESUMED as to
Registration Nos. 4225172 and 4334000. Dates are RESET as follows:

Time to Answer 8/14/2015
Deadline for Discovery Conference 9/13/2015
Discovery Opens 9/13/2015
Initial Disclosures Due 10/13/2015
Expert Disclosures Due 2/10/2016
Discovery Closes 3/11/2016
Plaintiff's Pretrial Disclosures Due 4/25/2016
Cancellation No. 92060602

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Plaintiff's 30-day Trial Period Ends 6/9/2016
Defendant's Pretrial Disclosures Due 6/24/2016
Defendant's 30-day Trial Period Ends 8/8/2016
Plaintiff's Rebuttal Disclosures Due 8/23/2016
Plaintiff's 15-day Rebuttal Period Ends 9/22/2016

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 Rule 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Trademark
Rule 2.129.
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