Who Dat Yat Chat, LLCv.Who Dat?, Inc.

Trademark Trial and Appeal Board

Apr 28, 2015

No. 91215018 (T.T.A.B. Apr. 28, 2015)

DUNN Mailed: April 28, 2015

Opposition No. 91215018
Who Dat Yat Chat, LLC

v.

Who Dat?, Inc.

Before Bucher, Cataldo, and Greenbaum, Administrative Trademark Judges:

By the Board:

This case comes up on Opposer’s motion and Applicant’s cross-motion for
summary judgment on the pleaded issue of contract estoppel, and Applicant’s
motion for summary judgment under collateral estoppel principles. The motions are
contested.1
BACKGROUND
On September 28, 2004, Registration No. 2890070 issued to Applicant Who Dat?
Inc. (hereafter, Applicant) for the mark WHO DAT? BLUES BAND for

1 The Board notes Opposer’s unrebutted assertion that Applicant failed to serve its initial
disclosures. While Trademark Rule 2.127(e)(1) bars the filing of motions for summary
judgment by parties that have not served initial disclosures, there is an exception for
motions based on preclusion and jurisdictional grounds. Because the Board finds that the
contact estoppel claim involves similar issues to preclusion, the Board has considered
Applicant’s cross-motion for summary judgment. Pursuant to Trademark Rule 2.120(g)(1),
inasmuch as discovery has closed, a motion to compel Applicant’s initial disclosures would
be untimely.
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 OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91215018
2
“entertainment, namely, live performances by a musical band.” In 2010, Applicant
filed three additional trademark applications to register the mark WHO DAT? for
musical recordings and sound equipment (application Serial No. 77983139) and
clothing (application Serial No. 77907193), and the mark WHO DAT for alcoholic
beverages (application Serial No. 85132369).
In 2012, Opposer Who Dat Yat Chat, LLC (hereafter, Opposer) filed a civil action
seeking a declaratory judgment that it was not infringing Applicant’s marks (Who
Dat Yat Chat, LLC v. Who Dat, Inc., No.10-1333 c/w 10-2296, filed in the United
States District Court for the Eastern District of Louisiana) and an application to
register WHO DAT YAT CHAT for “restaurant services, including sit-down service
of food and take-out restaurant services” (application Serial No. 85708595).
On October 25, 2012, the parties executed a settlement agreement which
resulted in dismissal of the district court action. Among other provisions, the
agreement provides that Opposer has exclusive rights to use and register the WHO
DAT YAT CHAT mark in connection with restaurants, restaurant services,
coffeehouses, coffeehouse services, and related services and products, and that
Applicant would not challenge or object to Opposer’s use of the marks WHO DAT
YAT CHAT or WHO DAT on any goods or services provided for sale in connection
with the operation of restaurants and coffeehouses (Section 1); that Opposer has the
right to operate and license WHO DAT coffee houses and restaurants (Section 3),
that Opposer has the right to manufacture, sell or license any product, merchandise
or alcoholic beverage manufactured, produced or sold in a restaurant or coffeehouse
Opposition No. 91215018
3
using the mark WHO DAT (Section 4); and that Applicant would not interfere with
Opposer’s right to operate and license coffeehouses and restaurants, and to
manufacture, sell or license any product, merchandise or alcoholic beverage
manufactured, produced or sold in a restaurant or coffeehouse, using the mark
WHO DAT without payment of fees or royalties (Section 6).
In 2013, Applicant’s three applications issued as Registration Nos. 4310960
(WHO DAT?), 4385857 (WHO DAT?), and 4402283 (WHO DAT). On August 28,
2013, Applicant filed an application for the mark WHO DAT? for “bakery products;
cakes; coffee; hamburger sandwiches; pralines; seasonings; spices” (application
Serial No. 86050118).
On January 7, 2014, Opposer’s application Serial No. 85708595 issued as
Registration No. 4463624 (WHO DAT YAT CHAT).
On February 20, 2014, Opposer filed the notice of opposition to registration of
Applicant’s application Serial No. 86050118 (WHO DAT?), alleging likelihood of
confusion with its pleaded Registration No. 4463624 (WHO DAT YAT CHAT) and
nonuse, and that Applicant was contractually estopped from filing its application
based on the October 25, 2012 agreement between the parties.2 Opposer also filed a
motion with the United States District Court for the Eastern District of Louisiana
to reopen the civil action to enforce the settlement agreement, alleging that

2 Inasmuch as the attached numbered paragraphs include no supporting allegations
therefor, the Board finds that the reference on the ESTTA cover sheet to the notice of
opposition to claims of deceptiveness and false suggestion of a connection under Trademark
Act Section 2(a), and dilution under Trademark Act Section 43(c), do not plead legally
sufficient claims, and these references will be given no further consideration.
Opposition No. 91215018
4
Applicant had breached the agreement with its application seeking the exclusive
right to use the mark WHO DAT? on the same items that Opposer sells in its
business.
On April 1, 2014, Applicant filed an answer in this opposition denying the
salient allegations of the notice of opposition, and pleading various affirmative
defenses.
On May 14, 2014, the United States District Court for the Eastern District of
Louisiana issued an order denying Opposer’s motion to reopen the civil action for
enforcement of the settlement agreement. The district court found that Applicant
had not opposed or objected to Opposer’s registration of its mark WHO DAT YAT
CHAT; that there was no evidence that Applicant interfered with Opposer’s right to
operate and license coffeehouses and restaurants, and to manufacture, sell or
license any product, merchandise or alcoholic beverage manufactured, produced or
sold in a restaurant or coffeehouse; and that because most of Opposer’s rights under
the settlement agreement were not exclusive, while Applicant cannot stop Opposer
from its common law use of the WHO DAT mark, Applicant may produce or sell the
same goods under the WHO DAT? mark.
The district court found that the only exclusive right granted to Opposer under
the settlement agreement was the right to use the marks WHO DAT YAT CHAT or
WHO DAT on “any goods or services provided for sale in connection with the
operation of restaurants, restaurant services, coffeehouses, and coffeehouse services
and alcoholic beverages”, and that Applicant’s application to register the mark
Opposition No. 91215018
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WHO DAT? for food products was “much broader” than food products used in
restaurants and coffeehouses. The district court concluded that while there could be
overlap between the parties’ goods, it would not necessarily occur, and there was no
de facto breach of the settlement agreement because Applicant filed an application
to register the mark WHO DAT?.
On October 28, 2014, discovery in this opposition closed. On November 7, 2014,
Applicant served Opposer with discovery responses, including the responses to
Opposer’s requests for admission set forth below:
1. Admit that on May 16, 2007, the Louisiana Secretary of State
issued a Certificate of Good Standing to WDYC and WDYC obtained
the trade name “Who Dat Yat Chat, LLC” on May 17, 2007 from the
Louisiana Secretary of State for a coffee shop/restaurant in Violet.
Response: WDI admits that on May 16, 2007, the
Louisiana Secretary of State issued a Certificate of Good
Standing to WDYC. Applicant objects to the remainder of this
request on the grounds that it is vague and ambiguous; as a
result of the nature of the request, Applicant is unable to admit
or deny the remainder of this request as written.

8. Admit WDI has not owned or operated a restaurant during
the alleged existence of WDI.
Response: Admitted.

17. Admit that WDI’s application for a trademark, number
86050118, seeks exclusive trademark status for bakery products,
cakes, coffee and hamburger sandwiches.
Response: WDI objects to this request on grounds that it
is vague and ambiguous; particularly, WDI objects to the phrase
“trademark status” as not defined or susceptible to any specific
meaning. Subject to that objection, and without waiving it, WDI
admits that U.S. Trademark Application Serial No.86050118
seeks registration of the mark “Who Dat?” for bakery products,
cakes, coffee, hamburger sandwiches, pralines, seasonings, and
spices. However, WDI acknowledges that third parties, like
WDYC, may use the mark on related goods and services
pursuant to written authorization or license granted by WDI.
Opposition No. 91215018
6

24. Admit that WDI in application for a trademark, number
86050118, has not provided to USPTO any notice, qualification or
admission whatsoever as to the existence of the Settlement Agreement
and its attendant obligations.
Response: Admitted.

On November 14, 2014, Opposer moved for summary judgment on contract
estoppel, contending that Applicant’s application to register the WHO DAT? mark
for goods which could be sold in Opposer’s restaurant and coffeehouse, and
Applicant’s admissions made in discovery, demonstrate Applicant’s breach of the
parties’ settlement agreement. Applicant brings a cross-motion for summary
judgment on contract estoppel, and also seeks summary judgment under collateral
estoppel principles, arguing that the district court already issued an order finding
that Applicant’s filing of its application for the mark WHO DAT? was not a breach
of the settlement agreement, that Applicant’s November 7, 2014 discovery
responses do not demonstrate a breach subsequent to the district court’s May 14,
2014 decision, and that the Board should not take up a matter already decided by
the district court.
DISCUSSION
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). In reviewing a motion for summary judgment, the evidentiary
record and all reasonable inferences to be drawn from the undisputed facts must be
Opposition No. 91215018
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viewed in the light most favorable to the nonmoving party. Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The Board
may not resolve issues of material fact; it may only ascertain whether such issues
exist. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed.
Cir. 1993).
In support of its motion for summary judgment, Opposer submits excerpts from
Applicant’s responses to requests for admission, excerpts from the deposition of
Applicant’s principal Salvador Monistere in the 2012 civil action between the
parties, Applicant’s financial statements for 2009 produced in the 2012 civil action,
the parties’ October 25, 2012 settlement agreement, and a copy of the October 29,
2012 district court order dismissing the action.
Standing is an essential element of Opposer’s case which, if it is not proved,
defeats Opposer's claim. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 188 (CCPA 1982). While the notice of opposition pleads
Opposer’s use and registration of the WHO DAT YAT CHAT mark, Opposer did not
submit a status and title copy of the registration, did not submit a declaration with
averments regarding the registration or its common law rights, and Applicant’s
answer and discovery responses submitted by Opposer do not include admissions
regarding Opposer’s use or registration of the WHO DAT YAT CHAT or WHO DAT
mark. While the 2012 settlement agreement acknowledges Opposer’s rights to the
WHO DAT YAT CHAT and WHO DAT marks in 2012, this is insufficient to prove
Opposer’s standing as of the February 20, 2014 filing of the notice of opposition.
Opposition No. 91215018
8
Accordingly, Opposer’s motion for summary judgment is denied. See United Rum
Merchants Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481, 1483-84 (TTAB 1988)
(“opposer's motion for summary judgment has been denied in view of opposer's
failure to demonstrate its standing as a matter of law”).
The Board turns to Applicant’s cross-motion for summary judgment on contract
estoppel, and under collateral estoppel principles. Applicant submits Opposer’s
April 11, 2014 motion to reopen the district court action for enforcement of the
settlement agreement; Applicant’s response and Opposer’s reply to the motion; and
the court’s May 14, 2014 order denying the motion to reopen because Applicant’s
filing of its application for the mark WHO DAT? was not a breach of the settlement
agreement.
As a preliminary matter, the Board finds that the doctrine of collateral estoppel,
or issue preclusion, is inapplicable here. For collateral estoppel to apply, the Board’s
primary reviewing court requires: (1) identity of an issue in a prior proceeding, (2)
the identical issue was actually litigated, (3) determination of the issue was
necessary to the judgment in the prior proceeding, and (4) the party defending
against preclusion had a full and fair opportunity to litigate the issue in the prior
proceeding. See Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229,
76 USPQ2d 1310, 1313 (Fed. Cir. 2005) (citations omitted). The Board may find
issue preclusion where “the second action is upon a different cause of action and the
judgment in the prior suit precludes re-litigation of issues actually litigated and
necessary to the outcome of the first action.” Id. citing Parklane Hosiery Company,
Opposition No. 91215018
9
Inc. v. Shore. 439 U.S. 322, 326 n.5 (1979). Because the district court decided the
issue of whether the settlement agreement barred Applicant from filing the opposed
application in a post-judgment order denying a motion to reopen proceedings, and
the issue was neither litigated nor the subject of a final judgment on the merits by
the district court, issue preclusion is inapplicable here.3 Accordingly, Applicant’s
motion for summary judgment based on collateral estoppel is DENIED.
With respect to Applicant’s cross-motion for summary judgment on contract
estoppel, the Board may “consider the agreement, its construction or its validity if
necessary to decide the issues properly before it … including the issue of estoppel.”
Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 647 (Fed.
Cir. 1983). However, in lieu of considering the agreement, under the doctrine of
comity the Board may choose to defer to the recent district court order which has
already considered the same agreement. “Comity is defined as: The principle in
accordance with which the courts of one state or jurisdiction will give effect to the
laws and decisions of another, not as a matter of obligation, but out of deference and
respect.” Vancouver Plywood Co. v. United States, 860 F.2d 409, 412 (Fed. Cir. 1988)
citing Black’s Law Dictionary (5th ed. 1979). Accord Fioravanti v. Fioravanti
Corrado S.R.L., 230 USPQ 36, 44 (TTAB 1986) (“The alternative … is to suspend,
permitting the foreign tribunal to make the determination respecting the rights of
the parties which then can be afforded ‘comity’ in the United States proceeding.”).

3 Inasmuch as the district court’s order addressing the settlement agreement was not a
judgment on the merits, the Board also finds claim preclusion inapplicable here. See Jet
Inc. v. Sewage Aeration Sys., 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (“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.”).
Opposition No. 91215018
10
Refusing separate consideration of the settlement agreement under comity to the
district court order is suitable because the October 12, 2012 settlement agreement
between Opposer and Applicant was intended to resolve the trademark
infringement action pending in the district court, the district court referred to the
settlement agreement in its October 29, 2012 order dismissing the trademark
infringement action, and in its May 14, 2014 post-judgment order, the district court
considered the same arguments now made to the Board. In fact, review of the two
filings indicates that Opposer copied many paragraphs from its motion to the
district court to reopen the trademark infringement action into its motion to the
Board for summary judgment, and Opposer asserts the same provisions in the
agreement (Sections 1, 3-4, and 6) to both the court and the Board. Only Applicant’s
responses to Opposer’s request for admissions served in this opposition present new
matter not considered by the district court. In the interest of thoroughness, the
Board set forth above every admission to which Opposer refers in its motion for
summary judgment. However, it is clear that Applicant’s admissions regarding
Opposer’s corporate status, Applicant not owning or operating a restaurant, and
Applicant failing to inform USPTO of the settlement agreement, have nothing to do
with whether Applicant’s filing of its application is a breach of the settlement
agreement.
Opposer’s reliance on Applicant’s admissions for finding contract estoppel rests
on Applicant’s response to the request for admission (No. Seventeen) stating “third
parties, like [Opposer], may use the mark on related goods and services pursuant to
Opposition No. 91215018
11
written authorization or license granted by [Applicant].” Opposer argues (Motion, p.
14) that this admission is “in complete contravention of the obligations of the
Settlement Agreement”, and (Reply, p. 3) that Applicant’s “open statement … can be
no clearer” that “once [Applicant] is granted its application, either [Applicant] or its
licensees will have to fork over money or submit to costly litigation in circumvention
of the Settlement Agreement.” Contrary to Opposer’s argument, Applicant’s
discovery response does not establish breach of the agreement but, at most, raises
the same specter of prospective breach rejected by the district court.4 The district
court found (May 14, 2014 order, p. 6) that “while it is possible that there will be
some overlap that creates the potential for a breach, such overlap will not
necessarily occur, thus there is no breach of the Settlement Agreement until
[Applicant] challenges the rights granted in the Settlement Agreement.”
The Board, like the courts, has the inherent authority to control its docket by
opting to defer to the decision on the same contract issue made by another tribunal.
See Merial Ltd. v. Cipla Ltd., 103 USPQ2d 1001, 1013 (Fed. Cir. 2012) (“The “first-
to-file” rule is a doctrine of federal comity, intended to avoid conflicting decisions
and promote judicial efficiency, that generally favors pursuing only the first-filed
action when multiple lawsuits involving the same claims are filed in different
jurisdictions.”). Because Opposer seeks summary judgment on the same issue of

4 Inasmuch as the settlement agreement itself provides Applicant’s written authorization of
Opposer’s use of the WHO DAT mark for specified goods and services, Applicant’s discovery
response could be construed as an acknowledgment of Opposer’s rights under the
agreement.
Opposition No. 91215018
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contract estoppel which was already determined by the district court, the Board
affords comity to the district court’s May 14, 2014 order.
Accordingly, because the Board defers to the district court’s determination that
Applicant‘s filing of its application was not a breach of the parties’ settlement
agreement, there are no genuine disputes as to any material fact and entry of
judgment for Applicant on contract estoppel as a matter of law is appropriate.
In sum, Applicant’s motion for summary judgment on collateral estoppel is
denied; Opposer’s motion for summary judgment on contract estoppel is denied; and
Applicant's cross-motion for summary judgment on contract estoppel is GRANTED.
Inasmuch as this order does not end litigation in this matter, and the opposition
goes forward as to the claims of nonuse and likelihood of confusion, this order is
interlocutory in nature.5 Accordingly, the case is not ripe for appeal with respect to
the grant of summary judgment on the issue of contract estoppel. Appeal may be
taken within two months after the entry of any final decision in the case.
PROCEEDINGS RESUMED
Discovery CLOSED
Plaintiff’s Pretrial Disclosures 6/12/2015
Plaintiff’s 30-day Trial Period Ends 7/27/2015
Defendant’s Pretrial Disclosures 8/11/2015
Defendant’s 30-day Trial Period Ends 9/25/2015
Plaintiff’s Rebuttal Disclosures 10/10/201
Plaintiff’s 15-day Rebuttal Period Ends 11/9/2015

5 As set forth above, if Opposer fails to prove its standing at trial, there will be no need for
the Board to consider the merits of Opposer’s claims.
Opposition No. 91215018
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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 the 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.