The Urock Network, LLC v. Umberto Sulpasso

This Decision is a UNITED STATES PATENT AND TRADEMARK OFFICE

Precedent of the TTAB Trademark Trial and Appeal Board

P.O. Box 1451

Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

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).

Cancellation No. 92058974

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.

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Cancellation No. 92058974

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).

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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

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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.

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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

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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

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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).

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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

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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.,

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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).

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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

11We 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.

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