SolarWindow Technologies, Inc.

This Opinion Is a

Precedent of the TTAB

Mailed: March 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re SolarWindow Technologies, Inc.

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Serial No. 87819480

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John J. Dresch of Dresch IP Law, PLLC,

for SolarWindow Technologies, Inc.

Loksye Lee Riso, Senior Examining Attorney, Law Office 110,

Chris A. F. Pedersen, Managing Attorney.

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Before Taylor, Wellington, and Greenbaum, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

SolarWindow Technologies, Inc. (“Applicant”) seeks registration on the Principal

Register of the standard character mark POWERCOATINGS for “electricity

generating coatings applied to various substrate surfaces for use in renewable energy,

namely, chemicals for use in connection with solar cells” in International Class 1.1

The Examining Attorney refused registration on the ground that the mark is

merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).

1 Application Serial No. 87819480, filed March 4, 2018, under Section 1(b) of the Trademark

Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use the mark in

commerce.

Serial No. 87819480

The Examining Attorney also asserts that “the doctrine of res judicata precludes re[-

]litigation of the descriptiveness issue,” based on a prior adjudication by the Board

involving the same mark and goods.

I. Background – Prior Decision

In 2014, Applicant filed an application (“Prior Application”) to register the same

mark in connection with the same goods at issue in this proceeding.2 In the Prior

Application, a refusal based on mere descriptiveness was affirmed by the Board on

appeal on July 13, 2016 (“Prior Decision”).3 Applicant did not appeal the Prior

Decision and the Prior Application was abandoned on October 17, 2016.

Applicant now is essentially taking a “second bite” at acquiring a registration by

filing the application at issue (“Present Application”) less than two years after the

Prior Decision.4 Once again, the Examining Attorney5 made the mere descriptiveness

refusal final. Applicant appealed and filed an appeal brief.6

Thereafter, the Examining Attorney requested remand of the Present Application

from Board jurisdiction so that she could “issue a new ground for refusal based on res

2 Application Serial No. 86337722, filed on July 15, 2014 and also based on an allegation of a

bona fide intention to use the mark in commerce under Section 1(b).

3 Prior Decision (Application Serial No. 86337722 at 8 TTABVUE). The Prior Decision was a

final decision. See In re Info. Builders Inc., 2021 USPQ2d 228, at *1 n.1 (TTAB 2021) (defining

“final decision” as a final dispositive ruling that ends litigation on the merits before the

Board).

4 To be clear, Applicant is not claiming a new or different basis for registration in this case,

e.g., acquired distinctiveness under Section 2(f), or seeking registration on the Supplemental

Register.

5 The same Examining Attorney assigned to the Present Application also examined the Prior

Application.

6 1 TTABVUE (appeal); 4 TTABVUE (Applicant’s appeal brief).

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Serial No. 87819480

judicata,” resulting from the Prior Decision.7 The Board granted remand and the

Examining Attorney made the res judicata refusal final based on the Prior Decision,

while maintaining the finality of the Section 2(e)(1) mere descriptiveness refusal.8

Once the Board resumed the appeal, Applicant was allowed time to file a

supplemental brief “directed only to the additional ground for refusal of registration

[res judicata], if it so desires.”9 Applicant did not file a supplemental brief.10

The Examining Attorney then filed a brief on both the mere descriptiveness

refusal and res judicata.11 Applicant did not file a reply brief.

II. Res Judicata Based on the Prior Decision

The Examining Attorney correctly notes that “the mark in the subject application

and in the prior application are identical and are for identical goods.”12 The

Examining Attorney further asserts that:13

The prior application was refused registration pursuant to

Section 2(e)(1) of the Trademark Act on the ground that

7 6 TTABVUE (Examining Attorney’s Request for Remand).

8 March 10, 2020 Office Action.

9 10 TTABVUE 1.

10 Although we do not have a brief from Applicant addressing the issue of res judicata, we

have considered the entire prosecution file. This includes Applicant’s response filed February

14, 2020, which is discussed infra and contains Applicant’s arguments against the application

of res judicata.

11 12 TTABVUE (Examining Attorney’s brief). We note that the Examining Attorney, in her

brief, maintained an objection to evidence that Applicant submitted with its response filed

after remand on the basis that it is “irrelevant to the res judicata issue and is objected to as

untimely, to the extent it is offered in further support of its arguments against the pending

Section 2(e)(1) issue on appeal.” Office Action issued March 10, 2020 at TSDR 1. The

Examining Attorney’s objection is denied to the extent that we consider the evidence solely

for purposes of determining the issue of res judicata.

12 12 TTABVUE 6.

13 Id. at 7.

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Serial No. 87819480

POWERCOATINGS is merely descriptive as applied to the

goods. The Board affirmed the refusal in a decision issued

on July 13, 2016. In view of all the foregoing, res judicata

precludes re[-]litigation of the issue of mere

descriptiveness under Section 2(e)(1) in the instant case

because there is identity of the parties, the Board entered

a judgment on the merits, and the facts of the instant case

are the same.

Upon remand for consideration of the res judicata issue and in response to an

Office Action, Applicant makes the following statements:14

Applicant respectfully traverses the assertion that the

present claim is barred by res judicata because no

conditions have changed since the Trademark Trial and

Appeal Board rendered their earlier final judgment on the

merits, and that the applicant’s present claim, i.e., that

POWERCOATINGS is not merely descriptive, is based on

the same set of facts as the previously adjudicated claim,

and respectfully requests reconsideration in view of the

following remarks.

Applicant respectfully submits that additional facts are

submitted herewith to support Applicant’s additional

traversal arguments submitted in the Reply filed on

[October 9, 2018] and Appeal Brief filed on [July 12, 2019],

and that such additional facts have not been previously

considered or adjudicated, and therefore, the present claim

is not barred by res judicata.

Applicant attached evidence to its response as arguably showing that its proposed

mark, POWERCOATINGS, is not merely descriptive because: (1) it is similar in

appearance and sound to “powder coating,” and thus (2) the proposed mark will be

“associated with, or used in conjunction with, the term ‘powder coating’ in the powder

coating industry.”15 Applicant, however, does not specify how these “additional facts”

14 Response to Office Action filed February 14, 2020, TSDR p. 1.

15 Id.

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present new circumstances or whether the evidence it relies upon was unavailable

when the Board previously adjudicated the issue of mere descriptiveness of

Applicant’s mark in the Prior Decision.

Under the doctrine of res judicata (also frequently referred to as “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.” In re Bose Corp.,

476 F.3d 1331, 81 USPQ2d 1748, 1752 (Fed. Cir. 2007) (quoting Parklane Hosiery Co.

v. Shore, 439 U.S. 322, 326 (1979)). In Bose, the Court of Appeals for the Federal

Circuit affirmed the Board’s application of res judicata in an ex parte appeal that was

based on an earlier decision by the Board which was also affirmed by the Federal

Circuit.16 The Court noted “there is no dispute that the same applicant . . . is involved

in the prior and present proceedings and that there was a prior final judgment on the

merits. . . . Thus, the general prerequisites of res judicata have been satisfied.” 81

USPQ2d at 1752. The Court also considered and rejected the applicant’s assertion of

“facts and circumstances [that] have changed and were not considered in the prior

proceeding such that application of res judicata in this appeal is not appropriate.” Id.;

See also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1217 (Oct. 2018)

(“A plaintiff is barred by res judicata from bringing a second action if: ‘(1) there is

identity of parties (or their privies); (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

16 In the earlier Bose proceeding, the Board found the applicant’s mark was functional and

this determination was upheld by the Federal Circuit. In re Bose Corp., 772 F.2d 866, 227

USPQ 1 (Fed. Cir. 1985).

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transactional facts as the first.’”) (quoting Levi Strauss & Co. v. Abercrombie & Fitch

Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1171 (Fed. Cir. 2013))).

We are cognizant, however, that the Court in Bose also “warned that particular

‘caution is warranted in the application of [claim] preclusion by the PTO, for the

purposes of administrative trademark procedures include protecting both the

consuming public and the purveyors.’” In re Bose, 81 USPQ2d at 1752 (quoting

Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310,

1314 (Fed. Cir. 2005)). “[R]es judicata is not applicable where ‘it is apparent that all

the questions of fact and law involved … [in the second proceeding] were not

determined in the previous proceeding.’” Id. (quoting Litton Indus., Inc. v. Litronix,

Inc., 577 F.2d 709, 198 USPQ 280 (CCPA 1978) (internal citation omitted)). Cf. In re

Anderson, 101 USPQ2d 1912, 1916 (TTAB 2012) (issue preclusion found inapplicable

due to differences between the mark FUTURE MOTORS involved in the ex parte

proceeding and the mark FUTURE at issue in a final judgment previously

adjudicated in an inter partes case).

Prior to Bose, in In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988), the Board

addressed the question of whether a prior final judgment arising out of an ex parte

case should have preclusive effect on a future application filed by the same

applicant.17 The Board reasoned in that case,

17 The applicant in Honeywell was seeking registration, for the second time, of a mark

described as the configuration of a thermostat cover. The applicant had sought to register a

very similar configuration mark for a thermostat cover 17 years earlier. With respect to the

first application, the Board ultimately determined that the mark was functional, In re

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[i]n general, there is nothing to preclude an applicant from

attempting a second time in an ex parte proceeding to

register a particular mark if conditions and circumstances

have changed since the rendering of the adverse final

decision in the first application. The question generally in

the second proceeding is whether changes in facts and

circumstances do exist and, if so, whether they can support

the registration sought.

Id. at 1601-02. The Board found that the applicant in Honeywell was not precluded

from seeking registration a second time, specifically noting that significant time had

passed since the first decision and changes in factual circumstances that were crucial

to the functionality refusal to registration of the applicant’s mark:

[C]onditions have changed since its prior application was

refused registration, such that there are now additional

facts which would have a bearing on applicant’s right to

register the thermostat cover configuration. Specifically,

applicant has stated that the present record reflects what

has happened in the marketplace in the 17 years since the

record of the original application closed and since

applicant’s design patent on the configuration expired. We

think that this evidence is certainly relevant to the issue of

the need of competitors to use this configuration to compete

effectively, and to the question of the availability to

competitors of alternative designs, one of the four

evidentiary factors [involved in functionality refusal].

Id. at 1602. See also In re Morton-Norwich Prods., 671 F.2d 1332, 213 USPQ 9,

18 (CCPA 1982) (“[T]rademark rights are not static and … the right to register

must be determined on the basis of the factual situation as of the time when

registration is being sought.”).

Honeywell, Inc., 187 USPQ 576 (TTAB 1975), and the Court of Customs and Patent Appeals

affirmed. In re Honeywell, Inc., 772 F.2d 871, 189 USPQ 343, 344 (CCPA 1976).

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The Board previously adjudicated whether Applicant’s mark is merely descriptive

of the involved goods. The Prior Decision issued less than 20 months before Applicant

filed the Present Application for the same mark and for the same goods. Applicant

argued to the Examining Attorney that there are now “additional facts” that prevent

res judicata. But pointing to additional facts or even making a more persuasive

argument based on those facts does not avoid preclusion from an earlier decision. Cf.

SynQor, Inc v. Vicor Corp., No. 2019-1704, ___ F.3d ___, 2021 USPQ2d 208, at *12

(Fed. Cir. Feb. 22, 2021) (“A losing party does not get a second bite at the apple simply

because they can find [] new and arguably more persuasive” evidence to present in

the second proceeding.). Rather, the losing party must demonstrate a material change

in the relevant conditions or circumstances, and we are not persuaded that there have

been any such changes since the Prior Decision. Applicant’s arguments raised in its

response to the Examining Attorney’s assertion of res judicata are, at best,

alternative arguments why it believes its mark is not merely descriptive of its goods.

See Bose, 81 USPQ2d at 1752 (rejecting argument that new evidence in the form of

applicant’s new promotional materials “represent a changed circumstance such that

we should bar application of the doctrine of res judicata”); Honeywell, 8 USPQ2d at

1601-02.

We acknowledge Applicant’s argument that “even with the device in full view and

even with knowledge of the product being a coating, a prospective consumer may at

first be confused, for example, as to whether the mark is referring to a type of

protective coating or finish applied to the product or a type of method for applying a

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protective coating or finish, or whether the mark simply is a misspelling of the term

‘powder coating.’”18 Even if this was not argued during the prosecution of the Prior

Application, and is supported by evidence, it does not represent a change of

circumstances or conditions. As mentioned, Applicant has not shown that possible

consumer confusion with Applicant’s proposed mark, POWERCOATINGS, and the

wording “powder coating” was not an available argument during the prosecution of

the Prior Application. In other words, Applicant does not demonstrate the

required material change of circumstances or conditions merely by

bringing up a new argument which could have been made during the

prosecution of Applicant’s Prior Application.19 It was incumbent upon

Applicant to put its best foot forward by presenting during prosecution of the Prior

Application all arguments that it believed could overcome the descriptiveness refusal.

Cf. CTRL Sys. Inc. v. Ultraphonics of N. Am. Inc., 52 USPQ2d 1300, 1302 (TTAB

1999) (citing Williams v. The Five Platters, Inc., 510 F.2d 963, 184 USPQ 744 (CCPA

1975), aff’g 181 USPQ 409 (TTAB 1974) (holding a party and its attorney responsible

for remaining diligent in proceedings, and inaction will not excuse the party so as to

provide the party another day in court).

Considering the record in its entirety, we find that the same applicant, mark, and

goods are involved in both the prior and present proceedings and the Prior Decision

18 Response to Office Action filed February 14, 2020, TSDR p. 1.

19 We note further that this principle has been held to apply even if the new argument shows

that the first decision was wrong. See B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S.

138, 157 (2015) (preclusion doctrines “prevent relitigation of wrong decisions just as much as

right ones”) (citations omitted).

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was a final judgment on the merits, i.e., the mere descriptiveness of the identical

proposed mark. Thus, the prerequisites for res judicata have been satisfied. In re

Bose, 81 USPQ2d 1752. In addition, there has been no change of conditions or

circumstances so as to justify not applying res judicata based on our Prior Decision.

Cf. In re Honeywell, 8 USPQ2d at 1601-02. Therefore, res judicata applies in this case

and this precludes re-litigation of the issue of descriptiveness under Section 2(e)(1).

Decision: The refusal to register the proposed mark is affirmed.

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