Common Sense Press Inc DBA Pocket Jacks Comics v. Ethan Van Sciver and Antonio J. Malpica

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

THIS ORDER IS A P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

Bukrinsky

May 19, 2023

Cancellation No. 92075375

Common Sense Press Inc. d/b/a Pocket

Jacks Comics

v.

Ethan Van Sciver and Antonio J. Malpica

Before Wellington, Pologeorgis, and English,

Administrative Trademark Judges.

By the Board:

This proceeding comes before us on Ethan Van Sciver and Antonio J. Malpica’s

(collectively “Respondents”) “Notice of Termination of Re-Examination and Motion

for Judgment,” filed January 9, 2023.1 The motion is fully briefed.2

1 28 TTABVUE. After the commencement of this proceeding, the involved mark was assigned

to Ethan Van Sciver. The assignment was recorded with the Assignment Branch of the

United States Patent and Trademark Office (USPTO) at Reel/Frame 7256/0446. Mr. Sciver

was joined as a party defendant to this proceeding on July 6, 2021. 17 TTABVUE 4. Mr.

Malpica was maintained as a party defendant in the proceeding only to facilitate discovery

and trial.

2 See 28-30 TTABVUE. Citations to the cancellation record refer to TTABVUE, the Board’s

online docketing system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB

2014). Specifically, the number preceding “TTABVUE” corresponds to the docket entry

number, and any number(s) following “TTABVUE” refer to the page number(s) of the docket

entry where the cited materials appear.

The parties’ submissions, including trial briefs, motions, responses, and replies, should

utilize citations to the TTABVUE record created throughout the proceeding and during trial

to facilitate the Board’s review of the evidence throughout the proceeding and at f inal

Cancellation No. 92075375

I. Background

Respondent Ethan Van Sciver owns, by virtue of assignment from Respondent

Antonio J. Malpica, Registration No. 6102744 for the standard character mark

COMICS GATE (“COMICS” disclaimed) for “comics,” in International Class 16.3

Common Sense Press Inc. d/b/a Pocket Jacks Comics (“Petitioner”) filed a petition to

cancel the registration on October 1, 2020, asserting claims of nonuse, abandonment,

and fraud.4 Respondents filed an answer on December 29, 2021 denying the salient

allegations in the petition to cancel and asserting the affirmative defense of unclean

hands.5

On March 23, 2022, Petitioner filed a petition to the Director of the USPTO

requesting reexamination of Registration No. 6102744 under Trademark Act 16B, 15

U.S.C. § 1066b.6 The same day, Petitioner filed a motion to suspend this cancellation

proceeding pending final determination of any reexamination proceeding the Director

might institute.7

hearing. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

§ 801.03 (2022).

3 The underlying intent-to-use application was filed by Mr. Malpica on September 3, 2018

under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). The registration issued on July 14,

2020.

4 1 TTABVUE.

5 24 TTABVUE.

6 See 25 TTABVUE 7. See also Petition for Expungement/ReExam form. The filings relevant

to the reexamination proceeding can be viewed from the USPTO’s Trademark Status &

Document Retrieval (TSDR) database by accessing the registration record for Registration

No. 6102744.

7 25 TTABVUE.

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Cancellation No. 92075375

The Director of the USPTO instituted a reexamination proceeding on May 9, 2022

(Reexamination No. 2022-100062R).8 Therein, Respondents were informed that to

avoid cancellation they must submit evidence sufficient to “establish use of the mark

for [comics] as of the deadline for filing a statement of use pursuant to Trademark

Act Section 1(d), which is August 13, 2020.” 9

On May 19, 2022, the Board granted Petitioner’s motion to suspend, finding that

“the reexamination proceeding may have a bearing on this cancellation proceeding,

inasmuch as it could result in cancellation of the involved registration.” 10 The parties

were ordered to notify the Board within twenty days of final determination of the

reexamination proceeding so the cancellation proceeding could be called up for

appropriate action.11

The reexamination proceeding was terminated on January 6, 2023 when the

Director issued a notice of termination stating:

Upon review of the evidence of record, the USPTO determined that

registrant has demonstrated use of the mark in commerce for all goods,

subject to the proceeding. 37 C.F.R. § 2.93(c)(3)(i).

The evidence and arguments provided by the registrant demonstrates

valid use of the relevant goods in interstate commerce. Registrant has

also established that the relevant goods were provided through trade

channels that directly affect interstate commerce during the period of

time relevant to this proceeding.

8 See Notice of Institution/Non-Final Action.

9 Id. at TSDR 2.

10 27 TTABVUE 2 (citing Trademark Rule 2.94, 37 C.F.R. § 2.94). See also TBMP § 510.02(a)

(Board proceedings may be suspended pending final determination of an expungement or

reexamination proceeding pending before the USPTO, where such proceeding may have a

bearing on the Board case).

11 27 TTABVUE 3-4.

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Cancellation No. 92075375

Accordingly, no change is required to the registration, and the

proceeding is terminated. 37 C.F.R. § 2.94.12

Before us now is Respondents’ Notice of Termination of Re-Examination and

Motion for Judgment.13 Respondents request that the Board enter judgment in their

favor on Petitioner’s nonuse and abandonment claims based on issue preclusion, or

in the alternative, issue a show cause order to Petitioner as to why judgment should

not be entered against it on these claims.14

II. Reexamination and Expungement Proceedings Under the

Trademark Modernization Act

Reexamination and expungement proceedings are ex parte proceedings created by

the Trademark Modernization Act of 2020 (“TMA”), and related regulations went into

effect on December 18, 2021. See 15 U.S.C. §§ 1066a (expungement), 1066b

(reexamination); Trademark Rules 2.91-2.94, 37 C.F.R. §§ 2.91 – 2.94. Both types of

proceedings are instituted in connection with a registration by the Director of the

USPTO, either on the Director’s own initiative or pursuant to the receipt of a petition,

upon determining that there exists information and evidence that supports a prima

facie case of nonuse of the mark for some or all of the goods or services identified in

the registration as of the relevant time period. 15 U.S.C §§ 1066a(c)(1), 1066b(d)(1);

accord 37 C.F.R. § 2.92. Any person filing a petition requesting institution of a

reexamination or expungement proceeding must submit “all documentary evidence

supporting a prima facie case of nonuse of the mark in commerce and an itemized

12 Notice of Termination - Acceptance.

13 28 TTABVUE.

14 28 TTABVUE 3; 30 TTABVUE 3.

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Cancellation No. 92075375

index of such evidence.” 37 C.F.R. § 2.91(c)(9). After submitting the petition, however,

that person has no further involvement with any reexamination or expungement

proceeding that the Director may institute. Such a proceeding, if instituted, proceeds

ex parte. 15 U.S.C. §§ 1066a(d), 1066b(e) (both stating that the procedures for the

proceedings “shall be the same as the procedures” for ex parte examination).

After institution, the registrant has an opportunity to rebut the prima facie case

of nonuse. 15 U.S.C. §§ 1066a(e),(f), 1066b(f); accord 37 C.F.R. § 2.93(a). If the

registrant is successful in rebutting the evidence and complie s with all outstanding

requirements, the proceeding is terminated with no change to the registration. 15

U.S.C. §§ 1066a(g), 1066b(g); accord 37 C.F.R. §§ 2.93, 2.94.

The statute contains explicit estoppel provisions that bar the filing of future

expungement or reexamination proceedings as to the identical goods or services once

a proceeding of the same kind has been instituted. 15 U.S.C. §§ 1066a(j), 1066b(j);

accord 37 C.F.R. § 2.92(d)(1) and (2). However, neither the statute nor regulations set

forth a limitation on any party’s ability to petition to cancel a registration just because

it is or has been the subject of a reexamination or expungement proceeding. See

generally 15 U.S.C. §§ 1066a, 1066b; 37 C.F.R. §§ 2.91-2.94. Consistent with the

statute, the USPTO’s rules confirm that “termination of an expungement or

reexamination proceeding in favor of the registrant does not bar future nonuse

cancellation actions under [Trademark Rule] § 2.111 with respect to the registration.”

CHANGES TO IMPLEMENT PROVISIONS OF THE TRADEMARK

MODERNIZATION ACT OF 2020, 86 Fed. Reg. 64300, 64306 (Nov. 17, 2021); see also

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Cancellation No. 92075375

37 C.F.R. § 2.111(b). It is also clear that the decision to institute (or not) “shall not

prejudice any party’s right to raise any issue and rely on any evidence in any other

proceeding” except as provided in sections 1066a(j) and 1066b(j). 15 U.S.C.

§§ 1066a(c)(3), 1066b(d)(3).

III. Reexamination and Expungement Proceedings Have No

Preclusive Effect in TTAB Proceedings Against Non-Parties to

Those Ex Parte Proceedings

Inasmuch as reexamination and expungement proceedings are ex parte, they have

no preclusive effect against a petitioner who seeks to cancel that same registration

through a cancellation proceeding – even if that petitioner also submitted the petition

requesting institution of a reexamination or expungement proceeding. See Blonder--

Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329, 169 USPQ 513, 519 (1971)

(“litigants ... who never appeared in a prior action [ ] may not be collaterally estopped

without litigating the issue.... Due process prohibits estopping them despite one or

more existing adjudications of the identical issue which stand squarely against their

position.”); Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856

(Fed. Cir. 2000) (claim preclusion only applies where both proceedings involve the

same parties or their privies); In Re FCA US LLC, 126 USPQ2d 1214, 1219 (TTAB

2018) (“We have never applied issue preclusion against a nonparty to the first action”)

(quoting In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835, 1840

(Fed. Cir. 2007) (emphasis omitted). Cf. In re Cordua Rests., 823 F.2d 594, 118

USPQ2d 1632, 1635 n. 2 (Fed. Cir. 2016) (decision in an ex parte registration

proceeding does not have preclusive effect in subsequent proceeding); Miss Universe

L.P. v. Community Marketing, Inc., 82 USPQ2d 1562, 1571 (TTAB 2007) (Examining

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Cancellation No. 92075375

Attorney’s decision to pass applicant’s mark to publication was “not dispositive or

even relevant” in subsequent inter partes proceeding).

Further, inasmuch as a person who files a petition requesting institution of a

reexamination or expungement proceeding is not a party to that ex parte proceeding,

he or she has no right to appeal the Director’s decision in that proceeding. As we

recently stated, “[i]f a party cannot appeal the outcome of an earlier proceeding, then

the second action is not barred under either [claim or issue] preclusion.” Valvoline

Licensing & Intellectual Prop. LLC v. Sunpoint Int’l. Grp. USA Corp., 2021 USPQ2d

785, at *7 (TTAB 2021) (citing AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357,

2019 USPQ2d 171683, at *4-5 (Fed. Cir. 2019) (it is “a traditional preclusion principle

that neither claim nor issue preclusion applies when appellate review of the decision

with a potentially preclusive effect is unavailable”)).

In view of the foregoing, we hold as a matter of law that the termination of a

reexamination or expungement proceeding in favor of a registrant cannot be the basis

for the registrant’s assertion of claim or issue preclusion in a proceeding before the

Board to cancel that registration. This is consistent with the statute, which explicitly

provides the parameters for when expungement and reexamination proceedings have

estoppel effect, and does not include in that a preclusive effect for TTAB proceedings.

Nor is there a basis to issue a show cause order to a petitioner in a cancellation

proceeding in that situation. Instead, upon receiving notice from the parties that a

pending reexamination or expungement proceeding involving a registration has been

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Cancellation No. 92075375

terminated in favor of the registrant in a cancellation proceeding to cancel that

registration, the Board will simply resume the proceeding and reset dates.

Accordingly, Respondents’ motion for judgment based on either claim or issue

preclusion, and in the alternative for a show cause order, is denied.15

IV. Proceedings Resumed; Dates Reset

In view of the termination of the reexamination proceeding that occasioned the

suspension of this cancellation action, proceedings herein are resumed. Remaining

discovery, disclosure, and trial dates are reset as follows:

Expert Disclosures Due 8/23/2023

Discovery Closes 9/22/2023

Plaintiff's Pretrial Disclosures Due 11/6/2023

Plaintiff's 30-day Trial Period Ends 12/21/2023

Defendant's Pretrial Disclosures Due 1/5/2024

Defendant's 30-day Trial Period Ends 2/19/2024

Plaintiff's Rebuttal Disclosures Due 3/5/2024

Plaintiff's 15-day Rebuttal Period Ends 4/4/2024

Plaintiff's Opening Brief Due 6/3/2024

Defendant's Brief Due 7/3/2024

Plaintiff's Reply Brief Due 7/18/2024

Request for Oral Hearing (optional) Due 7/28/2024

15 Petitioner is reminded that under Rule 11 of the Federal Rules of Civil Procedure, by

presenting to the Board a pleading, written motion, or other paper, whether by signing, filing,

submitting, or later advocating it, a party is certifying that all claims and other legal

contentions asserted in this proceeding are warranted by existing law or by a nonfriv olous

argument for the extension, modification, or reversal of existing law and that the factual

contentions have evidentiary support or, if specifically so identified, will likely have

evidentiary support after a reasonable opportunity for further investigation or discovery. See

Fed. R. Civ. P. 11(b). See also TBMP § 318. In addition, the parties are advised that although

the submissions provided in a reexamination or expungement proceeding and entered in the

registration form part of the record, they are subject to the evidentiary rules governing Board

proceedings. See Trademark Rule 2.122; TBMP § 704.

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Cancellation No. 92075375

IMPORTANT TRIAL AND BRIEFING INSTRUCTIONS

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is

taken and introduced out of the presence of the Board during the assigned testimony

periods. The parties may stipulate to a wide variety of matters, and many

requirements relevant to the trial phase of Board proceedings are set forth in

Trademark Rules 2.121 through 2.125, 37 C.F.R. §§ 2.121-2.125. These include

pretrial disclosures, the manner and timing of taking testimony, matters in evidence,

and the procedures for submitting and serving testimony and other evidence,

including affidavits, declarations, deposition transcripts and stipulated evidence.

Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b),

37 C.F.R. §§ 2.128(a) and (b). Such briefs should utilize citations to the TTABVUE

record created during trial, to facilitate the Board’s review of the evidence at final

hearing. See TBMP § 801.03. Oral argument at final hearing will be scheduled only

upon the timely submission of a separate notice as allowed by Trademark Rule

2.129(a), 37 C.F.R. § 2.129(a).

9