Hollywood Casinos, LLC, Penn Entertainment, Inc. v. Zarco Hotels Incorporated

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

WDJ

May 31, 2024

Opposition No. 91282993

Hollywood Casinos, LLC and Penn

Entertainment, Inc.

v.

Zarco Hotels Incorporated

Before Kuhlke, Larkin, and Elgin,

Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of Applicant’s

motion, filed December 1, 2023, to dismiss Opposers’ amended notice of opposition

pursuant to Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can

be granted.1 Applicant asserts that Opposers’ claims should be dismissed due to claim

preclusion based on an earlier opposition proceeding filed by Opposer Hollywood

Casinos LLC. The motion is fully briefed.

For the reasons set forth below, we deny the motion.

1 18 TTABVUE. In this order, the Board cites to the proceeding record by the TTABVUE

docket entry number and TTABVUE page number, in accordance with the guidance provided

in TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 106.03, 702.05

and 801.01 (2023). 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.

Opposition No. 91282993

I. Preliminary Matters

A. Motion Construed as One for Summary Judgment

As an initial matter, if, on a motion to dismiss, matters outside the pleading are

submitted and not excluded by the Board, the motion will be treated as a motion for

summary judgment under Fed. R. Civ. P. 56. Fed. R. Civ. P. 12(d); see Haider Cap.

Holding Corp. v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991, at *1-2 (TTAB 2021)

(construing motion to dismiss as motion for summary judgment where basis is claim

preclusion and moving party relies on matter outside of pleadings); Urock Network,

LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.5 (TTAB 2015) (motion to dismiss

considered as one for summary judgment where it asserts claim preclusion).2

Ordinarily, the parties to the proceeding will be notified that the motion to dismiss is

being treated as a motion for summary judgment, and they will be given a reasonable

opportunity to present all material made pertinent to such a motion by Fed. R. Civ.

P. 56. See Fed. R. Civ. P. 12(d). Such notice may be unnecessary, however, in those

cases where the parties themselves clearly have treated a motion to dismiss for

failure to state a claim as a motion for summary judgment, and the nonmoving party

has responded to the motion on that basis. See Selva & Sons, Inc. v. Nina Footwear,

2 Applicant has not yet made its initial disclosures. 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), 37 C.F.R. § 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 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); see also TBMP § 503.04. Because this motion is based on claim preclusion, and

we sua sponte treat it as a summary judgment motion, the motion is not premature.

2

Opposition No. 91282993

Inc., 705 F.2d 1316, 217 USPQ 641, 646 (Fed. Cir. 1983); Haider Cap., 2021 USPQ2d

991, at *2 (motion to dismiss converted to summary judgment on issue of claim

preclusion where non-movant did not object to matters outside the pleadings and

engaged motion to dismiss on the merits); Institut National Des Appellations

d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1876 n.1 (TTAB 1998) (both

parties submitted evidentiary materials outside the pleadings in support of and in

opposition to a Fed. R. Civ. P. 12(b)(6) motion); TBMP § 504.03.

Here, Applicant submitted with its motion portions of the record in prior

Opposition No. 91203686 and its subsequent appeal to the Federal Circuit Court of

Appeals that form the basis for Applicant’s assertion of claim preclusion. Applicant

and Opposers have clearly treated the motion as one for summary judgment, and we

do as well, because both parties cite to the evidence submitted with, and argue the

merits of, Applicant’s motion.

B. Unpleaded Defense

Applicant has not yet filed an answer to the notice of opposition or amended notice

of opposition, so it has not yet pleaded claim preclusion as an affirmative defense.

Generally, a party may not obtain summary judgment on an issue that has not been

pleaded. However, if the parties, in briefing a summary judgment motion, have

treated an unpleaded issue on its merits and the nonmoving party has not objected

to the motion on the ground that it is based on an unpleaded issue, the pleadings may

be deemed amended, by agreement of the parties, to allege and defend the issue. See

NPG Records, LLC v. JHO Intell. Prop. Holdings, LLC, 2022 USPQ2d 770, at *14 n.

3

Opposition No. 91282993

28 (TTAB 2022) (pleadings deemed amended where nonmoving party did not object

to motion on improperly pleaded claim and treated motion on its merits); see also

TBMP § 528.07(a). Here, Applicant has not yet filed its answer to the notice of

opposition so there is no pleading to be amended. Nonetheless, inasmuch as Opposers

have not objected to Applicant’s allegations based on claim preclusion and have

opposed the motion on its merits, we will consider the defense solely for the purposes

of summary judgment.

II. Background

Applicant owns application Serial No. 97118996 for the standard character mark

HOLLYWOOD HOTEL (“HOTEL” disclaimed, and which claims acquired

distinctiveness for the mark in whole under Section 2(f) of the Trademark Act, 15

U.S.C. § 1052(f)) for the following services in International Class 43:

Bar and cocktail lounge services; Hotel, restaurant and catering services;

Providing social meeting, banquet and social function facilities; Provision of

conference, exhibition and meeting facilities; all of the foregoing excluding the

provision of, and facilities offering, casino services, casino-style games, betting,

gambling, gaming machines, gaming contests, wagering games, slot games,

and horse races.3

Opposers Penn Entertainment, Inc., and its wholly-owned subsidiary Hollywood

Casinos, LLC, filed a notice of opposition in which they have pleaded ownership of

the following registrations:4

Reg. Mark Services

No.

1851759 HOLLYWOOD CASINO Casino services in Class 41

(“CASINO” disclaimed)

3 Filed November 10, 2021 under a Section 1(a), 15 U.S.C. § 1051(a), use in commerce basis.

4 While Opposers both plead ownership of the registrations, Hollywood Casinos, LLC is

identified as the owner in the registrations in the Office database. See 14 TTABVUE 19-82.

4

Opposition No. 91282993

1903858 HOLLYWOOD CASINO Hotel services in Class 42

(“CASINO” disclaimed)

1949319 Hotel services in Class 42

(“CASINO” disclaimed)

4399889 Casino services; Entertainment in the nature

of horse races, nightclubs, variety and

(“CASINO” disclaimed) comedy shows, in Class 41

Bar services; Restaurant services, in Class 43

4400203 HOLLYWOOD CASINO Retail store services featuring a wide variety

(“CASINO” disclaimed) of consumer goods of others; retail store

services featuring clothing and fashion

accessories; retail souvenir store services, in

Class 35

Entertainment in the nature of horse races;

live performances featuring musicians,

singers, comedians and professional fighting;

nightclub services; museum services;

providing live sporting events, namely, poker

tournaments, in Class 41

Restaurant, bar and cocktail lounge services,

coffee shops; banquet and catering services;

provision of accommodation and facilities for

meetings; rental of banquet and social

function facilities for special occasions,

namely, wedding receptions, birthday

parties, bachelor and bachelorette parties, in

Class 43

4629458 Entertainment, namely, conducting horse

races; providing facilities for patrons to play

video lottery terminals and other games of

(“GAMING” disclaimed) chance, in Class 41

Restaurant services; Bar services, in Class 43

4629459 HOLLYWOOD Entertainment, namely, conducting horse

GAMING races; providing facilities for patrons to play

(“GAMING” disclaimed) video lottery terminals and other games of

chance, in Class 41

Restaurant services; Bar services, in Class 43

5029902 HOLLYWOOD provision of facilities for business meetings,

GAMING in Class 35

(“GAMING” disclaimed Entertainment services, namely, casino

for Class 41) gaming; gaming facilities featuring slot

machines; live performances featuring

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Opposition No. 91282993

musicians, singers, and comedians; nightclub

services, in Class 41

Sports bars; pizza parlors; coffee-house and

snack-bar services; providing food and drink

services for others in the nature of self-service

and take-out restaurants located in food

courts; providing banquet facilities and

catering services; providing temporary

accommodations and providing general

purpose facilities for meetings; rental of

general purpose facilities, namely, banquet

and social function facilities for special

occasions, namely, wedding receptions,

birthday parties, bachelor and bachelorette

parties, trade shows, parties and special

events for social entertainment purposes,

fundraisers, class reunions, and corporate

and association meetings, in Class 43

5052475 provision of facilities for business meetings,

in Class 35

Entertainment services, namely, casino

(“GAMING” disclaimed gaming; gaming facilities featuring slot

for Class 41) machines; live performances featuring

musicians, singers, and comedians; nightclub

services, in Class 41

Sports bars; pizza parlors; coffee-house and

snack-bar services; providing food and drink

services for others in the nature of self-service

and take-out restaurants located in food

courts; providing banquet facilities and

catering services; providing temporary

accommodations and providing general

purpose facilities for meetings; rental of

general purpose facilities, namely, banquet

and social function facilities for special

occasions, namely, wedding receptions,

birthday parties, bachelor and bachelorette

parties, trade shows, parties and special

events for social entertainment purposes,

fundraisers, class reunions, and corporate

and association meetings, in Class 43

6

Opposition No. 91282993

5100555 HOLLYWOOD CASINO Entertainment services, namely, providing

(“CASINO” disclaimed) computer games, games of chance and

wagering games through a computer, social

networking or mobile platform; on-line casino

services; providing on-line information about

casinos, gambling and general news about

the gaming industry; providing information

regarding sporting events provided on-line

from a computer database or electronic

network, including the Internet, in Class 41

Opposers also claim prior common law rights in the marks HOLLYWOOD

CASINO AND HOTEL and HOLLYWOOD HOTEL for “a wide array of hotel, bar,

restaurant, lounge, facilities and services for banquets, meetings, and conferences,

catering, hospitality, nightclub, event, entertainment, casino and gaming services,

and related services.”5

As grounds for opposition, Opposers assert claims of likelihood of confusion under

Trademark Act Section 2(d), and geographic descriptiveness without acquired

distinctiveness under Trademark Act Sections 2(e)(2) and (f).

Applicant now moves for summary judgment arguing that Opposers’ claims are

precluded by the judgment in Opposition No. 91203686 (the “Prior Opposition”). In

support of its motion, Applicant submitted the declaration of Kamran Fattahi,

Applicant’s attorney of record, with attached exhibits comprising salient documents

from the Prior Opposition.

5 14 TTABVUE 3, 7, ¶¶ 2, 6.

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Opposition No. 91282993

Opposer Hollywood Casinos, LLC (“Hollywood Casinos”)6 was the plaintiff/opposer

in the Prior Opposition, which was filed February 6, 2012 against application Serial

No. 85281324 for the standard character mark HOLLYWOOD HOTEL (“HOTEL”

disclaimed, and which claimed acquired distinctiveness for the mark in whole under

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f)) for “Bar and cocktail lounge

services; Hotel, restaurant and catering services; Providing social meeting, banquet

and social function facilities; Provision of conference, exhibition and meeting

facilities” (“the ’324 Application”).7. The ’324 Application was filed on March 30, 2011,

identifying Chateau Celeste, Inc. (“Chateau Celeste”) as the applicant.8 The originally

pleaded ground for the Prior Opposition was likelihood of confusion based on two of

the pleaded registrations in this case: Registration No. 1851759 for the mark

HOLLYWOOD CASINO for “casino services” (“the ’759 Registration”) and

Registration No. 1903858 for the mark HOLLYWOOD CASINO for “hotel services”

“(the ’858 Registration”).9

In February 2014, Hollywood Casinos moved for leave to add a claim that the

HOLLYWOOD HOTEL mark is primarily geographically descriptive of the identified

6 The Prior Opposition was originally lodged by Hollywood Casinos Corp., predecessor-in-

interest to Opposer Hollywood Casinos, LLC. Due to a corporate merger on October 18, 2013,

Hollywood Casinos Corp. ceased to exist and Hollywood Casinos LLC was substituted as the

opposer on July 16, 2014.

7 The identification of services in the involved application as filed was identical to the

identification in the ’324 Application. The involved application’s identification was amended

by post-publication amendment on September 1, 2022 to add “all of the foregoing excluding

the provision of, and facilities offering, casino services, casino-style games, betting, gambling,

gaming machines, gaming contests, wagering games, slot games, and horse races.”

8 Fattahi Decl., 18 TTABVUE 28.

9 Id.

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Opposition No. 91282993

services. The Board denied Hollywood Casinos’ motion to amend, explaining that,

although Hollywood Casinos had not acted in bad faith and there would be no

prejudice to Applicant Chateau Celeste, Hollywood Casinos had waited too long to

seek leave to amend the notice of opposition. The Board did not consider whether the

amendment was legally sufficient.10

In September 2014, Hollywood Casinos filed a motion for summary judgment in

the Prior Opposition arguing that, based on a discovery deposition of Chateau

Celeste, the ’324 Application was void ab initio because Chateau Celeste was not the

owner of the mark at the time the application was filed. As part of that motion for

summary judgment, Hollywood Casinos sought leave to amend its pleading to assert

a claim of non-ownership.11 On December 14, 2015, the Board denied the motion for

summary judgment on the non-ownership claim, but granted Hollywood Casinos’

motion for leave to amend its pleading to assert the claim.12

The Prior Opposition proceeded to trial based on two grounds: (1) the Section 2(d)

claim for likelihood of confusion; and (2) the claim that the subject application for the

mark HOLLYWOOD HOTEL was void ab initio because Chateau Celeste was not the

owner of the mark at the time the application was filed.

On July 2, 2019 the Board issued a final decision in favor of Hollywood Casinos

on its non-ownership claim, holding that the subject application for the

HOLLYWOOD HOTEL mark was filed by an entity that did not own the mark on the

10 Id. at 37.

11 Id. at 47.

12 Id. at 87.

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Opposition No. 91282993

application filing date, and as such, was void ab initio under Section 1(a) of the

Trademark Act, 15 U.S.C. § 1051(a).13 In reaching this conclusion, the Board also

found that the Applicant in the present action, Zarco Hotels Incorporated (“Zarco

Hotels”), which owned and operated the physical HOLLYWOOD HOTEL property,

had not legally assigned or transferred the mark to Chateau Celeste before the filing

of the ’324 Application, such that Zarco Hotels was always the owner of the

HOLLYWOOD HOTEL mark, including at the time of filing of the ’324 Application

and continuing to the date of the Board’s decision.14 The Board did not reach a

decision on Hollywood Casinos’ likelihood of confusion claim.

On September 3, 2019, Chateau Celeste filed a notice of appeal, appealing the

Board’s final decision to the United States Court of Appeals for the Federal Circuit.

On January 7, 2020, during the pendency of the appeal, Chateau Celeste filed an

assignment of ownership of the ’324 Application to Zarco Hotels, and on January 15,

2020 a motion was filed to substitute Zarco Hotels as the applicant and appellant in

place of Chateau Celeste. The motion was granted by the Federal Circuit’s order of

February 26, 2020, and Zarco Hotels was substituted as the appellant in connection

with the appeal of the Prior Opposition.15 In its order, the Circuit Court stated that

“granting this motion does not reflect any determination on any issues concerning

ownership of the trademark, which are ultimately left to the merits panel assigned

to hear this case.”16 On November 9, 2021, the Federal Circuit affirmed the final

13 Id. at 168.

14 Id. at 197-204.

15 Id. at 228.

16 Id. at 229.

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Opposition No. 91282993

decision of the Board.17 On November 10, 2021, Applicant filed the application

involved in the current proceeding.

III. The Parties’ Arguments

Applicant argues that the doctrine of claim preclusion applies in this case because

the parties to this proceeding were parties (and/or in privity with parties) in the Prior

Opposition involving an application for registration of the same mark for the same

services. Applicant claims that it is in privity with Chateau Celeste because (1) the

two entities are closely held, family-owned businesses with the same CEO, and share

common interests;18 and (2) the “corporate entities were aligned and shared the same

common interests in the subject matter of both proceedings.”19 Applicant also asserts

that Chateau Celeste assigned the HOLLYWOOD HOTEL mark, its associated

goodwill, and the ’324 Application to Applicant during the Federal Circuit appeal of

the Prior Opposition.20 Applicant further claims that there was a final judgment on

the merits in the prior opposition21 and the instant opposition is based on and/or

arises from the same transactional facts.22 Applicant argues that, as a result,

Opposers are precluded from bringing the following claims: (1) the HOLLYWOOD

HOTEL mark is geographically descriptive and has not acquired distinctiveness; and

(2) likelihood of confusion under Section 2(d), to the extent that it is based on or relies

17 Id. at 232-33.

18 Id. at 15.

19 Id. at 16.

20 Id.

21 Id. at 14.

22 Id. at 17-20.

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Opposition No. 91282993

upon any of Opposers’ common law or registered marks that allegedly existed during

the pendency of the Prior Opposition but were not pleaded in the Prior Opposition.

Opposers counter that claim preclusion does not apply in the present case because

there was in the Prior Opposition no final judgment on the merits of the claims

asserted in this proceeding: namely, likelihood of confusion and geographic

descriptiveness.23 Opposers further argue that Applicant and Chateau Celeste are

not in privity, as the two entities are not related companies, and Applicant only had

a right to defend the Prior Opposition but never owned proprietary rights in the

subject mark.24 Finally, Opposers contend that the instant proceeding is not based

upon the same set of transactional facts as the Prior Opposition.25

IV. Analysis

A. Legal Standard

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); NPG Records, LLC, 2022 USPQ2d 770, at *1-2.

Evidence on summary judgment must be viewed in a light favorable to the non-

23 21 TTABVUE 12.

24 Id. at 16-17.

25 Id. at 18-23.

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Opposition No. 91282993

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.

B. Claim Preclusion

Under the doctrine of claim preclusion (res judicata), the entry of a final judgment

“on the merits” of a claim (i.e., cause of action) in a proceeding serves to preclude the

relitigation of the same claim in a subsequent proceeding between the parties or their

privies, even in those cases where the prior judgment was the result of a default or

consent. Daimler Chrysler Corp. v. Maydak, 86 USPQ2d 1945, 1948 (TTAB 2008)

(citing Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 326 (1955); Chromalloy Am.

Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187, 189 (Fed. Cir. 1984));

Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987).

Claim preclusion bars a plaintiff 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. Gen. Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989)

(citations omitted). That is, “[c]laim preclusion refers to the effect of a judgment in

foreclosing litigation of a matter that never has been litigated, because of a

determination that it should have been advanced in an earlier suit.” Sharp K.K. v.

ThinkSharp, Inc., 448 F.3d 1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006) (quoting

13

Opposition No. 91282993

Migra v. Warren City Sch. Dist. Bd. of Educ., 465 U.S. 75, 77 n. 1 (1984)). Generally,

this principle rests on the assumption that the parties could have requested all forms

of relief in the first action. Young Eng’rs Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d

1305, 219 USPQ 1142, 1151 (Fed. Cir. 1983); see also Brown v. Felsen, 442 U.S. 127,

131 (1979) (res judicata “prevents litigation of all grounds for, or defenses to, recovery

that were previously available to the parties, regardless of whether they were

asserted or determined in the prior proceeding”).

The Federal Circuit has cautioned that “res judicata is not readily extended to

claims that were not before the court” in the first action, and “precedent weighs

heavily against denying litigants a day in court unless there is a clear and persuasive

basis for that denial.” Sharp K. K., 79 USPQ2d at 1379 (quoting Kearns v. Gen. Motors

Corp., 94 F.3d 1553, 39 USPQ2d 1949, 1952 (Fed. Cir. 1996)). “The public policy

underlying the principles of preclusion, whereby potentially meritorious claims may

be barred from judicial scrutiny, has led courts to hold that the circumstances for

preclusion ‘must be certain to every intent.’” Mayer/Berkshire Corp. v. Berkshire

Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005) (citing Russell

v. Place, 94 U.S. 606, 610 (1878)). The Board acts with cautious restraint when

applying this equitable doctrine, in the interests of justice for the litigants and

protection of the public from confusion. Id.; see also Sharp K. K., 79 USPQ2d at 1379.

A second suit is barred by claim preclusion if (1) the parties (or their privies) are

identical; (2) there has been an earlier final judgment on the merits of a claim; and

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Opposition No. 91282993

(3) the second claim is based on the same set of transactional facts as the first. Jet,

Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).

If a party cannot appeal the outcome of an earlier proceeding, then the second

action is not barred under claim preclusion. See 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”) (citations

omitted); Penda Corp. v. United States, 44 F.3d 967, 33 USPQ2d 1200, 1204 (Fed. Cir.

1994) (“It is axiomatic that a judgment is without preclusive effect against a party

which lacks a right to appeal that judgment.”); Valvoline Licensing & Intell. Prop.

LLC v. Sunpoint Int’l Grp. USA Corp., 2021 USPQ2d 785, at *4 (TTAB 2021) (“where

a party cannot appeal the outcome of an earlier proceeding (or cannot cross-appeal

where the other party appealed), then the second action is not barred under [claim or

issue] preclusion.”); see also Aviation Enters., Inc. v. Orr, 716 F.2d 1403, 1407 (D.C.

Cir. 1983) (appellate court lacked authority to consider appeal taken solely to secure

review of findings that might have res judicata effect).

As a general rule, a prevailing party may not appeal from a favorable judgment

simply to obtain review of findings it deems erroneous. Mathias v. Worldcom Tech.,

Inc., 535 U.S. 682, 684 (2002) (per curiam) (citing N.Y. Tel. Co. v. Maltbie, 291 U.S.

645 (1934) (per curiam)); Valvoline Licensing, 2021 USPQ2d 785, at *3. This general

rule is applicable to trademark inter partes proceedings. See Trademark Act Section

21(a)(1), 15 U.S.C. § 1071(a)(1) (right to appeal granted only to parties “dissatisfied

15

Opposition No. 91282993

with the decision” of the Board); Valvoline Licensing, 2021 USPQ2d 785, at *3. “In

other words, if a plaintiff has obtained all of its requested relief, then it normally

lacks standing to appeal.” Valvoline Licensing, 2021 USPQ2d 785, at *3 (citing

Deposit Guar. Nat’l Bank v. Roper, 445 U.S. 326, 333 (1980)); see also Intell. Prop.

Dev., Inc. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 58 USPQ2d 1681, 1684 (Fed.

Cir. 2001); 15A C. Wright, A. Miller & M. Kane, FED. PRAC. & PROC. CIV. § 3902 (3d

ed. Apr. 2023).

As discussed below, claim preclusion does not apply to the facts, for which there

is no genuine dispute, present in this case. Even assuming that the parties meet the

first element of the claim preclusion defense requiring privity, the evidence of record

demonstrates that Opposer Hollywood Casinos was successful in asserting its non-

ownership claim and obtained the relief requested in the Prior Opposition (i.e.,

abandonment of the ’324 Application after a successful opposition thereto which was

affirmed on appeal). Also, because the Board did not reach the likelihood of confusion

claim, Opposer Hollywood Casinos could not cross-appeal when Applicant appealed

the Board’s decision on the non-ownership claim. Opposer Hollywood Casinos also

was unable to appeal the Board’s denial of its motion to add a claim of geographic

descriptiveness. As a result, Opposer Hollywood Casinos lacked statutory entitlement

to appeal the prior decision of the Board.

Applicant concedes that Opposers’ likelihood of confusion claim in the current

proceeding is not barred in its entirety, but argues that such claim should be limited

to the same grounds for likelihood of confusion set forth in the Prior Opposition, i.e.,

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Opposition No. 91282993

the ’759 and ’858 Registrations for HOLLYWOOD CASINO. Applicant argues that a

“likelihood of confusion claim that is based on newly asserted common law and

registered marks is a [sic] considered partially as a new claim that is brought for the

first time in the instant proceeding and should be barred in the instant opposition

under claim preclusion.”26 Similarly, Applicant argues that Opposers should be

barred from asserting their geographic descriptiveness claim because such claim did

not constitute a basis of relief sought in the Prior Opposition and, as such, “cannot be

viewed as an unresolved claim that was actually a part of the prior opposition.”27

Applicant’s assertions are unavailing. Applicant’s argument implicates the

doctrine of “merger and bar,” 28 wherein the Board must analyze whether a plaintiff

can bring a subsequent claim against a defendant. See Jet, Inc., 55 USPQ2d at 1856.

The concept of a “claim” is described in the Restatement (Second) of judgments as

follows:

(1) When a valid and final judgment rendered in an action extinguishes the

plaintiff's claim pursuant to the rules of merger or bar (see §§ 18, 19), 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.

26 22 TTABVUE 8.

27 Id. at 10.

28 Restatement (Second) of Judgments defines the general rule of merger as follows:

When a valid and final personal judgment is rendered in favor of the plaintiff:

(1) The plaintiff cannot thereafter maintain an action on the original claim or any part

thereof, although he may be able to maintain an action upon the judgment; and

(2) In an action upon the judgment, the defendant cannot avail himself of defenses he

might have interposed, or did interpose, in the first action.

Restatement (Second) of Judgments § 18 (1982). The general rule of bar provides that “[a]

valid and final personal judgment rendered in favor of the defendant bars another action by

the plaintiff on the same claim. Id. at § 19.

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(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.

Restatement (Second) of Judgments § 24 (1982). Here, the Board has already

determined (and Applicant concedes) that Opposers are not precluded from

reasserting the Prior Opposition’s claim of likelihood of confusion. Because Opposers’

original likelihood of confusion claim is not extinguished, Opposers’ amended

likelihood of confusion claim based upon their additional registrations and common

law rights that could have been raised in the Prior Opposition also is not

extinguished. There is no reason why claim preclusion would apply to only the latter

claim and not the former. Cf. Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp.,

Inc., 140 S. Ct. 1589, 2020 USPQ2d 10519, at *5 (2020) (citing Brown, 442 U.S. at

131 (claim preclusion “prevents litigation of all grounds for, or defenses to, recovery

that were previously available to the parties, regardless of whether they were

asserted or determined in the prior proceeding”) (emphasis added)).

Indeed, in Valvoline Licensing, after determining that the opposer was not barred

by claim preclusion from bringing the second action, the Board addressed the

opposer’s motion seeking leave to amend its notice of opposition to assert an

additional registration that was not asserted in the previous action as an additional

basis for its Section 2(d) claim. The Board granted the motion over the applicant’s

objections, stating that “in view of our determination above that res judicata and

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collateral estoppel[29] cannot apply, Applicant’s arguments related to Opposer’s

failure to assert Registration No. 4800587 in [the prior proceeding] are unavailing.”

Valvoline Licensing, 2021 USPQ2d 785, at *5. Because claim preclusion does not

apply in this case, Opposers are not barred from asserting in their likelihood of

confusion claim the additional registrations and common law rights.

With regard to Opposers’ geographic descriptiveness claim, Hollywood Casinos

unsuccessfully attempted to assert this claim in the Prior Opposition, but there was

no final decision on the merits of this claim. Rather, the Board issued a non-final

ruling denying as untimely Opposer’s motion to amend the opposition to add this

claim. That decision on the motion to amend was not appealable after the Board’s

final decision on the merits denying registration of the HOLLYWOOD HOTEL mark

because Opposer Hollywood Casinos obtained all the relief it sought (i.e.,

abandonment of the ’324 Application) through the decision on the merits of the

ground of non-ownership.

In light of the foregoing, we hold, as a matter of law, claim preclusion does not

apply, and Applicant’s motion for summary judgment based upon claim preclusion is

denied.

29 Collateral estoppel, or issue preclusion, is defined as “[w]hen an issue of fact or law is

actually litigated and determined by a valid and final judgment, and the determination is

essential to the judgment, the determination is conclusive in a subsequent action between

the parties, whether on the same or a different claim.” Texas Instruments Inc. v. Cypress

Semiconductor Corp., 90 F.3d 1558, 39 USPQ2d 1492, 1500-01 (Fed. Cir. 1996) (quoting

Restatement (Second) of Judgments § 27 (1982)). “A critical difference between these concepts

[of claim preclusion and issue preclusion] is that issue preclusion operates only as to issues

actually litigated, whereas claim preclusion may operate between the parties simply by virtue

of the final judgment.” Young Eng’rs, Inc., 219 USPQ at 1150-51. Applicant has not argued

issue preclusion in this case.

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V. Proceedings Resumed

Proceedings are resumed. Applicant’s answer to Opposers’ amended notice of

opposition is due twenty (20) days from the date of this order. Remaining proceeding

dates are reset as follows:

Deadline for Discovery Conference 7/20/2024

Discovery Opens 7/20/2024

Initial Disclosures Due 8/19/2024

Expert Disclosures Due 12/17/2024

Discovery Closes 1/16/2025

Plaintiff’s Pretrial Disclosures Due 3/2/2025

Plaintiff’s 30-day Trial Period Ends 4/16/2025

Defendant’s Pretrial Disclosures Due 5/1/2025

Defendant’s 30-day Trial Period Ends 6/15/2025

Plaintiff’s Rebuttal Disclosures Due 6/30/2025

Plaintiff’s 15-day Rebuttal Period Ends 7/30/2025

Plaintiff’s Opening Brief Due 9/28/2025

Defendant’s Brief Due 10/28/2025

Plaintiff’s Reply Brief Due 11/12/2025

Request for Oral Hearing (optional) Due 11/22/2025

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. These include pretrial disclosures, matters in

evidence, the manner and timing of taking testimony, 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). Oral argument at

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final hearing will be scheduled only upon the timely submission of a separate notice

as allowed by Trademark Rule 2.129(a).

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