Applying Collateral Estoppel, TTAB Rules "SMART-POWER" Generic

The Board granted a petition for cancellation of a registration for the mark SMART-POWER for "electrical power circuits in combination with electrical logic circuits and parts thereof," on the ground of genericness, applying collateral based upon a court ruling in a trademark infringement litigation between the parties. STMicroelectronics, Inc. v. Nartron Corp., Cancellation No. 92042527 (May 17, 2005) [not citable].


In the prior civil action, accused infringer STMicroelectronics raised the affirmative defense of genericness. The court held that Nartron's “mark was generic.” The district court's decision was upheld on appeal to the Sixth Circuit. Nartron filed for bankruptcy, but STMicroelectronics received relief from the automatic stay provisions of the U.S. Bankruptcy Code for the purpose of filing this petition for cancellation.

Both parties moved for summary judgment, STMicroelectronics arguing collateral estoppel (issue preclusion) based upon the district court ruling, and Nartron asserting that claim preclusion applies because STMicroelectronics "had the opportunity to request cancellation of the involved registration at the time it filed its summary judgment motion in the civil action under Section 17 of the Trademark Act," and thus is now precluded from seeking that relief here.

Newly-appointed Administrative Trademark Judge Karen Kuhlke wrote the opinion. The Board ruled that claim preclusion does not apply because litigation and the cancellation proceeding do not involve the same set of "transactional facts."

"The affirmative defense of genericness in the civil action did not address the registrability of respondent's mark. Moreover, while Section 37 of the Trademark Act empowers courts to provide litigants with the remedy of canceling a registered mark, the Board has concurrent jurisdiction under Sections 14 and 18. Petitioner was not obliged to seek the remedy of cancellation under Section 37 during its defense."

The Board noted that to rule otherwise would lead to "the absurd result that a term deemed to be generic by a Federal court would remain on the Principal Register until such time that another plaintiff asserted issue preclusion against respondent, thus defeating one of the main purposes underlying the res judicata doctrines, to promote judicial economy by preventing needless litigation."

As to issue preclusion, however, the Board found summary judgment appropriate. In the civil action, STMicroelectronics specifically argued that SMART POWER is the "generic term for an integrated circuit that combines power and logic on a chip." The issue of genericness "was actually raised, litigated and adjudged" and "was necessary and essential to the litigation." And Nartron was fully represented in the prior action. Thus the requirements for application of issue preclusion were met.

Finally, the Board noted that in the litigation, the mark was spelled without the hyphen, but that is "an insignificant difference which does not avoid the preclusive effect of the prior decision."

Text copyright John L. Welch 2005. All rights reserved.