TTAB Applies Res Judicata, Sustains Opposition to Re-filed "CALVO" Application

Applicant Calvo was thwarted in its second attempt to register its CALVO & Design mark (shown immediately below), this time for fish. Its first application (for the mark shown further below) for various food items was opposed by Calavo Growers of California and ended in a default judgment when Calvo failed to answer the notice of opposition. Despite a change in the mark and a severe narrowing of the goods in Calvo's second application, the Board granted summary judgment on the ground of res judicata. Calavo Growers, Inc. v. Luis Calvo Sanz, S.A., Opposition No. 91170990 (April 11, 2007) [not precedential].


Calvo's first application identified the goods as "meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk; edible oils; canned preserved meat and fish." The drawing of its mark (below) was lined for the color blue.


Calvo's second application identified the goods as "fish and canned fish." Thus the mark was slightly different in the second application and the range of goods was greatly reduced.

Under the doctrine of res judicata, or claim preclusion, a final judgment on the merits of a claim precludes relitigation of that same claim between the parties or their privies -- even in a case of default. The three requirements for application of claim preclusion are:

(1) the parties (or their privies) must be identical;
(2) a final judgment on the merits must have been rendered; and
(3) the second claim must be based on the same facts as the first.

Opposer Calavo Growers, Inc. is the successor-in-interest of Calavo Growers of California, the opposer in the first case. Thus the first requirement was met.

The default judgment in the prior proceeding operates as a final judgment on the merits, satisfying the second requirement.

As to the third requirement, there was no dispute that the claims asserted by the opposer in both proceedings (likelihood of confusion, dilution, and surnameness) are identical. Furthermore, the literal elements of the opposed marks are identical; the slight modification in the design "cannot serve to avoid res judicata."

The goods of the second application "are merely a narrowed version" of the goods of the first. "Applicant cannot avoid the estoppel effect of a prior decision by filing a second application that contains a narrower definition of the goods that were 'fully encompassed' in the present application."

The three requirements having been satisfied, the Board granted summary judgment to Opposer.


The Board noted, however, that Calvo could pursue its pleaded counterclaims for genericness and fraud directed at the five registrations pleaded by Opposer.

Text Copyright John L. Welch 2007.