"DAYTONA" Trademark Licensee Denied Second Bite at TTAB Apple

HBP, Inc. made a return trip to the Board in order to challenge registration of the mark DAYTONA THUNDERWEAR for women's clothing, but it ran into a TTABrick wall. The Board granted Respondent's motion for judgment on the ground of res judicata, ruling that HBP's claim was barred because of its earlier failed opposition to the same mark. HBP, Inc. v. Becker Designs, Inc., Cancellation No. 92046543 (July 17, 2008) [not precedential].


On December 16, 2005, in HBP, Inc. v. Becker Designs, Inc., Opposition No. 91154068 (TTABlogged here), the Board dismissed HBP's opposition because of failure to prove standing and priority of use.

"Opposer has not introduced any evidence or testimony to establish any relationship to the record owner of the registrations or its right to rely on such registrations. We, therefore, conclude that opposer has not established its standing herein and, thus, cannot prevail on its claim of priority and likelihood of confusion."

The Board further observed that, even if HBP had established its standing (by proving its exclusive license), it provided no evidence of its own use of the registered marks. Since HBP is not the owner of the pleaded registrations, it could not rely merely on the registrations, but was required to prove prior use.


In this cancellation proceeding, HBP attempted to correct those errors. But Respondent Becker asserted that the requisite elements of claim preclusion had been satisfied: the parties are the same; the claims in both proceedings are the same (i.e., 2(d) likelihood of confusion between the same marks for the same goods), and the Board's 2005 decision constitutes a judgment on the merits.

HBP contended that the opposition was dismissed on procedural grounds and not on the merits, and it argued that it "should not be penalized ... for its failure to properly make the pleaded registrations of record in the opposition."

The Board concluded that res judicata does apply because the earlier judgment was on the merits: "courts have long held that even default judgments give rise to res judicata." The Board's finding that HBP failed to prove its standing and priority of use "constituted a decision on the merits of the case."

As to the contention that HBP was being penalized for failing to make its registrations properly of record, the Board observed that HBP was represented by counsel, who should have known the consequences of failing to prove standing and priority.

The Board therefore dismissed the petition for cancellation.

TTABlog query: Is it possible for one to prove priority without proving standing?

Text Copyright John L. Welch 2008.