Precedential No. 48: Rejecting Asserted "Newly Discovered Evidence," TTAB Refuses to Set Aside Judgment

Respondent Michel Farah lost a cancellation proceeding before the TTAB in January 2008 [decision here], and then lost his appeal to the CAFC in November 2008 [here]. Farah then returned to the Board and, on December 12, 2008, filed a motion under FRCP 60(b)(2) for relief from final judgment based upon what he claimed to be newly discovered evidence: namely, the issuance of a registration for the mark OMIC for goods related to the cancelled OMIC PLUS registration. The Board denied the motion. Pramil S.R.L. v. Michel Farah, 93 USPQ2d 1093 (TTAB 2009) [precedential].


Farah argued that the new registration “is prima facie evidence that [registrant], and not [petitioner], is the owner of the mark OMIC and has the exclusive right to use the mark OMIC in commerce." Since the cancellation proceeding had been based on Pramil's ownership of the mark OMIC, Farah contended, "[t]his prima facie evidence of [registrant]’s exclusive rights effectively destroys the very basis of [petitioner]’s claim for cancellation.”

Farah asserted that the new registration did not exist until after the Board’s decision, and it therefore constitutes new evidence that could not have been discovered prior to the Board’s decision.

However, the Board ruled that, for purposes of FRCP 60(b)(2), the new evidence "must be of facts in existence at the time of trial, but only discovered later." Here, the new registration was not in existence at the time of trial (it issued on June 3, 2008, well after the Board's original decision of January 29, 2008). Therefore it is not "newly discovered evidence."

Moreover, even if the registration were newly discovered evidence, Farah's motion does not meet the requirement of FRCP 60(c)(2) that the motion be filed "within a reasonable time." According to the Board, upon issuance of the registration respondent should have filed the motion.

If the Board was inclined to grant the motion, the Board would have issued an order indicating its intention to grant the order upon proper remand, and respondent could have filed a motion with the Federal Circuit to remand the appeal to the Board to grant the Rule 60(b) motion.

This is the procedure followed in virtually all of the circuit courts. It conserves the resources of the courts because the appellate court may not need to decide the appeal if the motion is granted. If the motion is denied, then an appeal from that denial may be included in the renewed appeal.

By waiting to see whether the Federal Circuit would grant his appeal before filing his motion for relief from judgment, respondent unnecessarily maximized the resources that the Board and the Federal Circuit expended on this case.

Finally, the Board pointed out that, in any case, such a motion may be denied "if the evidence is merely cumulative or not of a type that would change the result." Here, the issuance of the registration for OMIC "does not change the trial record in any significant way."

[T]he registration is neither unrebuttable nor prima facie evidence of respondent’s priority of use of that mark, and the evidence at trial established petitioner’s priority of use. The subsequent issuance by the Office of an arguably conflicting registration does not alter the record created at trial or dictate that the decision should be set aside.

And so the Board denied the motion.

TTABlog comment: Why wouldn't Pramil petition for cancellation of the new registration on the same grounds as previously, viz., priority and likelihood of confusion? In fact, wouldn't res judicata (issue preclusion) apply to many of the issues?

Note that in an earlier federal court action with Farah, Pramil was permanently enjoined from using the OMIC PLUS mark. So the upshot of this affair seems to be that Farah may use OMIC PLUS but can't register it.

Text Copyright John L. Welch 2009.