Wednesday, July 28, 2010

Finding No Claim or Issue Preclusion, TTAB Denies "MAJOR TAYLOR" Summary Judgment Motion

In a sweeping decision, the Board denied Respondent's motion for summary judgment based on the claim that claim preclusion (res judicata) or issue preclusion (collateral estoppel) required dismissal of the petition for cancellation. The Board then proceeded to point out the deficiencies in the petition, and dismissed one count predicated on Indiana state law. Dallas C. Brown Jr. v. Courtney L. Bishop, Cancellation No. 92050965 (July 12, 2010) [not precedential].

In this battle over rights to the mark MAJOR TAYLOR (once a world champion cyclist), Respondent argued that the petition for cancellation was barred by res judicata in light of a previous Board decision (Karen B. Donovan. v. Courtney L. Bishop, Cancellation No. 92047757 (January 6, 2009) [not precedential]) dismissing that proceeding with prejudice on the ground of lack of standing. Respondent contended that the petitioner in the prior proceeding was in privity with the current petitioner.

Claim Preclusion: The Board found no claim preclusion because its prior decision was on appeal (by way of civil action in the U.S. District Court for the Southern District of Indiana), and thus was not final. Even if that decision were final, the Board would have denied summary judgment here due to a genuine issue of material fact concerning the priority issue.

Issue Preclusion: There was no collateral estoppel because the underlying claims were never litigated or adjudicated. The only issue resolved was the standing of Karen B. Donovan, and that is a different issue from the standing of the current petitioner.

Suspension:The Board then suspended this proceeding pending the outcome of the federal court action, which action could be dispositive of, or have a bearing on, the issues in this proceeding.

Deficient Fraud Claim: The Board then took the opportunity to review several of petitioner's claims. It found plaintiff's pre-Bose fraud allegations to be legally deficient:

At a minimum, petitioner has failed to allege (1) respondent’s intent to deceive or scienter with any particularity, (2) whether such intent to deceive was made knowingly for purposes of deceiving the USPTO, (3) whether respondent’s Declaration was a false and material misrepresentation and (4) specific facts upon which petitioner’s allegation of “upon information and belief” is reasonably based.

Section 2(a) False Association: Petitioner's Section 2(a) claim was also faulty. A plaintiff must allege facts from which the Board may infer that the defendant's mark points uniquely to plaintiff and that consumers would make the assumption that defendant's goods are connected with plaintiff. Here, Petitioner alleged merely that Respondent's use of its mark "falsely suggests a connection with petitioner."

State Law Claim: Finally, the Board struck Petitioner's claim that Respondent's use of the MAJOR TAYLOR mark violated Indiana state law (which requires written consent from Major Taylor's estate in order to use the name). The Board has no authority to determine the right to use under state law.

If the proceeding is resumed, Petitioner must plead proper fraud or Section 2(a) claims, or the petition will be dismissed.

Major Taylor - Paris, 1908

Text Copyright John L. Welch 2010.


Post a Comment

<< Home