Tuesday, January 18, 2011

Applying Issue Preclusion, TTAB Grants Summary Judgment In Clash of the Star Registries

The Board granted Applicant ISR's motion for summary judgment on the ground of res judicata, based on a prior Board decision in a consolidated proceeding between the parties. ISR had previously successfully opposed Vaughan's applications to register the mark NAME A STAR for goods and services relating to the naming of (celestial) stars, on the ground of genericness and, alternatively, mere descriptiveness and lack of secondary meaning. Here, Vaughan opposed ISR's application to register the mark shown below for similar goods and services. Tonya S. Vaughan v. International Star Registry of Illinois, Ltd., Opposition No. 91163697 (January 3, 2011) [not precedential].

Vaughan claimed likelihood of confusion based upon her alleged rights in the term NAME A STAR for star-registration goods and services. Applicant ISR moved for summary judgment, contending that "the issue of no assertable trademark rights held by Vaughan has already been resolved" and that Vaughan "is estopped and barred from relitigating its contention that it has protectable trademark rights in 'name a star' as a matter of law, since this factual issue and the legal claims of Vaughan were already litigated and decided against Vaughn [sic]."

Vaughan argued that only her trademarks, and not her trade name NAME A STAR, was involved in the earlier proceeding.

The Board first ruled that claim preclusion does not apply here because the claims are different (genericness and mere descriptiveness in the first proceeding, likelihood of confusion here), and Vaughan's trademark applications are not at issue here.

Issue preclusion (collateral estoppel), however, does apply. "The issues of genericness and secondary meaning in the designation NAME A STAR as it relates to star-registration services and goods relating thereto were actually litigated in the prior consolidated proceeding." Determination of the issues of genericness and secondary meaning was necessary to the summary judgment in the earlier consolidated proceeding. And Vaughan was afforded a full and fair opportunity to litigate those issues in the earlier proceeding.

Here, Vaughan cannot prevail without establishing a proprietary right in NAME A STAR. "In order to do so, Vaughan must establish that NAME A STAR in relation to her star-registration goods and services is neither generic nor merely descriptive without secondary meaning. This is the very issue that was litigated and adjudged in the prior consolidated proceeding."

As to Vaughan's attempt to distinguish between trademarks and trade names, "it is a distinction without a difference."

The Board therefore applied issue preclusion, and ruled that Opposer Vaughan "cannot establish any legal basis for her claim of damage or demonstrate any likelihood of confusion as to source."

TTABlog comment: If Vaughan's mark had been found only merely descriptive but not generic, she might have avoided issue preclusion by arguing that circumstances had changed: i.e., that the mark had acquired distinctiveness subsequent to the earlier Board decision.

Text Copyright John L. Welch 2010.


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