Tuesday, February 28, 2012

Precedential No. 8: TTAB Applies Collateral Estoppel in Ex Parte Section 2(d) Context Based on Prior TTAB Proceedings

Kent G. Anderson seeks to register the marks FUTURE and FUTURE MOTORS for hundreds of goods and services falling in classes 3, 12, 35, and 40. The PTO refused registration under Section 2(d) as to various goods in class 12 and certain of the services in view of the registered mark FUTURA for "tires" and "automotive accessories, namely, vehicle wheel caps and hub caps." The Examining Attorney further asserted that collateral estoppel bars registration of the marks for the refused goods and services in view of a prior Board proceeding in which the Board sustained oppositions to several other applications of Mr. Anderson. The Board agreed that collateral estoppel applied to the FUTURE application, but not the FUTURE MOTORS application, and it also affirmed the Section 2(d) refusals of both applications. In re Kent G. Anderson, Serial Nos. 76511652 and 76514799 (February 17, 2012) [precedential].

Collateral Estoppel: In 2008 the Board sustained oppositions brought by the owner of the FUTURA registration to Anderson's attempt to register the FUTURE mark for goods in classes 12, 35, and 40, and the mark FUTURE/TOMORROW & Design for goods in class 12.
[See The Pep Boys Manny, Moe & Jack of California v. Kent G. Anderson, Oppositions Nos. 91157538 et al. (August 6, 2008) [not precedential]].

The Board reviewed various precedents involving collateral estoppel, but the application of collateral estoppel in an ex parte context based upon a prior inter partes judgment appears to be a matter of first impression for the TTAB. The Board observed, however, that "it is firmly within our discretion to apply collateral estoppel where it is warranted."

Turning to the elements of collateral estoppel, and first considering the FUTURE mark, the Board found that the identical Section 2(d) issue was raised in the prior proceeding (same marks and goods/services), the issue was actually litigated, the determination of likely confusion was necessary to the judgment, and Anderson had a full and fair opportunity to litigate the issue. Ergo, collateral estoppel applied.

As to the FUTURE MOTORS mark, however, collateral estoppel did not apply because the prior proceeding did not concern that particular mark, but instead the marks FUTURE and FUTURE/TOMORROW & Design. Neither of those two marks is substantially identical to FUTURE MOTORS.

Section 2(d): The Board then turned to a consideration of the Section 2(d) refusals regarding the two applied-for marks. In a straightforward analysis the Board found confusion likely and it affirmed the refusals.

TTABlog comment: Many of Mr. Anderson's identified goods and services survived in these applications: e.g., ferry boats, lunar rovers, literary agencies, business management services, and wholesale toy stores. Of course, once the notices of allowance issue, Mr. Anderson will have the opportunity to submit proof of use and thereby obtain registrations for his various non-automotive goods and services.

Text Copyright John L. Welch 2012.


At 9:18 AM, Anonymous Chris said...

Hate to pile on the guy but a quick review of the Trademark Office database shows that he owns 57 registrations and 18 pending applications (and 47 dead applications or registrations) that include the word FUTURE. Many, if not all, are suspect and the specimens that supported registration are pretty obviously not legit (FUTURE ISLAND, Registration No. 3159246 for "transportation of passengers"; FUTURE, Registration No. 3974745 for "firearms"; and FUTURE, Registration No. 3171797 for various vehicles).

Looks like the Trademark Office is aware of the situation and has flagged many of the registrations for Office Actions as they come due for maintenance filings. (Have to assume that's the case because it's unusual that the Post Reg folks would be so much more stringent than the Examiner.)

Unfortunate situation where Mr. Anderson has spent many thousands of dollars for nothing but kudos to the Office for potentially starting to clear some obvious deadwood.

At 2:50 PM, Blogger Marta said...

Do we know whether Mr. Anderson has attempted to enforce any of those 57 registrations?

At 3:55 PM, Anonymous Patrick said...

Holy smokes...who is this Kent G. Anderson guy??

I just spent a load of time trying to read through the load of ---- at his website, and I still don't get it.

At 3:06 PM, Anonymous Anonymous said...

Mr. Anderson has been at this a good while and is nothing if not persistent. I think of his registrations everytime the PTO rejects one of my specimens of use.

A tin foil hat to anyone who can calculate how much he has spent in filing fees over the years.


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