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 (August 6, 2008) [not precedential]].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.