Friday, May 22, 2015

Three Summary Judgment Motions: Morehouse Defense, Claim Preclusion, and Contract Estoppel

Here are three recent TTAB decisions granting motions for summary judgment (in whole or in part), the first rejecting an applicant's Morehouse defense, the second applying claim preclusion, and the third sustaining a defense of contract estoppel.

In Disney Enterprises, Inc. v. Ronica Holdings Limited, Opposition No. 91218136 (April 29, 2015) [not precedential], the Board granted Disney's motion for partial summary judgment, dismissing applicant's Morehouse defense. That defense is based on the proposition that a plaintiff (opposer) cannot be harmed by a new registration when the defendant (applicant) already owns a registration for substantially the same mark for substantially the same goods or services. [Why need a new registration then? - ed.]. Here the Board concluded that applicant's applied-for mark was not essentially the same as its prior registered mark [see illustration below] and further that the application included goods and services not found in the registration.

In BLVD Supply, LLC v. Juan Chen, Cancellation No. 92059168 (April 28, 2015) [not precedential], the Board entered judgment summarily on Chen's defense of res judicata or claim preclusion. Chen relied on a prior TTAB dismissal of a petition for cancellation filed by a company called BLVD Supply, the dismissal being based on that petitioner's failure to take testimony or introduce evidence (Rule 2.132(a)). The Board found that the earlier judgment was final and on the merits, that the petitioners in the two cases were in privity, and that the new petition for cancellation was based on the same set of transactional facts as the first petition (asserting that Chen had committed fraud or had abandoned her mark (shown below)).

In Who Dat Yat Chat, LLC v. Who Dat?, Inc., Opposition No. 91215018 (April 28, 2015) [not precedential], the Board granted Applicant's motion and denied opposer's cross-motion for partial summary judgment on the issue of contract estoppel. The parties had entered into a settlement agreement in connection with a district court infringement action, which provided that opposer had exclusive right to use the mark WHO DAT YAT CHAT and WHO DAT for goods and services provided in connection with restaurants and coffee houses. When applicant sought to register the mark WHO DAT? for bakery products, coffee, and the like, opposer brought a motion to re-open the district court action in order to seek enforcement of the settlement agreement. The court, however, ruled that applicant had not breached the agreement by filing its application because opposer's contractual right of exclusivity extended only to products sold in connection with its restaurants and coffee houses. The Board chose to defer to the district court's ruling and entered judgment in favor of applicant on the issue of contract estoppel. [The Board also denied applicant's motion based on issue preclusion (or collateral estoppel) because the district court ruling was not a final judgment but rather a post-judgment ruling on a motion to reopen proceedings.]

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TTABlog note: I've yet to see a successful Morehouse defense.

Text Copyright John L. Welch 2015.


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