Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile

In yet another claim preclusion decision, the TTAB denied Applicant Al-Jazeera's motion to amend its answer to add an affirmative defense of claim preclusion, ruling that the amendment would be futile because claim preclusion did not apply. The Board found that the mark that was challenged in the other proceeding (BEIN) did not create the same commercial impression as the mark involved in this proceeding (BEIN SPORT). Be Sport, Inc. v. Al-Jazeera Satellite Channel, 115 USPQ2d 1765 (TTAB 2015) [precedential].

The first opposition, involving applicant Al-Jazeera's mark BEIN, was dismissed with prejudice under Rule 2.132(a) when Opposer Be Sport failed to prosecute. In this proceeding, which was co-pending with the other, Al-Jazeera filed a motion to amend its answer to add the affirmative defense of claim preclusion, along with a motion for summary judgment on that ground.

The Board noted that, although leave to amend an answer is to be "freely given when justice so requires," leave may be denied when the claim or defense would be "legally futile." The Board therefore turned to an analysis of the claim preclusion issue.

The doctrine of claim preclusion holds that a judgment on the merits in a prior proceeding bars a second proceeding involving the same parties or their privies, based on the same cause of action (based on the same set of transactional facts). Here the first two elements were not in dispute. The question, then, was whether opposer's Section 2(d) claim in the first proceeding was based on the same set of transactional facts as the second opposition. In making that determination, the Board considers (1) whether the mark involved in the first proceeding is the same mark, in terms of commercial impression, as the mark in the second, and (2) whether the evidence regarding likelihood of confusion would be identical in each case. Claim preclusion should be invoked with caution lest a litigant be denied its day in court. 

Here, BEIN, the mark in the Prior Opposition, creates a different commercial impression than does BEIN SPORT, the mark involved in this proceeding. While SPORT may be descriptive and both parties disclaimed SPORT in the involved and pleaded applications, "a disclaimer with the Patent and Trademark Office does not remove the disclaimed matter from the purview of determination of likelihood of confusion."

Furthermore, the evidence would not necessarily be the same in each case. "BEIN alone is a different mark than BEIN SPORT, and each case would require assessment of likelihood of confusion based on the involved marks in their entireties." The more similar the marks at issue, the less similar the goods or services must be to support a finding of likely confusion. Accordingly, the evidence and analysis may be different in the two cases.

The Board therefore found that Al-Jazeera's proposed defense of claim preclusion was futile, and it denied the motion for leave to amend the answer. The motion for summary judgment was denied as moot.

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Text Copyright John L. Welch 2015.