Friday, February 09, 2018

Applying Claim Preclusion, TTAB Summarily Dismisses Petition for Cancellation of "THE EBONYS" Registration Despite Added Claim

The Board granted respondent's motion for summary judgment, dismissing this petition for cancellation of a registration for the mark THE EBONYS for entertainment services by a musical group. The Board ruled that claim preclusion barred petitioner's fraud and likelihood-of-confusion claims in light of a prior Board decision (here) dismissing petitioner's closely similar fraud claim. David S. Beasley v. William H. Howard DBA The Ebonys, Cancellation No. 92066369 (January 19, 2018) [not precedential].


In the prior cancellation proceeding, Petitioner Beasley alleged that Respondent Howard knowingly made false statement regarding his (Howard's) use of the mark THE EBONYS. Beasley, however, failed to submit evidence to support the fraud claim, and so the Board dismissed the proceeding.

In this, the second proceeding, Beasley provided more detailed allegations regarding the alleged fraud, but the Board found that "the core transactional facts in each proceeding are the same." Therefore it concluded that Beasley's renewed fraud claim is barred under the doctrine of claim preclusion.

As to Petitioner Beasley's likelihood-of-confusion claim, the Board observed that claim preclusion bars "a subsequent assertion of the same transactional facts in the form of a different cause of action or theory of relief." A party cannot avoid claim preclusion merely by bringing additional claims in a second proceeding based on the same transactional facts as the first proceeding.

We find that there is no genuine dispute that Petitioner’s likelihood of confusion claim in this proceeding is based on the same transactional facts as, and should have been litigated in, the Prior Action. Specifically, Petitioner has alleged in both proceedings prior use and ownership of THE EBONYS mark for a vocal music group. In addition, with respect to the involved registration in each proceeding, Respondent had alleged use of THE EBONYS mark for the same or similar services to those offered by Petitioner. In view thereof, Petitioner could (and should) have asserted his likelihood of confusion claim in the earlier case.

And so the Board granted respondent's motion for summary judgment and dismissed the proceeding.


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TTABlog comment: I never heard of THE EBONYS.

Text Copyright John L. Welch 2018.

2 Comments:

At 10:18 AM, Anonymous Anonymous said...

First sentence reads, "The Board granted respondent's motion for summary judgment, granting this petition for cancellation of a registration for the mark THE EBONYS for entertainment services by a musical group."

Shouldn't that be "dismissing this petition for cancellation . . ."?

 
At 10:58 AM, Blogger John L. Welch said...

Thanks! I had it right the first time, but I went back and changed it for some reason. Too much coffee this morning. Or maybe not enough.

 

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