TTAB Summarily Sustains BITVISION Opposition Due to Offensive Claim Preclusion

On summary judgment, the Board sustained this opposition to registration of the mark BITVISION, in the form shown first below, for closed circuit TV security systems, concluding that the application must be denied on the ground of claim preclusion. Applicant Creative Security had defaulted in two prior oppositions brought by this same opposer, for identical goods and substantially the same mark. Hangzhou Hikvision Digital Technology Co., Ltd. v. Creative Security Technology, Opposition No. 91277548 (February 16, 2023) [not precedential].

In each of the three oppositions, Opposer Hangzhou Hikvision claimed likelihood of confusion with its registered mark HIKVISION for video surveillance installations. In each of the two prior oppositions, Creative Security failed to serve and file an Answer, and so judgment was entered by default and the opposition was sustained. One opposition concerned the mark BITVISION in standard form, and the other the mark BITVISION in the form shown immediately below.
 

Under the doctrine of claim preclusi on, "a judgment on the merits in a prior suit bars a second suit involving the same parties . . . based on the same cause of action." This case involved the doctrine of "merger," or offensive claim preclusion. The parties involved are the same, and the earlier default judgments constitute final judgments on the merits for purposes of claim preclusion.

The question, then, was whether the likelihood of confusion claim in this case is based on the same set of transactional facts as in the two prior proceedings. 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 involved in the second proceeding; and
2) whether the evidence of likelihood of confusion between the opposer’s mark and the applicant’s first mark would be identical to the evidence of likelihood of confusion between the opposer’s mark and the applicant's second mark.

The test for deciding whether two marks have the same commercial impression is the same as for "tacking:" i.e., whether the marks are "legal equivalents." "The previous mark must be indistinguishable from the mark in question; the consumer should consider both as the same mark; and they must create 'the same, continuing commercial impression.' Hana Fin., Inc. v. Hana Bank, 113 USPQ2d 1365, 1367 (2015)."

The Board found that the variations in applicant's marks "are insignificant and they create substantially the same commercial impression." "All of Applicant’s marks include a single term, BITVISION, and to the extent stylization is incorporated, the stylizations include the color red with no additional significant design elements."

The font of the Current Application is not so stylized as to evoke a different commercial impression from the prior marks. As is evident from review of the marks, any variations in the marks are minor and do not rise to the level of a new mark sufficient, under the circumstances, to allow Applicant to seek registration herein.

The Board noted that it does not want to "encourage losing parties to insignificantly modify their marks after an adverse decision and thereby avoid the preclusive effect of the prior adjudication."

Finding no genuine dispute of material fact regarding the applicability of claim preclusion, the Board sustained the opposition.

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Text Copyright John L. Welch 2023.