Res Judicata Thwarts Applicant Seeking to End Run Prior Opposition by Limiting Services in Second Applications

Applying the age-old doctrine of res judicata (a/k/a claim preclusion), the Board sustained oppositions to registration of the marks MYSTIC PARKS and MYSTIC CITY for amusement park services, based on a final judgment in a prior proceeding that involved the same parties or their privy, and likelihood of confusion claims based on the same set of transactional facts as the claims in the this consolidated proceeding. Although the opposer did not plead res judicata, the Board decided that the issue had been tried by implied consent. Shakopee Mdewakanton Sioux Community v. Adrenalin Technologies, LLC, Oppositions Nos. 91285546 and 91285548 (January 7, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Applicant Adrenalin Technologies, LLC argued that Adrenalin Attractions, LLC controlled the defense in the prior proceeding, but the Board found that "amounts to a distinction without a difference." Both entities are controlled by the same person, one Mr. D'Avanzo. He was the sole witness in both the earlier proceeding and this one, and he controlled the presentation of the prior litigation and the current one.

We therefore conclude that Adrenalin Attractions, LLC and Adrenalin Technologies, LLC are in privity for purposes of res judicata because they have the same owners and the same CEO: Mr. D’Avanzo, who controls and directs the actions and interests of both entities.

All of the proceedings involved opposer's mark MYSTIC (in slightly stylized form) for casino and entertainment services. The prior proceeding involved concerned the marks MYSTIC PARKS AND RESORTS and MYSTIC CITY, whereas the current proceeding involved MYSTIC PARKS and MYSTIC CITY. The Board agreed with the opposer that the marks MYSTIC PARKS AND RESORTS and MYSTIC PARKS are legally identical [PARKS and PARKS AND RESORTS were disclaimed] because they engender the same commercial impression, mainly because the word MYSTIC is the dominant element in both marks. "The fact that the descriptive/generic terms AND RESORTS do not appear in the subsequent version would not alter that perception or otherwise create a 'new mark' in consumers’ eyes."

And, importantly, allowing a party to avert claim preclusion by simply deleting a non-source-indicating element from a subsequent mark would too easily subvert the doctrine’s dual purposes of avoiding relitigation and promoting judicial economy.

The recited services in the prior proceedings were "“amusement park and theme park services" for the MYTIC PARKS AND RESORTS mark and "amusement park and theme park services; entertainment in the nature of an amusement park ride" for the MYSTIC CITY mark. Here, the MYTIC PARK application covers "Operating of amusement park attractions, namely amusement park rides; entertainment services, namely, ticket agency services for amusement park attractions, namely amusement park rides," while the MYTIC CITY application identified "Providing amusement park facilities including a fictional location featuring an amusement park attraction in the nature of a themed area and amusement park rides."

Applicant Adrenalin argued that the services in the current applications are different from those in the prior application and registration because they are "undoubtedly more focused than the broad description of amusement park and theme park services." The Board was unimpressed. "[T]he Board’s likelihood-of-confusion determination in the prior proceeding was based on a broader identification of services, and the judgment there necessarily extends to any and all identified services under the umbrella of that broader identification."

In other words, Applicant may not avoid the preclusive effect of this prior judgment by merely providing a narrower, or “more focused,” identification of services, if those services remain encompassed by the broader identification of services and are therefore essentially legally identical.

And so, the Board found that the evidence supporting the likelihood-of-confusion claim in this case would be identical to the that supporting the likelihood-of-confusion claim in the prior proceeding.

The Board therefore sustained the oppositions, invoking res judicata.

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TTABlogger comment: I think the evidence could be different in the two situations. When faced with a broad recitation of services, the attacker need show an overlap or relatedness as to only something falling within that broad scope. But that attacking evidence could be narrow as long as it fell within the broad scope. However, once the broad recitation is pared down, the attacker's narrow evidence might not overlap or be related. Am I making sense?

Text Copyright John L. Welch 2025.