Friday, April 08, 2005

Another CAFC Defeat For Frequent TTAB Litigant Leo Stoller

Leo Stoller fans will note today's non-precedential CAFC decision in Stoller v. Hyperstealth Biotechnology Corp., Appeal No. 05-1040 (April 8, 2005).


Hyperstealth filed an application to register the mark HYPERSTEALTH for a "therapeutic compound which is taken orally in either liquid or solid form and releases oxygen after consumption" (class 5) and for "passive negative ion generators and hyperbaric oxygen chambers for therapeutic medical use" (class 10). Leo Stoller opposed only as to the compound in class 5, claiming rights in the mark STEALTH for various medical devices. When Applicant filed an abandonment of its application as to the class 5 goods, the Board sustained the opposition as to those goods but indicated that the application would be forwarded to the ITU branch for issuance of a Notice of Allowance as to the remaining goods.

Stoller then sought re-consideration, strangely contending that the application should be returned to the Examining Attorney as to the Class 10 goods. The Board denied the request, pointing out that there is "no provision" for such an action, and that a multiple class application is in effect "a series of applications to register the mark in each international class."

On appeal, Stoller switched to a bizarre res judicata and collateral estoppel argument, contending that his success in opposing the class 5 goods applies to the class 10 goods as well. The court disagreed, pointing out that, "[s]ince the question of the likelihood of confusion as to the Class 10 goods presents a different question of fact from the likelihood of confusion as to the Class 5 goods," the causes of action are different and res judicata does not apply. As to collateral estoppel, no particular issues were fully litigated, and therefore that doctrine is likewise inapplicable.

The Board pointed out that Stoller's remedy is to seek cancellation of any registration that issues as to the class 10 goods. The odds seem pretty good that Mr. Stoller will do just that.

Text ©John L. Welch 2005. All Rights Reserved.


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