Thursday, April 14, 2005

CAFC Affirms TTAB's "BIKESOURCE" Res Judicata Decision

The CAFC has affirmed the TTAB's decision in Sports Machine, Inc. v. Midwest Merchandising, Inc., Opposition No. 91122948 (November 20, 2003) [not citable]. The appellate court issued its per curiam decision under Rule 36 (without opinion) on April 11, 2005 in Appeal No. 04-15 25.

Midwest Merchandising sought to register the mark BIKESOURCE in typed form for retail bicycle store services. Sports Machine opposed on the ground of Section 2(e)(1) mere descriptiveness. In a related cancellation proceeding between the same two parties, the Board had found here that the mark BIKESOURCE in the stylized form shown below was suggestive, not merely descriptive, of the same services.

Midwest Merchandising therefore moved for judgment in the opposition on the ground of res judicata. Sports Machine desperately contended that, just because the mark BIKESOURCE in stylized form was found to be suggestive, that does not necessarily mean that BIKESOURCE in block letter form is not merely descriptive.

The Board rode with Midwest. It ruled that the block letter version of BIKESOURCE and the "minimally stylized block capital letters" version of the registration "are considered to have the same commercial impression." Furthermore, the opposed application and the challenged registration contain identical recitations of services. Thus, the Board observed, the evidence of descriptiveness would be identical. It concluded that the claim Sports Machine asserted in the opposition "is identical to the one that it asserted unsuccessfully in the cancellation proceeding and that opposer is not entitled to relitigate that claim."

Sports Machine was undeterred by these two defeats. It requested reconsideration, and after that failed, it appealed. When the dust settled, Sports Machine was left with four flat tires and nowhere to go.

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


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