Applying Claim Preclusion, TTAB Affirms 2(e)(1) Refusal of Re-filed RESTORE LIFT Application

In July 2013, the Board affirmed (here) a Section 2(e)(1) refusal to register the mark RESTORE LIFT, finding the mark merely descriptive of "cosmetic and plastic surgery, namely, a minimally invasive face/neck lift done under local anesthesia." In February 2014, the same applicant (through the same attorney) filed a new application to register the same mark for the same services. When that application was refused under Section 2(e)(1) and on the ground of claim preclusion, Applicant Southeastern Dermatology, S.A. appealed. In re Southeastern Dermatology, PA, Serial No. 86187997 (July 15, 2015) [not precedential].

The Board found this appeal to be barred by claim preclusion, sometimes referred to by people of a certain age as res judicata. Under that doctrine, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action."

The Board noted that claim preclusion must be applied with caution. However, prior Board decisions have applyed the doctrine when an applicant "had already been refused registration for the same mark and goods in a prior ex parte proceeding and the applicant did not demonstrate a change of circumstances so as to justify not applying preclusion based on the prior judgment."

Here Applicant made no contention that circumstances had changed. In fact, applicant submitted the identical arguments and evidence as in its prior failed application. Its appeal briefs in the two cases were substantially identical.

The Board concluded that the requirements for claim preclusion were met and it affirmed the refusal on that ground.

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Text Copyright John L. Welch 2015.