TTAB Enters Summary Judgment on Res Judicata Ground in SKIPPY Cancellation

Things did not go smoothly for Skippy, Inc. in its attempt to take a second bite of the PB&J. Appearing pro se, it sought cancellation of Hormel's registration for the mark SKIPPY for peanut butter, but the Board granted Hormel's motion for summary judgment on the ground of claim preclusion (a/k/a res judicata). Skippy, Inc. v. Hormel Foods, LLC, Cancellation No. 92061574 (February 26, 2015) [not precedential].

In a previous proceeding (1986) involving Hormel's predecessor-in-interest, Petitioner Skippy, Inc. had sought leave to add a counterclaim for cancellation of the same registration, and it filed a separate petition for cancellation, but the motion was denied as untimely and the petition was dismissed, the Board stating as to the latter that "A petition for cancellation of opposer's pleaded Registration No. 504,940 is a compulsory counterclaim under Rule 2.114(b)(2)(i), and applicant is not free to file a separate cancellation petition." Skippy, Inc. did not appeal that ruling.

In 2001, Skippy, Inc. filed another petition for cancellation of the SKIPPY registration. Hormel's predecessor-in-interest successfully moved to dismiss on res judicata grounds. The Board again stated that the petition should have been timely filed as a counterclaim in 1986.

In the instant proceeding, commenced in June 2015, Skippy, Inc. seeks to cancel the SKIPPY registration on the same ground as in its previous attacks: fraud in the procurement of the registration (application filed in 1947) and fraud in filing a Section 15 declaration (1954). Applicant claimed that it has new evidence that was unavailable in the prior proceedings.

The Board once again found that Skippy, Inc.'s claim was barred by the doctrine of claim preclusion. There was no doubt that the same parties or their privies were involved in each of the cases. The prior rulings were on the merits. And the transactional facts are identical as to each claim by Skippy, Inc.: i.e., that Hormel's predecessor made the same false statements and withheld the same information from the USPTO in obtaining and maintaining the SKIPPY registration.

Petitioner was required to raise any invalidity claims it may have had against the subject registration in a timely manner in the first consolidated opposition proceedings. Petitioner failed to do so. If any grounds existed for attacking the validity of the Registration No. 504940, Petitioner’s opportunity to raise these grounds has passed.

The Board rejected Skippy, Inc.'s claim that it has new evidence that was previously unavailable. "Such evidence is merely additional evidence of the same allegedly fraudulent occurrence of which Petitioner was undisputedly aware in the earlier opposition proceeding. It is clear that these grounds were not only not newly discovered but, on the contrary, were grounds which existed and were know to Petitioner at the time it file its answer [in 1986]."

And so the Board granted Hormel's motion for summary judgment.

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TTABlog comment: FYI: Skippy, Inc., is the successor in interest to Percy Crosby, creator of the “Skippy” cartoon character, a humorous, juvenile character that appeared in a syndicated cartoon comic strip from about 1923 to 1945.

Text Copyright John L. Welch 2016.