Tuesday, March 09, 2021

Precedential No. 6: Applying Res Judicata, TTAB Again Affirms Mere Descriptiveness Refusal of POWERCOATINGS for Solar Cell Chemicals

The TTAB sun again failed to shine on Applicant SolarWindow Technologies, Inc. The Board applied the doctrine of res judicata in affirming a Section 2(e)(1) mere descriptiveness refusal of POWERCOATINGS for coatings for solar cells. SolarWindow filed an application in 2014 for the same mark for the same goods, and in 2016 the Board affirmed a mere descriptiveness refusal of that application. SolarWindow filed again in 2018 and was rejected again on both Section 2(e)(1) and res judicata grounds. Here, the Board affirmed on the latter ground because SolarWindow failed to show any change of conditions or circumstances that would excuse the application of res judicata. In re SolarWindow Technologies, Inc., 2021 U.S.P.Q.2d 257 (T.T.A.B. 2021) [precedential] (Opinion by Judge Jyll Taylor).

Under the doctrine of res judicata, or claim preclusion, "a judgment on the merits in a prior suit bars a second suit involving the same parties or third privies based on the same cause of action." In re Bose Corp., 476 F.3d 1331, 81 U.S.P.Q.2d 1748, 1752 (Fed. Cir. 2007) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979)). The CAFC in Bose warned, however, that particular caution is warranted in the application of [claim] preclusion by the PTO, for the purposes of trademark procedures include protecting both the consuming public and the purveyors." In re Bose, 81 U.S.P.Q.2d at 1752 (quoting Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 U.S.P.Q.2d 1310, 1314 (Fed. Cir. 2005)).

In general, there is nothing to preclude an applicant from attempting a second time in an ex parte proceeding to register a particular mark if conditions and circumstances have changed since the rendering of the adverse final decision in the first application. The question generally in the second proceeding is whether changes in facts and circumstances do exist and, if so, whether they can support the registration sought. In re Honeywell Inc., 8 U.S.P.Q.2d 1600, 1601-02 (T.T.A.B. 1988). [In Honeywell, 17 years had elapsed between the two applications and Honeywell's design patent had expired, resulting in the Board's conclusion that "conditions have changed."]

Applicant SolarWindow argued that there are "additional facts" that preclude the application of res judicata. The Board observed, however, that "pointing to additional facts or even making a more persuasive argument based on those facts does not avoid preclusion from an earlier decision." Cf. SynQor, Inc v. Vicor Corp., No. 2019-1704, ___ F.3d ___, 2021 USPQ2d 208, at *12 (Fed. Cir. Feb. 22, 2021) (“A losing party does not get a second bite at the apple simply because they can find [] new and arguably more persuasive” evidence to present in the second proceeding.). The losing party must demonstrate "a material change in the relevant conditions or circumstances," and applicant failed to do so.

Applicant’s arguments raised in its response to the Examining Attorney’s assertion of res judicata are, at best, alternative arguments why it believes its mark is not merely descriptive of its goods. See Bose, 81 U.S.P.Q.2d at 1752 (rejecting argument that new evidence in the form of applicant’s new promotional materials “represent a changed circumstance such that we should bar application of the doctrine of res judicata”); Honeywell, 8 U.S.P.Q.2d at 1601-02.

SolarWindow asserted that consumers may be confused as to whether the term POWERCOATINGS refers to a type of protective coating or finish applied to the product, or a method for applying the coating, or whether the term is a misspelling of the term "powder coating." However, applicant failed to show that this argument was not available during prosecution of its first application.

In other words, Applicant does not demonstrate the required material change of circumstances or conditions merely by bringing up a new argument which could have been made during the prosecution of Applicant’s Prior Application. (Emphasis by the Board).

The Board therefore affirmed the refusal to register on the ground of res judicata.

Read comments and post your comment here.

TTABlogger comment: Was the Board's bold-face emphasis really necessary? It kind of hurt my brain. BTW: Why is this decision precedential? Seems rather straightforward to me.

Text Copyright John L. Welch 2021.


At 8:23 AM, Anonymous Anonymous said...

Does res judicata apply to abandoned applications that received an Office action but were not appealed to the Board?

At 8:33 AM, Blogger John L. Welch said...

No, not a "final decision."

At 9:01 AM, Anonymous Anonymous said...

Anonymous: No, which is why you often see "examiner shopping" when an application is refused and the applicant files the application again hoping for a different result from another examiner.


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