Thursday, May 19, 2022

TTAB Affirms "EVERLAST" Refusal on Res Judicata and Section 2(d) Grounds

The Board affirmed the USPTO's refusal to register the mark EVERLAST & Design for "wet well mounted pumping stations; wastewater pumping stations; sewage pumping stations" on two grounds: res judicata, since the Board had already affirmed the same refusal of the same mark for the same goods; and likelihood of confusion (again) with the same registered mark EVERLASTING for "valves for controlling the flow of fluids." In re Smith & Loveless, Inc., Serial No. 88497482 (May 16, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

On June 26, 2019,  the Board affirmed a Section 2(d) refusal to register applicant's mark, finding confusion likely with the EVERLASTING mark. (Opinion here). In that appeal, the Board refused to consider evidence of third-party registrations and website evidence that was not made of record during prosecution of the application. Undaunted, on July 2, 2019, the applicant applied to register the same mark for the same goods (asserting in this appeal that the second application was filed "so that full consideration to Applicant's arguments could be had."

Examining Attorney David A. Brookshire issued the same Section 2(d) refusal, and applicant filed this appeal. The Board remanded the case to the Office for consideration of the applicability of res judicata (a/k/a claim preclusion) based on the prior appeal. The Examining Attorney then added the ground of res judicata to the final refusal.

The primary additions to the record on this second appeal were the third-party evidence of applicant and some additional third-party webpages made of record by the Examining Attorney.

Res judicata: Under the doctrine of res judicata, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies on the same cause of action." The Board found last year's SolarWindows decision [TTABlogged here] to be procedurally on point. There, two years after a Board decision upholding a mere descriptiveness refusal of POWERCOATINGS for certain chemicals, the applicant filed a new application for the same mark and goods. The Board affirmed the second refusal on the ground of res judicata, ruling that certain new arguments made by the applicant did not "demonstrate the required material change of circumstances or conditions" that would avoid res judicata, since those arguments could have been made in the first appeal.

Similarly, here the additional evidence was admittedly available when the prior application was pending, and so it did not constitute a material change of circumstances that would justify not applying res judicata. "A losing party does not get a second bite of the apple simply because they can find [] new and arguably more persuasive evidence to present in the second proceeding." Here, the evidence was not even "new."

Likelihood of Confusion: The Board went on to consider the Section 2(d) issue, including the additional evidence, since the CAFC has warned that "particular caution is warranted" when applying claim preclusion. The Board came to the same conclusion as previously.

Applicant relied primarily on two third-party registered marks: Teksan, everlasting company (stylized) and EVERLAST SPAS. However the impact of third-party registrations on the commercial strength of a mark depends on the usage of the mark, and the evidence submitted by applicant did not show use of these marks.

As to the inherent strength of the cited mark EVERLASTING, the "handful" of third-party registrations had little probative value: they were a "far cry from the large quantum of evidence" held to be "significant" in the Jack Wolfskin and Juice Generation cases.

In sum, the third-party evidence was insufficient to show that the cited mark is either commercially or conceptually weak or is entitled to only a narrow scope of protection. As to the remaining DuPont issues, the Board saw no reason to change its findings from those in the first decision.

And so, the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: Let's hope this second affirmance will be everlasting.

Text Copyright John L. Welch 2022.


At 9:14 AM, Anonymous Anonymous said...

Seems like one of the takeaways here is don't appeal. just file the second application, gather more evidence, and see how it goes from there. there would be no res judicata without a decision by the Board on appeal.

At 8:30 AM, Blogger John L. Welch said...

I think the Examining Attorney would, or should, apply res judicata to the second application even if the first final refusal wasn't appealed.

At 3:21 PM, Anonymous Anonymous said...

Are you saying that if I file an application, abandon it after an office action refusal, do not appeal, but instead file again, the examiner can apply res judicata to my second application, without a Board decision, based only on the prior refusal?

At 5:55 PM, Blogger John L. Welch said...

No, it's not res judicata if you withdraw the first application. But if it goes to a final refusal and you don't appeal, I think you are barred from re-filing the same application for the same mark for the same goods.


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