Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA48680
`
`Filing date3
`
`10/13/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91166074
`
`Plaintiff
`Bigfoot 4x4, Inc.
`Bigfoot 4X4, Inc.
`§ 6311 North Lindbergh
`Hazelwood, MO 63042
`
`NELSON D. NOLTE
`§ POLSTER, LIEDER, WOODRUFF & LUCCHESI, L.C.
`Correspondence l
`Address
`1 12412 POWERSCOURT DRIVE, SUITE 200
`ST. LOUIS, MO 63131
`
`Submission
`Ffler's Name
`Filer's e-mail
`Signature
`
`Opposition]Response to Motion
`Nelson D. Nolte
`nno1te@patpro.com, nschomogy@patpro.com
`/Nelson D. Noltel
`
`Attachments
`
`Opposer's Response to Summary Judgmentpdf ( 11 pages )
`§ Exhibit A - Opposer's Response to Applicant's Motion to Dismiss or
`Summary Judgmentpdf ( 10 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91166074
`
`) )
`
`) )
`
`) )
`
`) )
`
`)
`
`BIGFOOT 4X4, INCORPORATED,
`
`Opposer,
`
`V.
`
`BIG 0 TIRES, INC.,
`
`Applicant.
`
`OPPOSER’S RESPONSE TO APPLICANT’S MOTION TO DISMISS OR IN THE
`
`ALTERNATIVE SUMMARY JUDGMENT
`
`In its motion, Big O Tires, Inc. (“Big O”) seeks dismissal for failure to state a claim or, in
`
`the alternative for summary judgment,
`
`in the present opposition proceeding.
`
`Its basis for
`
`dismissal or summary judgment is that Opposer, Bigfoot 4X4, Inc. (“Bigfoot”), previously
`
`entered into a settlement agreement to settle federal district court litigation which gave Big O the
`
`right
`
`to sell “vehicle replacement parts.” Big 0 further contends that because “vehicle
`
`batteries”1 can be sold as vehicle replacement parts, that Bigfoot has no standing to challenge the
`
`present application.
`
`However, Big O’s logic is flawed and overlooks the details of the settlement agreement.
`
`While “vehicle batteries” may be partially within the definition of “vehicle replacement parts,” it
`
`is absolutely clear that vehicle batteries may be sold as high performance racing parts or original
`
`equipment manufacturer parts, which are not vehicle replacement parts. Therefore, because Big
`
`O’s description of goods is broader than the goods involved in the parties’ settlement agreement,
`
`1 Big O contemporaneously filed a motion to amend its recited goods from “batteries” to “vehicle batteries”. While
`this motion has not yet been granted or denied, Bigfoot will make its argument with respect to the narrower goods
`recitation. Bigfoot’s arguments apply With equal force to the broader recitation of “batteries”.
`
`

`
`Bigfoot has standing to oppose Big O’s application to the extent the goods fall outside of the
`
`terms of the settlement agreement.
`
`Moreover, to the extent “vehicle batteries” falls partially within “vehicle replacement
`
`parts,” Big O does not have the exclusive right to “vehicle replacement parts” pursuant to
`
`paragraph 2 under “Other Matters” of the settlement agreement, which provides that Bigfoot may
`
`continue to sell all parts that it previously sold at its existing locations plus ten future locations.
`
`Because Bigfoot previously sold replacement vehicle parts, Big O does not have the exclusive
`
`right to sell replacement vehicle parts under the Bigfoot mark in the U.S. and Bigfoot has
`
`standing to challenge the application as attempting to appropriate Bigfoot’s rights in the mark.
`
`I. BACKGROUND
`
`Bigfoot was started in the mid-1970s when Bob Chandler, then a St. Louis, Missouri
`
`construction contractor, owned a Ford F-250 4x4 pickup truck. Chandler used his truck on the
`
`job and for off-road family fun on the weekends. Because he found ways to break even the
`
`toughest of trucks, Bob discovered that there was no place in the Midwest to get 4x4 parts and
`
`service. Recognizing a potential market, Bob and his wife Marilyn started Midwest Four Wheel
`
`Drive & Performance Center, later renamed Bigfoot 4x4.
`
`Bob used his pickup truck as promotional tool for the new business. He tried out new
`
`parts on the truck, and kept making it bigger and better. Soon the truck itself became an
`
`attraction. In 1979, the truck performed in its first paid event. In 1981, Bob tried something that
`
`forever changed the monster truck concept and fueled an explosion of fan interest and led to a
`
`legion of imitators. He decided, just for fun, to see if he could drive BIGFOOT over a couple of
`
`junk cars.
`
`A few months later, he duplicated the stunt in a stadium show, and the rest is history. In
`
`1983, BIGFOOT began a sponsorship association with Ford Motor Company.
`
`In that time, the
`
`

`
`BIGFOOT fleet has grown to 16 monster machines. BIGFOOT branded monster trucks have
`
`appeared in movies, television shows, and have held four Guinness Book World Records for
`
`World’s tallest pickup (l5’6”), monster truck long jump (202’), top speed (69.3 mph), jump
`
`height (24’). The BIGFOOT name has also been the subject of hundreds of sponsorships and
`
`license agreements for toys, video games and other products.
`
`From its beginnings as an off-road vehicle to car crushing exhibitions to monster truck
`
`racing, the BIGFOOT mark has been the most popular brand in monster trucks and is widely
`
`known and credited as creating the entire concept of monster trucks.
`
`It is the fame of the
`
`BIGFOOT monster truck that drives sales of monster truck parts from two retail locations in St.
`
`Louis, Missouri and Potosi, Missouri.
`
`Further Bigfoot has registrations for BIGFOOT for t-shirts,
`
`jerseys,
`
`jackets, caps,
`
`entertainment services, toy vehicles, photographs, posters, calendars, iron-on transfers, catalogs,
`
`and mail order services that it has been using for decades.
`
`Big O is an automobile tire and automobile repair retailer.
`
`Its website states that Big O
`
`operates and/or franchises automobile tire and repair locations under its Big O mark (primarily in
`
`the western United States) and other marks in other parts of the country. Big O has registrations
`
`for BIG FOOT for vehicle tires and a registration for BIGFOOT COUNTRY for tire and vehicle
`
`maintenance and repair services.
`
`In 2001, Big O initiated suit against Bigfoot in the U.S. District Court for the District of
`
`Colorado for infringement of the BIG FOOT mark, which was concluded in 2004. The result
`
`was a settlement agreement which is attached to Big O’s dismissal/summary judgment brief In
`
`short, the agreement provided for exclusive use of the BIG FOOT mark for some goods and
`
`services for Big O and exclusive use for the BIGFOOT mark for other goods and services for
`
`Bigfoot. However, exceptions to some areas of exclusive use were included in the agreement.
`
`

`
`Particularly germane to the present motion is paragraph 2 of the settlement agreement under the
`
`section that is headed “Other Matters”. That section recites:
`
`2. Big O will not challenge the existence and operation of
`the existing BIG FOOT retail store (such single store can continue
`to sell all of those types of items previously sold in the store), or up
`to ten (10) additional locations (not limited to St. Louis) so long as
`it is not within a Big O franchisee's exclusive territory. In the event
`that
`the alternate site(s) precedes development of a franchise
`territory by Big O than [sic] the Bigfoot 4x4 retail location will not
`be required to relocate by Big O at such time as a franchised
`location is developed. Big O agrees that it will not develop a Big O
`franchise within 2 miles of one of these ten (10) locations provided
`notice of the location is made to Big O on a timely basis.
`Bigfoot 4x4 may open as many novelty and accessory
`stores as it determines. Such stores will not market the items listed
`in paragraph 22 unless pursuant to a Big O franchise agreement.
`
`Therefore, Big O does not have the right to exclusively use the mark BIG FOOT for its
`
`goods and services wherever it wishes, as it may not operate within two miles of an existing
`
`Bigfoot location and that Bigfoot may expand into any area not covered by a Big O franchisee’s
`
`exclusive territory and Big O must stay two miles area from such future location. As a result,
`
`Big O does not have the exclusive right to use BIG FOOT for vehicle replacement parts
`
`throughout the U.S., but rather has agreed not to use the BIG FOOT mark in defined existing
`
`areas and ten more undefined areas in which Bigfoot may use the mark in the future.
`
`II. THE LAW OF DISMISSAL AND SUMMARY JUDGMENT
`
`The Board has adopted the Federal Rules for inter partes proceedings. 37 C.F.R.
`
`§2. 1 l6(a) (2005).
`
`A motion for dismissal under Fed. R. Civ. P. l2(b)(6) is dismissal for failure to state a
`
`claim upon which relief can be granted based only upon the pleadings. When dismissal is on the
`
`pleadings, the plaintiffs well-pleaded factual allegations are accepted as true and all reasonable
`
`2 The items that Bigfoot is allowed to sell at its up to ten additional locations include “vehicle replacement parts”
`from paragraph 2.
`
`

`
`factual inferences are drawn in its favor. See Albright v. Oliver, 510 U.S. 266, 268 (1994).
`
`If
`
`matters outside the pleadings are considered, the motion for dismissal shall be treated as a
`
`motion for summary judgment. Fed. R. Civ. P. 12(b).
`
`Summary judgment
`
`is only appropriate “if the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
`
`genuine issue as to any material fact and that the moving party is entitled to judgment as a matter
`
`of law.” Fed. R. Civ. P. 56(c). The movant carries the initial burden of proving that there are no
`
`genuine issues of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-24 (1986). If the
`
`movant shows a prima facie case for summary judgment, then the burden of production shifts to
`
`the non-movant
`
`to present specific evidence indicating there is a genuine issue for trial.
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
`
`“When ruling on a motion for
`
`summary judgment, all of the non-movant's evidence is to be credited, and all justifiable
`
`inferences are to be drawn in the non-movant's favor.” Caterpillar Inc. v. Deere & Co., 224 F.3d
`
`1374, 1379 (Fed. Cir. 2000); see also Tackitt v. Prudential Ins. Co. ofAm., 758 F.2d 1572, 1574
`
`(1 1th Cir. 1985) (“We resolve all reasonable doubts about the facts in favor of the non-
`
`movant.”).
`
`II. THE LAW OF STANDING
`
`The Lanham Act allows “[a]ny person who believes that he would be damaged by the
`
`registration of a mark” to file an opposition. See 15 U.S.C. §1063. The Lanham Act does not
`
`provide any more criteria for an opposition than this statement. Since its passage, administrative
`
`and judicial interpretation has provided more guidance. Particularly, administrative and judicial
`
`tribunals have interpreted the act to generally foreclose challenges by anyone who does not have
`
`a direct commercial interest in the mark in question. See Lipton Industries, Inc. v. Ralston
`
`

`
`Purina Co., 670 F.2d l024 (CCPA l982). The clear trend since passage of the Lanham Act has
`
`been to be progressively less restrictive in determining who has standing to oppose. Id.
`
`The Federal Circuit has outlined requirements for standing in inter partes cases. See
`
`Ritchie v. Simpson, 170 F.3d l092 (Fed. Cir. l999). The first requirement is that the opposer has
`
`a real interest in the proceeding, and the second requirement is that the opposer has a reasonable
`
`basis for the belief of damage.
`
`Id. The issue is not whether the opposer owns the mark or is
`
`entitled to register it, but merely whether it is likely that he would somehow be damaged if a
`
`registration where granted to the applicant. Wilson v. Delaunay, 245 F.2d 877 (CCPA l957).
`
`“All that is necessary
`
`is that the ‘person’ bringing the opposition establish conditions
`
`and circumstances from which damage to it from the opposed mark can be assumed.” See FBI v.
`
`Societe.‘
`
`Bril &Co., ” l72 U.S.P.Q. 310 (TTAB l97l). To establish standing to oppose, the
`
`opposer need only be something more than a gratuitous interloper or a vicarious avenger of
`
`someone else’s rights. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d l3l6 (Fed. Cir.
`
`l983) (it is only the basis for a reasonable belief in damage that is examined).
`
`III. BIGFOOT HAS A REAL INTEREST IN THE PROCEEDING
`
`To satisfy the first requirement for standing,
`
`it cannot be seriously challenged that
`
`Opposer has a real interest in the proceeding. Bigfoot has been using the BIGFOOT mark for at
`
`least
`
`t-shirts, jerseys, jackets, caps, entertainment services in the nature of monster truck
`
`exhibitions, toy vehicles, photographs, posters, calendars, iron-on transfers, catalogs, and mail
`
`order services that it has been using for decades. Most of Opposer’s business is centered around
`
`the BIGFOOT mark. Opposer has spent millions of dollars in the operation and promotion of it
`
`BIGFOOT branded business. Therefore, that Opposer has a real interest in the proceeding is
`
`beyond question.
`
`

`
`IV. BIGFOOT HAS A REASONABLE BELIEF OF DAMAGE FROM BIG O’s
`
`REGISTRATION OF THE PRESENT MARK
`
`A. Big O’s Goods In Its Application Is Broader
`Than The Goods In the Settlement Agreement
`
`Big O initially listed “batteries” as its recitation of goods for the present BIG FOOT
`
`mark.
`
`It has since moved the Board to amend the goods to “vehicle batteries”. Using either
`
`recitation of goods, “batteries” or “vehicle batteries”, the recitation of goods in the application is
`
`broader than the goods for which Big 0 claims to have exclusive rights under the settlement
`
`agreement.
`
`In Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., the parties each used the mark
`
`BERKSHIRE in their tradenames and as a trademark in association with various items of
`
`clothing and accessories.
`
`In that case, the Opposer, Mayer/Berkshire, had used the mark as a
`
`tradename since 1906 and as a trademark since 1925 in association with various clothing goods
`
`and had eight registrations in connection with hosiery and apparel items in Class 25. Berkshire
`
`Fashions stated that it had used the mark since 1945 as a tradename and trademark for various
`
`goods, and in 1981 applied for registration for BERKSHIRE as applied to goods in Classes 18
`
`and 25. The Examining Attorney rejected the application as to the Class 25 goods over
`
`Mayer/Berkshire’s prior registrations. Berkshire Fashions then deleted the Class 25 goods and
`
`the application went to publication. Mayer/Berkshire filed an opposition in July 1984.
`
`In 1982,
`
`Mayer/Berkshire filed suit against Berkshire fashions in federal district court alleging trademark
`
`infringement and unfair competition. Berkshire Fashions prevailed in the litigation, and the
`
`opposition was dismissed thereby allowing the Class 18 application to register.
`
`Shortly after registration, Berkshire Fashions again filed another application seeking to
`
`register the apparel items in Class 25 that it had removed from the earlier application. The
`
`Examining Attorney rejected the application on the basis of the Mayer/Berkshire registrations.
`
`

`
`Upon submitting documents from the district court litigation, the Examining Attorney acquiesced
`
`and allowed the application, and Mayer/Berkshire subsequently filed a Notice of Opposition.
`
`The Board held that the under the principles of res judicata and collateral estoppel, the
`
`issue of confusion could not be relitigated. Mayer/Berkshire appealed to the Federal Circuit,
`
`which overturned the Board’s decision holding that: “Registrability is not an issue in
`
`infringement litigation, and although the likelihood of confusion analysis presents a “superficial
`
`similarity,” differences in transactional facts will generally avoid preclusion” in an opposition
`
`proceeding based upon an earlier litigation. Mayer/Berkshire Corp. v. Berkshire Fashions, Inca,
`
`_ F.3d _ (Fed Cir. September 22, 2005)(Exhibit A at p.6).
`
`Moreover, the Federal Circuit further noted that:
`
`The parties dispute the extent to which [Applicant’s] application
`embraces a broader statement of goods than those before the
`district court; this aspect alone rendered summary judgment
`inapplicable, for the Board did not consider the separate goods in
`the Class 25 application but stated that all “garments” were
`included in the district court judgment. Precedent and practice
`require a more detailed analysis.
`
`Id. (Exhibit A at p.7). Therefore, not only are the issues different in a district court litigation
`
`(issues of usage versus listing of goods/services), but the Board erred where it dismissed an
`
`opposition when the description of goods in the application are different from the goods at issue
`
`in the prior district court litigation.
`
`Just as in the cited case, in the present case Big O is attempting to register the mark BIG
`
`FOOT for a class of goods that is broader than the settlement agreement between the parties. Big
`
`O’s proposed amended good is “vehicle batteries”. However, vehicle batteries may be sold as
`
`something other than “vehicle replacement parts” and is therefore a term not encompassed within
`
`“vehicle replacement parts.”
`
`

`
`As only an example, vehicle batteries may be sold as new parts for new racing cars and
`
`new racing trucks, and not as vehicle replacement parts. As another example, vehicle batteries
`
`may also be sold to original equipment manufacturers for use in new street vehicles, and not as
`
`vehicle replacement parts. Therefore, “vehicle batteries” undeniably covers goods not falling
`
`within “vehicle replacement parts”, and this difference alone will avoid dismissal or summary
`
`judgment, just as it did in Mayer/Berkshire.
`
`B. Big O’s Application Attempts to Limit Bigf00t’s Rights in BIGFOOT
`That Were Agreed to in the Settlement Agreement
`
`While Big O has pointed to the first paragraph 2 of the settlement agreement which
`
`purports to grant exclusive rights to Big O for a list of goods including “vehicle replacement
`
`parts.” Paragraph 2 of the agreement under the section entitled “Other Matters,” recited above,
`
`gives Bigfoot rights to sell all items that Big O supposedly has “exclusive rights” at all existing
`
`Bigfoot retail store locations and up to ten more locations nationwide. Moreover, Big O agreed
`
`to not develop a Big O franchise within 2 miles of any such present or future location owned by
`
`Bigfoot. Bigfoot may place a Bigfoot retail location anywhere that is not within the existing
`
`territory of a Big O franchisee.
`
`Bigfoot has previously sold vehicle replacement parts from its retail locations. Therefore,
`
`Big O’s rights are not exclusive in vehicle replacement parts and are subject to the rights of
`
`Bigfoot in also selling vehicle replacement parts from its then-existing and ten additional retail
`
`locations. Big O’s attempt to register BIG FOOT for vehicle batteries is an attempt to curtail the
`
`rights Big O agreed to in the settlement agreement, all to Bigfoot’s damage.
`
`In summary, Big O cannot prevail because it does not have exclusive rights to BIG
`
`FOOT for “vehicle replacement parts” pursuant to the second paragraph 2 of the Settlement
`
`

`
`Agreement because Bigfoot’s rights under
`
`that agreement would be curtailed by such
`
`registration.
`
`V. CONCLUSION
`
`To the extent “batteries” or “vehicle batteries” is broader than the goods listed in
`
`paragraph 2 of the parties’ settlement agreement Big 0 cannot prevail on summary judgment
`
`because Bigfoot is not precluded based upon collateral estoppel or res judicata on such broader
`
`recitation. This basis alone is enough to deny summary judgment.
`
`As a further basis to deny summary judgment, reading the entire settlement agreement
`
`and not merely the single paragraph selected by Big O, the paragraph 2 under “Other Matters” of
`
`the settlement agreement provides that Bigfoot shall have the right to sell goods it previously
`
`sold (which includes “vehicle replacement parts”)
`
`in its existing retail
`
`locations plus ten
`
`additional locations. Therefore, Big O does not have exclusive nationwide rights to BIG FOOT
`
`for vehicle replacement parts, and the registration of BIG FOOT for vehicle batteries by Big O is
`
`an attempt to curtail Bigfoot’s rights in the BIGFOOT mark.
`
`BIGFOOT 4X4, INCORPORATED
`
`By: /Nelson D. Nolte/
`William G. Bruns, Reg. No. 19,541
`Nelson D. Nolte, Reg. No. 42,938
`POLSTER, LIEDER, WOODRUFF
`
`& LUCCHESI, L.C.
`12412 Powerscourt Dr. Ste. 200
`
`St. Louis, Missouri 63131
`(314) 238-2400
`
`

`
`Certificate of Service
`
`I hereby certify that on this 13th day of October, 2005, a copy of the foregoing Opposer’s
`Response To Applicant’s Motion To Dismiss Or In The Alternative Summary Judgment is being
`deposited with the United States Postal Service with sufficient postage as first-class mail in an
`envelope addressed to:
`
`Marsha G. Gentner, Esq.
`JACOBSEN HOLMAN PLLC
`
`400 Seventh St., NW
`Washington, DC 20004
`
`Attorneys for Applicant/Respondent
`
`/Nelson D. Nolte/
`
`Nelson D. Nolte
`
`ll
`
`

`
`United States Court of Appeals for the Federal Circuit
`
`04-1254
`
`(Opposition No. 91/080,606)
`
`MAYER/BERKSHIRE CORP.,
`
`Appellant,
`
`v.
`
`BERKSHIRE FASHIONS, INC.,
`
`Appellee.
`
`DECIDED: September 22, 2005
`
`Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and BRYSON,
`Circuit Judge.
`
`NEWMAN, Circuit Judge.
`
`Mayer/Berkshire Corp. appeals the decision of the United States Patent and
`
`Trademark Office, Trademark Trial and Appeal Board,‘ dismissing its opposition to the
`
`registration by Berkshire Fashions, Inc. ofthe mark BERKSHIRE for various categories of
`
`Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., Opposition No. 80,606
`1
`(TTAB Dec. 17, 2003).
`
`Opposer's Exhibit A — Opposer's Response
`to Applicant's Motion to Dismiss or in the
`Alternative Summary Judgment
`BIGFOOT 4X4, Inc. v. BIG 0 Tires, Inc.
`Opposition 91166074
`
`

`
`clothing. The Board held that the opposition is barred by res judicata and collateral
`
`estoppel arising from prior district court infringement litigation. We conclude that the Board
`
`erred in its application of these doctrines. The dismissal is vacated and the case is
`
`remanded to the PTO for further proceedings.
`
`BACKGROUND
`
`Both parties use the word BERKSHIRE in their trade names and as a trademark in
`
`association with various items of clothing and accessories. Mayer/Berkshire states that it
`
`and its predecessor companies have used BERKSHIRE since 1906 in theirtrade name and
`
`since 1925 as a trademark in association with apparel including socks, hosiery, unden/vear,
`
`gloves, lingerie, nightgowns, pajamas, t-shirts, Ieotards, and down vests, and in their retail
`
`outlet store with a full range of men's, women's, and children's clothing. As of 1990
`
`Mayer/Berkshire had eight registrations for BERKSHIRE in Class 25 for use in connection
`
`with hosiery and apparel items.
`
`Berkshire Fashions states that it has used BERKSHIRE in its trade name since
`
`1945, and as a trademark for various goods.
`
`In September 1981 Berkshire Fashions filed
`
`an application to register the mark BERKSHIRE as applied to articles in Classes 18 and 25.
`
`The Class 18 goods included umbrellas, tote bags, and umbrella and scarf sets sold as a
`
`unit. The Class 25 goods included sixteen kinds of apparel, E raincoats, sweaters,
`
`pocket squares, scarves, mantillas, belts, gloves, hats, earmuffs, slippers, tops, blouses,
`
`shirts, pants, vests, and uniforms. The examining attorney refused registration in Class 25
`
`because of Mayer/Berkshire's prior registrations of BERKSHIRE in Class 25 for various
`
`items of women's and children's garments. Berkshire Fashions then deleted the Class 25
`
`goods from the application. The application with the remaining Class 18 goods was passed
`
`04-1254
`
`2
`
`

`
`to publication, and Mayer/Berkshire filed an opposition in July 1984 under Section 13 of the
`
`Lanham Trademark Act, 15 u.s.c. §1063.
`
`In 1982 Mayer/Berkshire had filed suit against Berkshire Fashions in the United
`
`States District Court for the District of New Jersey, alleging trademark infringement and
`
`unfair competition. The Board suspended the opposition proceeding in Class 18 until the
`
`district court action was concluded.
`
`In April 1985 the district court case went to the jury,
`
`with the following question:
`
`1.
`
`Have defendants infringed plaintiffs trademark, i.e., is there a
`likelihood of confusion resulting from the use by defendants of
`the trademark and trade name "Berkshire"?
`If No, answer no more questions; your deliberations are over.
`
`The jury answered "No," and the district court entered judgment for Berkshire Fashions.
`
`The Board then dismissed Mayer/Berkshire's opposition, and the registration in Class 18
`
`issued to Berkshire Fashions for use of the mark BERKSHIRE with umbrellas, tote bags,
`
`and umbrella and scarf sets. That registration is not here at issue.
`
`In October 1986 Berkshire Fashions filed the application that is the subject of this
`
`appeal, seeking registration forthe apparel items in Class 25 that it had removed from the
`
`earlier application. The trademark examiner rejected the application based on six of
`
`Mayer/Berkshire's prior registrations in Class 25. Berkshire Fashions appealed to the
`
`Board, who remanded to the examiner to consider the New Jersey litigation. Berkshire
`
`Fashions submitted a list of trial exhibits in the New Jersey action that included most but
`
`not all of the kinds of items in Berkshire Fashions Class 25 application. Thereafter, after
`
`deleting belts and slippers from the list of goods in the application, the examiner passed the
`
`Class 25 application to publication. Mayer/Berkshire duly filed a notice of opposition,
`
`04-1 254
`
`3
`
`

`
`alleging likelihood of confusion between the BERKSHIRE mark applied to the Berkshire
`
`Fashions items in Class 25 and the items subject to Mayer/Berkshire's registered
`
`BERKSHIRE marks.
`
`The Board granted summaryjudgment in favor of Berkshire Fashions, ruling that the
`
`issue of likelihood of confusion had been decided in the New Jersey civil action and could
`
`not be re-litigated, applying res judicata and collateral estoppel. The Board held that
`
`Mayer/Berkshire was estopped to challenge the registration of BERKSHIRE forthe fourteen
`
`kinds of goods in Berkshire Fashions‘ Class 25 application. The TTAB entered final
`
`judgment denying the opposition to the Class 25 registration.
`
`DISCUSSION
`
`This appeal is from the Board's grant of summary judgment in reliance on res
`
`judicata and collateral estoppel based on the district court judgment in the infringement
`
`litigation. When an administrative agency governed by the Federal Rules grants a motion
`
`for summary judgment, the pleadings and record evidence must "show that there is no
`
`genuine issue as to any material fact and that the moving party is entitled to a judgment as
`
`a matter of law." Fed. R. Civ. P. 56(c). The Board has adopted the Federal Rules for inter
`
`partes proceedings. 37 C.F.R. §2.116(a) (2005). The Board's summary judgment is
`
`reviewed in accordance with the requirements of Federal Rule 56. See Lincoln Logs Ltd. v.
`
`Lincoln Pre-cut Log Homes, lnc., 971 F.2d 732, 734 (Fed. Cir. 1992) (court gives de novo
`
`review to the grant of summary judgment in an opposition proceeding).
`
`Mayer/Berkshire states that the decision of the infringement case in the district court
`
`does not control federal trademark registration, on principles of either res judicata or
`
`collateral estoppel. Mayer/Berkshire states that the decision in the infringement trial was
`
`04-1254
`
`4
`
`

`
`based on evidence showing that much of Berkshire Fashions‘ use of the word BERKSHIRE
`
`was in its trade name, in usages such as the label "By Berkshire Fashions" or on packages,
`
`but not in trademark use; and. that this presentation explains the jury verdict that there was
`
`not a likelihood of confusion between Berkshire Fashions’ and Mayer/Berkshire's identical
`
`marks. Thus Mayer/Berkshire argues that the evidence presented to the district court does
`
`not warrant the summary judgment in the opposition proceeding. Mayer/Berkshire also
`
`states that the Board is required to consider issues of priority of use and the scope of the
`
`goods in the Class 25 application,
`
`issues that were not before the district court.
`
`Mayer/Berkshire urges that preclusion was improperly applied by the Board.
`
`Res judicata, or claim preclusion, protects against re—litigation of a previously
`
`adjudicated claim between the same parties or their privies. As discussed in Parklane
`
`Hosiem Company, Inc. v. Shore., 439 U.S. 322, 326 n.5 (1 979), "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 based on the same cause of action." In Jet, Inc. v. Sewage Aeration
`
`Systems, 223 F.3d 1360, 1362 (Fed. Cir. 2000) this court on reviewing a cancellation
`
`proceeding on appeal from the Board, elaborated that "a second suit will be barred by claim
`
`preclusion if: (1) there is identity of parties (or their privies); (2) there has been an earlier
`
`finaljudgment on the merits of a claim; and (3) the second claim is based on the same set
`
`of transactional facts as the first."
`
`In the absence of res judicata, the related principle of collateral estoppel or issue
`
`preclusion can also bar relitigation of the same issue in a second action.
`
`In Parklane, 439
`
`U.S. at 326 n.5, the Court explained that "[u]nder the doctrine of collateral estoppel, on the
`
`other hand, the second action is upon a different cause of action and the judgment in the
`
`04-1254
`
`5
`
`

`
`prior suit precludes re-litigation of issues actually litigated and necessary to the outcome of
`
`the first action."
`
`In Montana v. United States, 440 U.S. 147, 153-55 (1979) the Court
`
`summarized the requirements of collateral estoppel as (1) identity of an issue in a prior
`
`proceeding, (2) the identical issue was actually litigated, (3) determination of the issue was
`
`necessary to the judgment in the prior proceeding, and (4) the party defending against
`
`preclusion had a full and fair opportunity to litigate the issue in the prior proceeding.
`
`In J_e_t,fl;_. the court explained that a trademark infringement action in the district
`
`court is not automatically of preclusive effect in a cancellation proceeding in the PTO, for a
`
`claim for trademark infringement may not be based on the same transactional facts as a
`
`petition to cancel a registered mark, or the facts relevant to infringement may not be
`
`sufficiently applicable to trademark registration to warrant preclusion.
`
`In a trademark
`
`infringement action, the owner of a registered mark sues for relief from the injury caused by
`
`the defendant's actual sale, offering for sale, or advertising of goods or services bearing the
`
`challenged mark, whereas an opposition to registration is based on the content of the
`
`registration application. Although to succeed in an opposition proceeding the opposer must
`
`show that "he would be damaged by the registration of a mark upon the principal register,
`
`including as a result of dilution under section 43(c) .
`
`.
`
`.
`
`15 U.S.C. §1063, the opposer
`
`need not show actual injury, and is benefitted by prior registration and prior use. These
`
`different causes of action may involve different sets of transactional facts, different proofs,
`
`different burdens, and different public policies. Registrability is not at issue in infringement
`
`litigation, and although the likelihood of confusion analysis presents a "superficial
`
`similarity," differences in transactional facts will generally avoid preclusion. Jet lnc., 223
`
`F.3d at 1364-65.
`
`04-1 254
`
`6
`
`

`
`The Board emphasized this rule in American Hygienic Labs., Inc. v. Tiffany & Co.,
`
`228 USPQ 855, 857 (TTAB 1986), explaining that in an opposition proceeding "a claim of
`
`infringement before the court and a claim of priority and likelihood of confusion before this
`
`Board are different claims. The former claim is, in essence, a claim of injury resulting from
`
`applicant's fie of its mark in commerce; the latter claim, in essence, is a claim that opposer
`
`believes it would be damaged by registration of applicant's mark." Again in In re lnfiniy
`
`Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001) the Board stated that
`
`"in Board proceedings, likelihood of confusion is determined independent of the context of
`
`actual usage.
`
`In an infringement action, on the other hand, the context of the use of the
`
`mark is relevant." gag generally J.T. McCarthy, McCarthy on Trademark and Unfair
`
`Competition, §32:82 at 321143 (4th ed. 2004) ("A claim for infringement is not the same as
`
`an interpartes claim for opposition or cancellation against another's registration of a mark.
`
`Thus, an opposer would not necessarily be barred by the rule of claim preclusion when it
`
`lost a previous infringement claim in court.")
`
`The issue litigated in the district court action was whether the marketing by Berkshire
`
`Fashions of specific products with either the BERKSHIRE mark or the Berkshire Fashions
`
`trade name was likel