Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA771337
`
`Filing date:
`
`09/19/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91170452
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Incredible Pizza Co., Inc.
`
`MARY M CLAPP
`CLAPP BUSINESS LAW LLC
`2518 S CAMPBELL AVE
`SPRINGFIELD, MO 65807
`UNITED STATES
`mclapp@incrediblepizza.com, mary@clappbusinesslaw.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Mary M. Clapp
`
`mary@clappbusinesslaw.com
`
`/Mary M. Clapp, Esq./
`
`09/19/2016
`
`9-15-16 FINAL Supplemental Brief w_Exhibits - com-
`pressed.compressed.pdf(4454116 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JIPC Management, Inc.,
`
`Opposition No. 91170452 (Parent)
`
`
`
`
`
`Opposer,
`
`Application No. 78/575077
`
`
`
`v.
`
`Incredible Pizza Co., Inc.,
`
`
`
`
`
`
`
`Applicant.
`
`For the mark AMERICA’S INCREDIBLE
`PIZZA COMPANY GREAT FOOD, FUN,
`FAMILY & FRIENDS and Design
`
`Published on December 20, 2005
`
`JIPC Management, Inc.,
`
`Cancellation No. 92043316
`
`
`
`
`
`Petitioner,
`
`Registration No. 2,500,872
`
`
`
`v.
`
`Incredible Pizza Co., Inc.,
`
`
`
`
`
`
`
`Respondent.
`
`For the mark INCREDIBLE PIZZA
`COMPANY GREAT FOOD, FUN, FAMILY
`& FRIENDS and Design
`
`Registered on October 23, 2001
`
`
`Incredible Pizza Co., Inc.’s Supplemental Brief on Effect of the Court’s Final Determinations
`in Civil Action and Response to JIPC Management, Inc.’s Supplemental Brief
`
`Applicant and Respondent, Incredible Pizza Co., Inc. (“IPC”) submits this supplemental
`
`brief on the effect of the final determinations by the U.S. District Court for the Central District of
`
`California (the “Court”) in Case No. 08-cv-4310 (the “Civil Action”), and IPC responds to the
`
`supplemental brief filed by Petitioner and Opposer JIPC Management, Inc. (“JIPC”).
`
`
`
`I.
`
`Introduction
`
`JIPC seeks to re-litigate claims which the Court conclusively decided five years ago.
`
`JIPC’s supplemental brief incorrectly states the events in the Civil Action, misconstrues the final
`
`determinations of the Court, and ignores recent case law governing the overlapping and binding
`
`nature of federal district court decisions in concert with TTAB proceedings. Respectfully, the
`
`Court made final determinations that are binding upon the Board in these proceedings, including
`
`the Court’s final determination that JIPC “has not established a valid ground for cancellation of
`
`[IPC’s federal registration], and the request for trademark cancellation is denied.” [Dkt. 477, p. 8,
`
`

`
`Klein Decl., Exh. 121] JIPC did not appeal the Court’s final ruling and therefore must live with the
`
`result.
`
`As outlined below, the Board must not disregard the Court’s final determinations.
`
`
`
`
`
`II.
`
`JIPC Sought and Was Denied Cancellation of IPC’s Registration in the Civil Action.
`
`In its brief, JIPC incorrectly states that “[t]he registrability of the IPC Registration was . . . not
`
`at issue or litigated in the Civil Action.” [JIPC Brief, p. 22] JIPC’s own words belie that statement.
`
`First, it is important to note the Civil Action was bifurcated into two phases: a jury trial (“first
`
`phase”) and bench trial (“second phase”), with different issues decided in the two phases and a final
`
`judgment being issued following the second phase bench trial. While the validity of IPC’s
`
`registration was not at issue in the first phase of trial, it was clearly at issue in the second phase of
`
`trial. In JIPC’s brief regarding the issues to be decided by the Court in the second phase of trial,
`
`JIPC argued that, in light of “the jury’s finding of likelihood of confusion between the mark that is
`
`the subject of [IPC’s] federal registration and the JIPC Marks, [IPC’s] federal registration is invalid
`
`and JIPC is entitled to its cancellation pursuant to the Court’s power under 15 U.S.C. § 1119.” [Dkt.
`
`407, p. 22, Clapp Decl., Exh. 1] JIPC also cited various cases to suggest that the district court was
`
`required to cancel IPC’s federal registration. [Id.] JIPC went so far as to argue that it was entitled to
`
`“automatic cancellation” of IPC’s registration. [Id. p. 23]
`
`Well prior to the second phase of trial, JIPC also clearly indicated to the Court that JIPC
`
`intended “to seek cancellation of [IPC’s] registration in Phase Two.” [Dkt. 376, p. 22, Clapp
`
`Decl., Exh. 2] Prior to and during the second phase of trial, the parties had an opportunity to
`
`litigate and did litigate the validity of IPC’s federal registrations. In fact, JIPC’s own proposed
`
`findings of fact and conclusions of law submitted just before Phase Two specifically referenced
`
`
`1 “Dkt.” Refers to the Court’s Docket with the docket entry number following. If the Exhibit was
`previously included with the JIPC Supplemental Brief, we have referenced it as “Klein Decl., Exh. __”.
`If it is a new exhibit reference, it is included as part of the Declaration of Mary Clapp, and shown as
`“Clapp Decl., Exh. __”.
`
`
`
`2
`
`

`
`Section 2(d) of the Lanham Act and sought a declaration cancelling IPC’s federal registration.
`
`[Dkt. 461-1, p. 16, Clapp Decl., Exh. 3]
`
`In the Court’s final Findings of Fact and Conclusions of Law, the Court recognized that
`
`“[JIPC] seeks an order canceling [IPC’s] trademarks.” The Court also held that, for JIPC to
`
`establish its claim for cancellation, JIPC had to prove “that (1) there is a valid ground why the
`
`trademark should not continue to be registered; and (2) that [JIPC] has standing.” Ultimately,
`
`the Court concluded that, despite having the opportunity to do so, JIPC “has not established a
`
`valid ground for cancellation of the trademark, and the request for trademark cancellation is
`
`denied.” [Dkt. 477, p. 11, Klein Decl., Exh. 12). The Court’s rationale for that final ruling is
`
`discussed below. Summarizing: JIPC specifically requested the Court rule on the issue of
`
`cancellation; the Court denied cancellation; and JIPC never appealed the Court’s ruling. As
`
`such, JIPC has no further recourse on its claim for cancellation, whether in court or before this
`
`Board.
`
`
`
`III.
`
`JIPC Asserted and Failed to Prove Fraud Before the Court.
`
`Contrary to JIPC’s assertion, JIPC already had a full and fair opportunity to litigate its
`
`claim of fraud before the Court. JIPC repeatedly asserted to the Court that IPC’s registration was
`
`procured by fraud, but JIPC ultimately failed to establish any such fraud. For example, JIPC’s
`
`First Amended Complaint in the Civil Action made numerous allegations about IPC’s knowledge
`
`and activities, which, in JIPC’s view, constituted “fraud” on the USPTO. [Dkt. 90, ¶¶ 29-45,
`
`Klein Decl., Exh. 1] In the final pre-trial order, JIPC also alleged (as part of its claim for
`
`attorneys’ fees, which the Court also later denied) IPC “committed fraud before the U.S. Patent
`
`and Trademark Office in obtaining its federal registration.” [Dkt. 295, p. 12, Klein Decl., Exh.
`
`4]
`
`After the first phase of trial, JIPC further claimed that it “will establish” in Phase Two that
`
`“the only reason [IPC’s] registration issued in October 2001 is because Richard Barsness submitted
`
`a fraudulent statement of use alleging that [IPC was] already using [its] mark in commerce, which
`
`
`
`3
`
`

`
`conduct presents an independent basis for cancellation.” [Dkt. 407, p. 23, Clapp. Decl., Exh. 1 ]
`
`Just before the second phase of trial, JIPC again asserted to the Court that “JIPC’s pleadings
`
`contain allegations sufficient to state a claim for fraud on the USPTO.” [Dkt. 468, p. 9, Clapp
`
`Decl., Exh. 4] In the same filing, JIPC not only repeated the allegations of fraud made before the
`
`TTAB, but also asserted that JIPC’s operative pleading before the Court, JIPC’s “First Amended
`
`Complaint set[s] out detailed and specific allegations . . . that Barsness committed fraud on the
`
`USPTO.” [Id. p. 10]
`
`Despite repeatedly asserting fraud before the Court, and despite having a full and fair
`
`opportunity to litigate the issue of fraud in Court,2 JIPC failed to establish that IPC procured its
`
`registration by fraud. Again, the Court held that JIPC “has not established a valid ground for
`
`cancellation.” That final determination necessarily resolves the allegations of “fraud” that JIPC
`
`made to the Court. Consequently, JIPC cannot have a second chance to litigate the same fraud
`
`allegations before the TTAB.
`
`
`
`IV. All of the Marks Were at Issue Before the Court.
`
`Contrary to JIPC’s assertion, the jury and the Court considered not only the standard
`
`character (i.e. word) marks but also the stylized/design marks that are at issue before the Board in
`
`these proceedings. All such marks were at issue in the Court proceedings. Indeed, in IPC’s
`
`Counterclaim filed against JIPC, IPC included a summary of the marks at issue:
`
`
`
`
`2 JIPC may claim that it did not have a full and fair opportunity to litigate its claim of fraud because
`the Court precluded JIPC from introducing evidence of Barsness’ intent as proof of likelihood of confusion
`during the first phase of the trial. [Dkt. 261, p. _, Klein Decl., Exh. 7] In that ruling, the Court considered all
`evidence JIPC proposed to introduce. Of course, JIPC did not appeal that ruling. Further, nothing precluded
`JIPC from presenting evidence of Barsness’ intent or JIPC’s allegations of fraud in the second phase of trial,
`and as noted above, JIPC repeatedly did assert fraud before the Court. The fact that JIPC failed to establish
`fraud before the Court does not mean that JIPC is entitled to a second bite at the apple with the Board.
`
`
`
`4
`
`

`
`The “IPC Marks”
`
`The “John’s Marks”
`
`Reg. No. 2,500,872
`
`Ser. No. 78/575,077
`
`
`
`
`
`Reg. Nos. 3,061,612,
`3,099,682
`
`
`
`JOHN’S
`INCREDIBLE
`PIZZA CO.
`
`(words only)
`
`Reg. Nos. 3,061,612,
`3,099,682
`
`Exemplary Uses of the IPC Marks in
`Commerce
`
`Example Uses of the John’s Marks in Commerce
`
`
`
`
`
`Signage used at
`Incredible Pizza
`Company
`in Euless, Texas
`
` John’s Victorville location John’s Bakersfield location
`
`
`
` John’s Stockton location John’s Gift Card
`
`
`
`Incredible Pizza
`Company
`Sponsorship of
`NASCAR team:
`America’s
`Incredible Pizza
`Company Racing
`Chevrolet, No. 11,
`CJM Racing
`
`The record before the Court is replete with examples of various other uses of the parties’ marks,
`
`including both the words alone, or with distinctive stylization, designs, colors, etc. For example,
`
`the JIPC Marks were admitted into evidence as Trial Exhibits 1, 2, 3, 4, 5, 6, 7, 13, 14, 15, 16, 17,
`
`18, 19, 20, 21, 22, 25, 27, 30, 31, 35, 37, 43, 44, 45, 46, 68, 272, 292, and 457. [Clapp Decl., ¶4]
`
`The IPC Marks were admitted into evidence as part of Trial Exhibits 40, 53, 92,162, 163, 164, 240,
`
`244, 246, 247, 292, and 346. [Clapp Decl., ¶5] These exhibits included numerous examples of the
`
`use of both parties’ marks in commerce. Photographs, videos, and tangible items bearing the
`
`parties’ marks were presented to the jury at trial. Trial Exhibit 292 [Clapp Decl., Exh. 5; Klein
`
`Decl., Exh. 13] showed both parties’ stylized marks:
`
`
`
`
`
`5
`
`

`
`
`
`
`
`During Closing Argument at the first phase of trial, counsel for IPC compared the IPC mark to the
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`JIPC mark using Exhibit 292. [Trial Transcript, March 25, 2010 at 90:12 to 91:9, Clapp Decl., Exh.
`
`6].
`
`Significantly, the Court proceedings also conclusively determined that JIPC has no rights
`
`in the phrase INCREDIBLE PIZZA CO. (or COMPANY), which is the common element
`
`between the parties’ respective marks. As JIPC concedes, the Court granted summary judgment
`
`and later final judgment in favor of IPC on its claim that JIPC has no rights in the purported
`
`mark INCREDIBLE PIZZA CO. [Dkt. 188, p. 33-35, Klein Decl., Exh. 5] Further, when asked
`
`about JIPC’s claimed rights during his testimony at trial, JIPC’s principal, John Parlet, conceded
`
`that JIPC does not own the phrase INCREDIBLE PIZZA CO.:
`
`Q:
`
`A:
`
`Do you own the word “incredible”?
`
`I do not.
`
`Q:
`
`Do you own the phrase incredible pizza?
`
`A:
`
`Q:
`
`A:
`
`Q:
`
`A:
`
`I do not.
`
`Do you own the phrase Incredible Pizza Co.?
`
`I do not.
`
`That’s what name my client operates its business under, isn’t it?
`
`I believe it is.
`
`[Trial Transcript, March 17, 2010 at 59:22 to 60:5, Clapp Decl., Exh. 7] The Court’s entry of
`
`judgment against JIPC and JIPC’s concession are consistent with the denial of JIPC’s claim for
`
`cancellation of IPC’s federal registration incorporating INCREDIBLE PIZZA COMPANY. In light
`
`
`
`6
`
`

`
`of the Court’s decisions, JIPC can no longer claim exclusive rights in the phrase INCREDIBLE
`
`PIZZA CO. (or Company).
`
`
`
`V.
`
`The Jury’s and the Court’s Findings on Likelihood of Confusion
`
`JIPC also misconstrues the jury’s findings versus the Court’s ultimate determinations
`
`regarding likelihood of confusion. In response to IPC’s laches defense, JIPC admitted there was
`
`no likelihood of confusion until at least 2008 when IPC (1) began offering franchises in and
`
`around California and (2) sponsored a team on the NASCAR Nationwide Series with races
`
`broadcast into California. As a result, the Court granted IPC partial summary judgment and
`
`precluded JIPC from obtaining any injunctive relief against IPC in states where IPC was
`
`operating at the time. [Dkt. 188, p. 27., Klein Decl., Exh. 5] As outlined below, JIPC’s position
`
`on a likelihood of confusion also led the Court to conclude later that JIPC could not establish a
`
`valid basis for cancellation of IPC’s federal registration. [Dkt. 477, p. 8, Klein Decl., Exh. 12]
`
`JIPC did not appeal either of those rulings.
`
`At the conclusion of the first phase of trial, the jury did find that “IPC’s use of its marks
`
`caused a likelihood of confusion among ordinary purchasers at to the source, sponsorship, or
`
`affiliation of the parties’ goods and services.” However, as JIPC admits in its brief [p. 20], the
`
`jury’s finding was based solely on the factual issues presented at the first phase of trial—namely,
`
`the offering of franchises in and around California and broadcasts of NASCAR events into
`
`California. JIPC itself asserts that the jury’s finding of likelihood of confusion is not binding
`
`upon the Board. [JIPC Brief, p. 21-23] Neither party disputes that the jury was not asked to
`
`decide (1) the validity of IPC’s registration; (2) whether IPC’s use of its registered mark in
`
`connection with the services that it covers (restaurant services) is likely to cause confusion
`
`generally; or (3) whether IPC’s registration was procured through fraud. However, JIPC fails to
`
`reveal that, in the second phase: JIPC raised each of these claims; that JIPC had a full and fair
`
`opportunity to present arguments and evidence on those claims; and that the Court considered
`
`those claims and found no valid grounds for cancelling IPC’s federal registration.
`
`
`
`7
`
`

`
`The second phase of trial presented broader and different issues with respect to the alleged
`
`likelihood of confusion caused by IPC’s registered mark than in the first phase of trial. JIPC’s
`
`Proposed Findings of Fact and Conclusions of law submitted prior to the second phrase of trial
`
`made it clear JIPC was seeking cancellation of IPC’s registration on the basis that IPC’s registered
`
`mark was “likely . . . to cause confusion, or to cause mistake, or to deceive” in violation of Section
`
`2(d) of the Lanham Act. [Dkt. 461-1, ¶ 65, Clapp Decl., Exh. 3] JIPC also submitted to the Court
`
`that, with respect to cancellation, geographic separation was irrelevant, and “the registered mark
`
`must be judged against challenging marks as if the registered mark was being used everywhere in
`
`the nation.” [Id. ¶ 66.] JIPC further claimed that “the jury concluded that there is a likelihood of
`
`confusion between the JIPC Marks and the IPC Marks, which includes [IPC’s registered mark],”
`
`and that such finding required the Court to cancel IPC’s registration. [Id. ¶ 68]
`
`On the other hand, IPC’s Proposed Findings of Fact and Conclusions of Law made it clear
`
`that “IPC’s ownership of a federal trademark registration creates a statutory presumption that the
`
`IPC Mark is valid, that IPC owns the IPC Mark, and that IPC is entitled to use the IPC Mark
`
`nationwide.” [Dkt. 462-1, ¶ 22, Clapp Decl., Exh. 8] IPC also indicated that “[JIPC’s] concession
`
`that it had no claim for infringement until 2008 bars [JIPC] from seeking to cancel IPC’s federal
`
`registration, which issued in 2001.” [Id. ¶ 22] IPC relied on and cited Tillamook Country Smoker,
`
`Inc. v. Tillamook County Creamery Ass’n, 465 F.3d 1102 (9th Cir. 2006), which held that a senior
`
`user’s admission, in response to a laches defense, that the senior user had no actionable claim for
`
`infringement until the parties were in actual competition within the same channels of trade was a
`
`concession that there was no likelihood of confusion, which precluded cancellation of the junior
`
`user’s registration. [Id.] The Ninth Circuit in Tillamook commented that the senior user’s
`
`concession “was aimed at advancing [the senior user’s] position on laches, but at the same time, it
`
`cut the heart out of [the senior user’s] request to cancel [the junior user’s] registration.” Tillamook,
`
`465 F.3d at 1113. In this case, a very similar concession by JIPC cut the heart of out JIPC’s claim
`
`for cancellation.
`
`
`
`8
`
`

`
` In IPC’s Proposed Findings of Fact and Conclusions of Law, IPC also asserted that, even
`
`if there were a likelihood of confusion, IPC was the first to obtain its registration and, as such, IPC
`
`would have nationwide rights to use its mark, subject only to JIPC’s prior common law rights in
`
`those areas where Plaintiff was using its mark at the time IPC’s federal registration issued. [Id.]
`
`IPC cited various cases in support of that position, including Enterprise Rent-A-Car Co. v.
`
`Advantage Rent-A-Car, Inc., 330 F.3d 1333, 1343 (Fed. Cir. 2003) (“[G]enerally where the junior
`
`user has previously obtained federal registration, the policy of rewarding registration requires
`
`granting the prior registrant nationwide registration, subject only to those areas where the senior
`
`user can prove prior use.”); In re Beatrice Foods Co., 429 F.2d 466 (CCPA 1970) (“[W]here the
`
`prior user does not apply for a registration before registration is granted to another, there may be
`
`valid grounds, based on a policy of rewarding those who first seek federal registration, and a
`
`consideration of the rights created by the existing registration, for limiting [the senior user / junior
`
`registrant’s] registration to the area of actual use and permitting the prior registrant to retain the
`
`nationwide protection of the act restricted only by the territory of the prior user.”).
`
`Ultimately, the Court rejected JIPC’s position and accepted IPC’s position. Adopting the
`
`line of reasoning from the Tillamook decision, the Court reasoned that “[JIPC] conceded that it had
`
`no claim for infringement until 2008, while [IPC’s] federal registration was issued in 2001.”
`
`[Dkt. 477, p. 8, Klein Decl., Exh. 12] In other words, just as in Tillamook, JIPC essentially
`
`admitted that there was no likelihood of confusion that would require cancellation of IPC’s
`
`registration. Adopting the rationale from the Enterprise/Beatrice line of cases, the Court also
`
`noted that “the jury’s verdict only reflects a likelihood of confusion in certain states.” [Id. ] In
`
`essence, because IPC was the senior registrant, even if there was a likelihood of confusion in
`
`certain states with respect to certain activities, JIPC was not entitled to cancellation of IPC’s
`
`nationwide registration. As a result, after considering all of the evidence and findings from both
`
`phases of trial, the Court expressly denied JIPC’s request for cancellation and found that JIPC “has
`
`not established a valid ground for cancellation”—whether likelihood of confusion, fraud, or any
`
`other ground on which JIPC had the opportunity to present. [Dkt. 477, p. 8, Klein Decl., Exh. 12]
`
`
`
`9
`
`

`
`
`
`VI.
`
`The Court’s Final Decision Is Binding Upon the Board
`
`In considering a district court’s final judgment, the TTAB “cannot vary it, or examine it for
`
`any other purpose than execution; or give any other or further relief; or review it, even for apparent
`
`error.” Board of Trustees of the University of Alabama v. Houndstooth Mafia Enterprises. LLC et
`
`al., 2016 U.S. Dist. LEXIS 21645, 93 Fed. R. Serv. 3d (Callaghan) 1398 (N.D. Ala. 2016), quoting
`
`Litman v. Mass. Mut. Life Ins. Co., 825 F.2d 1506, 1510-11 (11th Cir. 1987). The district court in
`
`the Houndstooth case further noted as follows:
`
`Administrative agencies are not free to ignore a court’s mandates. This
`“mandate rule” is sometimes described as part of the inaptly-named “law of the
`case doctrine.” . . . [T]he mandate rule requires the TTAB to follow, rather than
`reexamine (or worse, ignore), this court’s final judgment.
`
`Id. (emphasis added; citations and internal punctuation omitted).
`
`Just as in Houndstooth, in this case, the Board is not given “the authority to ignore [the]
`
`Court’s final judgment.” Id. As the Board previously indicated in this proceeding, “the decision
`
`of a federal district court is binding upon the Board.” November 24, 2008 Order, 63 TTABVUE,
`
`Parent Opposition, (citing Goya Foods Inc. v. Tropicana Prods. Inc., 846 F.2d 848, 6 USPQ2d
`
`1950 (2d Cir. 1988); TBMP § 510.02(a)); see also 6 MCCARTHY ON TRADEMARKS AND UNFAIR
`
`COMPETITION § 32:94 (“Clearly then, a court’s decision regarding federal registration is binding
`
`upon the Commissioner of Patents and the administrative tribunals of the Patent and Trademark
`
`Office (PTO).”). Thus, the Court’s holding that JIPC is not entitled to cancellation of IPC’s
`
`federal registration is dispositive of that issue and binding on the Board.
`
`Even if JIPC believed the Court’s final decision was in error, JIPC’s recourse was in San
`
`Francisco, with an appeal to the Ninth Circuit Court of Appeals, not in Alexandria, with an attempt
`
`to re-litigate the same claims before this Board. JIPC already had a full and fair opportunity to
`
`litigate its allegations of likelihood of confusion and fraud in its attempt to cancel IPC’s
`
`registration before the Court. That JIPC made a strategic decision (or even a mistake) not to
`
`present all of its purported evidence or arguments in favor of its claims, and not to appeal to the
`
`Ninth Circuit, or that JIPC disagrees with the Court’s reasoning or its ultimate determinations, does
`
`
`
`10
`
`

`
`not mean JIPC has the right to have these claims now re-heard by the Board. The district court’s
`
`comment in Houndstooth also applies here: “Actions have consequences. So, too, does inaction.”
`
`Id.
`
`
`
`VII.
`
`JIPC’s Claims Are Barred by the Doctrine of Res Judicata.
`
`Even if the Board could review the Court’s final judgment and its findings of fact and
`
`conclusions of law in connection therewith (the Board has no authority to do so), res judicata bars
`
`JIPC from re-litigating its claims of likelihood of confusion and fraud. JIPC’s brief [p. 12]
`
`correctly cites the elements of claim preclusion and issue preclusion from Jet, Inc. v. Sewage
`
`Aeration Sys., 223 F.3d 1360, 1362-63 (Fed. Cir. 2000), but JIPC ignores recent Supreme Court
`
`precedent on preclusion in the context of related TTAB and district court proceedings.
`
`In B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 113 U.S.P.Q.2d 2045
`
`(2015), the Supreme Court commented that it “has long recognized that the determination of a
`
`question directly involved in one action is conclusive as to that question in a second suit.” Id.
`
`Quoting the RESTATEMENT (SECOND) OF JUDGMENTS § 27 (1980), the Supreme Court reaffirmed
`
`that “when an issue of fact or law is actually litigated and determined by a valid and final judgment,
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`and the determination is essential to the judgment, the determination is conclusive in a subsequent
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`action between the parties, whether on the same or a different claim.” Id. “[I]f a party to a court
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`proceeding does not challenge an adverse decision, that decision can have preclusive effect in
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`other cases, even if it would have been reviewed de novo.” Id. (emphasis added). The Supreme
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`Court ultimately held that minor differences between the governing likelihood-of-confusion factors
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`or the actual facts considered does not foreclose the application of res judicata. Id.
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`In this case, JIPC did nothing to challenge the Court’s final determination that JIPC failed
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`to establish any valid ground for cancelling IPC’s registration (whether likelihood of confusion,
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`fraud, or otherwise). Therefore, the Court’s decision has preclusive effect in these proceedings.
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`There is no question the same parties are involved. The Court’s determinations were final on the
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`merits, regardless of whether the Court considered every possible issue that JIPC raised or could
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`11
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`have raised. The claims before the Court arose out of the same set of transactional facts, as
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`shown by the fact that JIPC itself presented at trial evidence of the parties’ various respective
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`uses of their marks in connection with a variety of different services (e.g. restaurant,
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`entertainment, franchising, etc.) in different geographic locations (e.g. California, Texas). For
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`example, JIPC presented photographs and videos of its stores, and its principal, John Parlett,
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`testified in detail regarding the business of JIPC. [Trial Transcript, March 16, 2010 at 163:6 to
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`192:25; Trial Transcript, March 17, 2010 at 9:12 to 36:5, Clapp Decl., Exhs. 7 and 9] Mr. Parlett
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`also testified in detail regarding IPC’s Springfield, MO location, and JIPC presented a video
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`depicting IPC’s business. [Trial Transcript, March 17, 2010 at 37:14 to 40:5, Clapp Decl., Exh. 7]
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`JIPC’s counsel also called IPC’s CFO, George Ward, as a witness and questioned him
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`thoroughly about IPC’s activities. [Trial Transcript, March 18, 2010 at 67:01 to 110:25 and 204:1
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`to 208:7, Clapp Decl., Exh. 10] JIPC also presented the video deposition of Evangeline Franco, a
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`customer who had visited both a JIPC location in California and an IPC location in Texas. [Klein
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`Decl. Exh. 13]. JIPC cannot legitimately deny that it presented, or at least had a full and fair
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`opportunity to present, arguments and evidence to the Court on each of JIPC’s claims asserted
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`before the TTAB—including likelihood of confusion and fraud.
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`JIPC cannot challenge now the Court’s final judgment based on the assertion JIPC did
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`not present all of its available arguments or evidence to the Court (whether because of mistake or
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`strategic decision). See, e.g., Akhenaten v. Najee, LLC, 544 F.Supp.2d 320, 330 (S.D.N.Y. 2008)
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`(Plaintiff’s alleged use and registration of FUBU and similar marks could have been raised in the
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`prior action, and therefore, the subsequent action is barred by res judicata). Further, as the
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`TTAB has recently recognized, res judicata still applies “even though the plaintiff is prepared in
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`the second action: (1) to present evidence or grounds or theories of the case not presented in the
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`first action, or (2) to seek remedies or forms of relief not demanded in the first action.” The
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`Urock Network, LLC v. Umberto Sulpasso, 115 USPQ2d 1409 (TTAB 2015). Thus, JIPC simply
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`cannot use the fact that it failed to present certain arguments or evidence before the Court as a
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`basis for overcoming the effects of res judicata.
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`12
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`Thus, res judicata applies, and JIPC’s claims of likelihood of confusion and fraud are
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`barred and should be dismissed.
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`VIII. Conclusion
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`JIPC’s attempt to re-litigate claims the Court decided five years ago is inappropriate and
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`lacks any credible basis. While neither party may agree with or like the results from the Court,
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`neither side appealed those results and, therefore, both sides are bound by those results. The Court
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`conclusively determined JIPC failed to establish any valid ground for cancellation of IPC’s federal
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`registration (whether likelihood of confusion, fraud, or otherwise), and that determination is
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`binding on the Board. Accordingly, IPC respectfully requests that the Board dismiss these
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`proceedings with prejudice.
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`Respectfully submitted this 19th day of September, 2016,
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`By: /s/ Mary M. Clapp
`Mary M. Clapp
`Clapp Business Law, LLC
`mary@clappbusinesslaw.com
`2518 S. Campbell Ave.
`Springfield, MO 65807
`(417) 851-5386
`(417) 890-1635 (facsimile)
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`Of Counsel:
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`J. Paul Williamson, Esq.
`Vold & Williamson PLLC
`8251 Greensboro Drive, Suite 340
`McLean, VA 22102
`Ph. 571-395-4633
`Em. pwilliamson@vwiplaw.com
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`
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`13
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`CER'|‘lI'-‘ICATF. OF MAILING PURSUANT TO 37 C.F.R. §l.l0
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`Registration No.:
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`3.500.872
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`Application No;
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`78:'S7S0?7
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`RegistI'2111tfApplicanl:
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`[neredible Pizza Co., inc.
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`Type ofFilit1g,:
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`lPC's Trial Briet'(3? C.F.R. §3.l2()(e})
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`I hereby certify that this Supplententztl Brief‘ on [;'iTeet of Final Determinations in Civil Actions
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`and Declaration of Mary Clapp with Exhibits is being, deposited with the Federal Express 'l‘rae};ing No.
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`j_7_'_7£Q_fifi_Z._b'_>_.9_&-_;__§5' under 37 C.l".R. § 1.10. addressed to:
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`ilte'|'i‘:iden1:1I'k :\S.\iEwl'.1!iL‘i.‘ (‘eltter
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`:\-i;1di:»'o:t
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`l".!.1_~:t. (‘oI1v.‘t‘-Lltzxe I::\-‘cl Room (.55
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`(ul){J1)u|:nt_\'Sti‘eci
`.-'\le_\:1ndri;1.
`\-’.-\ 22314
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`I hereby i'urther certify that this Supplemental Bricfon liffect of Final Deterntinzttions in Civil
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`Actions and Declaration ot‘ Mary Clapp with Exhibits is being deposited with Federal Express Tracking
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`N0- _7_'ZIZ.1_-3_'.53>F[‘_?'_L-.5~‘_‘sl
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`.
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`_
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`addressed to:
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`Steven E. Klein. Esq.
`Stoel Rives LLP
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`760 SW Ninth Ave, Suite 3000
`Portiand.0R 97205
`Counsel For JIPCM. Inc.
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`By: ;'s.fMz1t;yC|z1pQ_______ _
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`_
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`_
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`Date: §_ep_tg;_t_13_ber I9. 20l6____
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`I4
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`JIPC Management, Inc.,
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`Opposition No. 91170452 (Parent)
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`Opposer,
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`Application No. 78/575077
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`v.
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`Incredible Pizza Co., Inc.,
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`Applicant.
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`For the mark AMERICA’S INCREDIBLE
`PIZZA COMPANY GREAT FOOD, FUN,
`FAMILY & FRIENDS and Design
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`Published on December 20, 2005
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`JIPC Management, Inc.,
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`Cancellation No. 92043316
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`Petitioner,
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`Registration No. 2,500,872
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`Incredible Pizza Co., Inc.,
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`Respondent.
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`For the mark INCREDIBLE PIZZA COMPANY
`GREAT FOOD, FUN, FAMILY & FRIENDS and
`Design
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`Registered on October 23, 2001
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`
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`v.
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`DECLARATION OF MARY CLAPP
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`I Mary Clapp, declare and say:
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`1.
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`I
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`am
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`an
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`attorney with Clapp Business Law, LLC,
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`counsel
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`to
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`Applicant/Respondent Incredible Pizza Co., Inc. (“IPC”). I make this declaration on my
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`personal knowledge.
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`2.
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`The trial before the United States District Court, Central District of California in
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`the civil action styled JIPC Management, Inc. v. Incredible Pizza Co., Inc., Case No. CV08-
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`04310 (the “Civil Action”) was bifurcated into two phases: a first phase jury trial and a second
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`phase bench trial.
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`3.
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`During both the first phase jury trial and the second phase bench trial in the Civil
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`Action, I was in-house General Counsel to IPC and was one of the attorneys representing IPC in
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`the Civil Action (though did not appear in the Civil Action). I attended both phases of trial in the
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`Civil Action and am familiar with the Civil Action and the documents and exhibits therein.
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`1
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`4.
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`Trial Exhibits 1, 2, 3, 4, 5, 6, 7, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 25, 27, 30,
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`31, 35, 37, 43, 44, 45, 46, 68, 272, 292, and 457 were admitted in the phase one jury trial of
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`the Civil Action. These exhibits are among the exhibits that depict Plaintiff JIPC Management
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`Inc.’s use of its trademarks and logos in commerce.
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`5.
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`Trial Exhibits 40, 53, 92,162, 163, 164, 240, 244, 246, 247, 292, and 346 were
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`admitted in the phase one jury trial of the Civil Action. These exhibits are among the exhibits
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`that depict IPC’s use of its trademarks and logos in commerce.
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`6.
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`Attached hereto as Exhibit 1 is a true and correct copy of JIPC Management,
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`Inc.’s Reply to IPC’s Brief re Issues to be Decided at th