Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA388692
`ESTTA Tracking number:
`01/17/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91196926
`Defendant
`Dorfman-Pacific Co.
`MICHAEL JAMES CRONEN
`ZIMMERMAN & CRONEN LLP
`1330 BROADWAY, SUITE 710
`OAKLAND, CA 94612-2506
`UNITED STATES
`mcronen@zimpatent.com
`Opposition/Response to Motion
`Michael James Cronen, Esq.
`mcronen@zimpatent.com
`/s/Michael James Cronen, Esq.
`01/17/2011
`DORFMANMemoOppnMotSumJudg.pdf ( 25 pages )(172938 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.:91196926
`
`Application No.: 77/965,616
`
`Mark: CAPPELLI STRAWORLD
`
`) ) ) ) ) ) ) ) )
`
`GMA ACCESSORIES, INC.,
`
`Opposer,
`
`v.
`
`DORFMAN-PACIFIC CO.,
`
`Applicant.
`
`DORFMAN-PACIFIC’S MEMORANDUM IN OPPOSITION
`TO MOTION FOR SUMMARY JUDGMENT
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`I. DESCRIPTION OF THE RECORD . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
`
`II. STATEMENT OF THE ISSUES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
`
`III. RECITATION OF FACTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
`
`A.
`
`B.
`
`Dorfman-Pacific Company’s CAPPELLI STRAWORLD, INC.®
`Trademark Has Been In Continuous Use Since 1957 . . . . . . . . . . . . . . . . . . . . . . 1
`
`Dorfman-Pacific Owns Incontestible United States Trademark
`Registration No. 2,326,188 For The Mark CAPPELLI STRAWORLD,
`INC.® . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
`
`C.
`
`Dorfman-Pacific Owns The Registered Domain Name And URL
`<WWW.CAPPELLISTRAWORLD.COM> . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
`
`D.
`
`E.
`
`Dorfman-Pacific Owns United States Trademark Application
`No. 77/965,616 For The Mark CAPPELLI STRAWORLD . . . . . . . . . . . . . . . . . 4
`
`Cancellation No. 92044972 Involved Different Parties, Different
`Marks, Different Claims, Different Transactional Facts, And Was
`Never Litigated On The Merits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
`
`IV.
`
`ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
`
`A. Legal Standard For The Grant Of Summary Judgment . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`B.
`
`C.
`
`The Board Should Strike And Disregard The Declaration Of
`Conor F. Donnelly, Esq. And Deny GMA’s Motion For Summary
`Judgement As Unsupported By Admissible Evidence . . . . . . . . . . . . . . . . . . . . . 8
`
`GMA’s Motion For Summary Judgment Should Be Denied Because Genuine
`Issues Of Material Fact Preclude A Finding Of Res Judicata . . . . . . . . . . . . . . . 10
`
`1.
`
`There Is No Issue Preclusion Resulting From Cancellation
`No. 92044972 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`a.
`
`The Issues In Prior Cancellation No. 92044972 Were
`
`i
`
`

`
`Different Than The Issues In The Present Opposition
`Proceeding . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
`
`b.
`
`No Issues Were Actually Litigated In Prior Cancellation
`No. 92044972 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
`
`c.
`
`d.
`
`The Issues Relating To GMA’s Alleged Federal Trademark
`Registrations Were Non Involved or Necessary To The
`Judgment In The Prior Proceeding . . . . . . . . . . . . . . . . . . . . . . . . 15
`
`Dorfman-Pacific Was Not A Party To GMA’s Alleged
`Cancellation Proceeding And Had No Opportunity To
`Litigate Any Issue In The Prior Proceeding . . . . . . . . . . . . . . . . . 15
`
`2.
`
`The Is No Claim Preclusion Resulting From Cancellation
`No. 92044972 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
`
`a.
`
`b.
`
`c.
`
`GMA Has Not Established An Identity Of The Parties
`Or Their Privies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
`
`There Was No Final Judgment On The Merits Of
`GMA’s Prior Claim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
`
`The Claims In The Prior And Present Proceedings Are Based On
`An Entirely Different Set Of Transactional Facts . . . . . . . . . . . . 17
`
`IV. CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Brown v. Felsen, 442 U.S. 127, 132 (1979) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
`
`Copeland’s Enterprises, Ltd. v. Capital Speadkers Clup of Washington
`DC, Inc., 41 USPQ2d 1030, 1034 (TTAB 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Foster v. Hallco Mfg. Co., 947 F.2d 469, 480 (Fed. Cir. 1991)
`
`. . . . . . . . . . . . . . . . . . . . . 16, 17
`
`Gasser Chair Co. Inc. v. Infanti Chair Mfg Co., 60 F.3d 770, 773,
`34 USPQ2d 1822, 1824 (Fed. Cir. 1995)
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
`
`Kearns v. Gen. Motors Corp., 94 F.3d 1553, 1557 (Fed. Cir. 1996) . . . . . . . . . . . . . . . . 14, 15, 17
`
`Lloyd’s Food Products, Inc. v. Eli’s Inc., 987 F.2d 766, 767,
`25 USPQ2d 2027 (Fed. Cir. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229,
`1234 (Fed. Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12, 16
`
`Migra v. Warren City Sch. Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984)
`
`. . . . . . . . . . . . . 10-11
`
`Montana v. United States, 440 U.S. 147, 153-55 (1979) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
`
`Old Tyme Foods, Inc. v. Roundy’s Inc., 961 F.2d 200, 202,
`22 USPQ2d 1542 (Fed. Cir. 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Opryland USA, Inc. v. The Great American Music Show, Inc., 970
`F.2d 847, 16 USPQ2d 1783 (Fed. Cir. 1990)
`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Parklane Hosiery Co. v. Shore, 439 U.S. 322, 330-32 (1979)
`
`. . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`Park ‘N Fly v. Dollar Park and Fly, Inc., 469 U.S. 189, 205 (1985) . . . . . . . . . . . . . . . . . . . . . . 8
`
`Russell v. Place, 94 U.S. (4 Otto) 606, 610 (1877) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
`
`iii
`
`

`
`Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 1370,
`81 USPQ2d 1748 (Fed. Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
`
`United States v. Munsingwear, Inc., 340 U.S. 36, 38 (1950)
`
`. . . . . . . . . . . . . . . . . . . . . . . . 12, 18
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F3d 1576, 39 USPQ2d
`1573, 1579 (Fed. Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
`
`STATUTES
`
`15 U.S.C. §1001 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
`
` 15 U.S.C. §1065 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
`
`15 U.S.C. §1115(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
`
`37 CFR §2.122 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
`
`Fed. R. Civ. P. Rule 56(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
`
`Fed. R. Civ. P. Rule 56(e) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
`
`Fed. R. Evid. Rule 602 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
`
`
`
`iv
`
`

`
`I. DESCRIPTION OF THE RECORD
`
`Opposer GMA Accessories (“GMA”) moved for summary judgment before
`
`any disclosures or discovery in the case. In view of the current suspension of these opposition
`
`proceedings, which resulted from GMA’s early motion for summary judgment, the record
`
`presently consists of the initial pleadings in the case, which include Opposer’s Notice of
`
`Opposition and Applicant’s Answer and Counterclaims (With Fee) and the submissions of the
`
`parties in connection with the present Motion For Summary Judgment.
`
`II. STATEMENT OF THE ISSUES
`
`Whether the Board should deny GMA’s Motion For Summary Judgment
`
`on res judicata grounds where GMA failed to provide admissible evidence establishing each
`
`element required for the application of res judicata, and where genuine issues of material fact
`
`exist concerning the application of issue preclusion and/or claim preclusion.
`
`III.
`
`RECITATION OF FACTS
`
`A.
`
`Dorfman-Pacific Company’s CAPPELLI STRAWORLD, INC.® Trademark
`Has Been In Continuous Use Since 1957
`
`Beginning in 1957, Cappelli Straworld, Inc. used the trademark CAPPELLI
`
`STRAWORLD, INC.® to identify its apparel products in the marketplace. A family-owned
`
`business, its current president, Bonnie Rubel, was a young child when the family first began
`
`using this trademark on its products. See, Declaration of Bonnie Rubel, ¶1, filed herewith and
`
`incorporated herein by this reference. For example, Exhibit A to Ms. Rubel’s Declaration is a
`
`family photograph showing Ms. Rubel as a child with her family, including a CAPPELLI
`
`STRAWORLD, INC.® handbag/tote bag shown in her grandmother’s hands.
`
`1
`
`

`
`Ms. Rubel joined the company after she completed her education and was
`
`later promoted to be its President. Rubel Dec., ¶6. Over the decades, the company has
`
`continuously used its CAPPELLI STRAWORLD, INC.® mark on tote bags and handbags made
`
`of straw and rayon, and women’s hats made of straw, felt, velvet and cotton. Id.
`
`Over this period, people in the trade, such as suppliers, customers, company
`
`representatives, as well as Ms. Rubel’s family, friends, and company employees have identified
`
`the company’s products using “CAPPELLI STRAWORLD, INC., CAPPELLI STRAWORLD or
`
`CAPPELLI.” Rubel Dec., ¶7.
`
`B.
`
`Dorfman-Pacific Owns Incontestible United States Trademark Registration
`No. 2,326,188 For The Mark CAPPELLI STRAWORLD, INC.®
`
`On February 25, 1999, Ms. Rubel’s company filed Application Serial No. 75/648,464 and
`
`United States Trademark Registration No. 2,326,188 (the “‘188 Registration”), on the Principal
`
`Register, issued for the mark CAPPELLI STRAWORLD, INC.® on March 7, 2000. See,
`
`Declaration of Michael Cronen, Exhibit A (‘188 Registration), filed herewith and incorporated
`
`herein by this reference.
`
`As set forth in the ‘188 Registration, the mark was first used at least as early as 1957, and
`
`it was first used in interstate commerce at least as early as 1972. Id. See also, Rubel Dec., ¶¶4-6.
`
`The recited goods of the ‘188 Registration are: “tote bags and handbags made of straw and
`
`rayon” in International Class 18; and “women’s hats made of straw, felt, velvet and cotton” in
`
`International Class 25. The ‘188 Registration also includes a “Disclaimer” of the word “INC”.
`
`Id.
`
`Trademark Office records reflect the following entry for the ‘188 Registration on June 14,
`
`2
`
`

`
`2005: “Section 8 (6-year) accepted & Section 15 acknowledged”. Cronen Dec., Exhibit B
`
`(Printout from TARR web server).
`
`Pursuant to Section 15 of the Lanham Act, 15 U.S.C. §1065, therefore, the ‘188
`
`Registration is presently “incontestable”. Under Section 33 of the Lanham Act, 15 U.S.C.
`
`§1115(b), the incontestable status of the ‘188 Registration “shall be conclusive evidence of the
`
`validity of the registered mark and of the registration of the mark, of the registrant’s ownership of
`
`the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in
`
`connection with the goods ... specified in the registration”. The ‘188 Registration also provides
`
`conclusive evidence that Dorfman’s CAPPELLI STRAWORLD, INC.® mark is a strong
`
`trademark. Park ‘N Fly v. Dollar Park and Fly, Inc., 469 U.S. 189, 205 (1985) (Infringement
`
`action involving incontestible registration “may not be defended on the grounds that the mark is
`
`merely descriptive.”).
`
`On June 19, 2009, Ms. Rubel’s company assigned United States Trademark
`
`“Registration No. 2,326, 188", including “all right, title, interest and goodwill in and to the
`
`registered trademark” CAPPELLI STRAWORLD, INC.®, to Applicant, Dorfman-Pacific
`
`Company. Rubel Dec., Exhibit B.
`
`Dorfman-Pacific thereafter renewed the ‘188 Registration. Trademark Office records
`
`reflect the following entry for the ‘188 Registration on March 4, 2010: “Section 8 (10-year)
`
`accepted/ Section 9 granted”. Cronen Dec., Exhibit B.
`
`C.
`
`Dorfman-Pacific Owns The Registered Domain Name And URL
`<WWW.CAPPELLISTRAWORLD.COM>
`
`On June 19, 2009, Cappelli Straworld, Inc. also assigned its ownership of the “registered
`
`3
`
`

`
`... domain name or URL, www.cappellistraworld.com” registered “with Network Solutions,
`
`LLC” to Dorfman-Pacific. Rubel Dec., Exhibit C and ¶10. The assigned domain name
`
`registration of , www.cappellistraworld.com was “created on 14-Mar-2000". Id. Dorfman-
`
`Pacific now maintains this domain name and registration, which is currently effective until
`
`March 14, 2018.
`
`D.
`
`Dorfman-Pacific Owns United States Trademark Application No. 77/965,616
`For The Mark CAPPELLI STRAWORLD
`
`On March 23, 2010, after the CAPPELLI STRAWORLD, INC.® mark and ‘188
`
`Registration were assigned to it, Dorfman-Pacific filed United States Trademark Application No.
`
`77/965,616 to register its mark CAPPELLI STRAWORLD (the “‘616 Application”). The ‘616
`
`Application is the subject of the present Opposition proceeding.. See, Cronen, Exhibit C
`
`(Printout from TARR web server).
`
`Dorfman-Pacific’s ‘616 Application specifically refers to its ‘188 Registration as a “Prior
`
`Registration Number”. Id. The recited goods of the ‘616 Application are: “Handbags; Tote
`
`bags” in International Class 18; and “Hats” in International Class 25.
`
`The first use date of the ‘616 Application is September 23, 2009. Id. This is further
`
`evidence that Dorfman-Pacific’s use of its CAPPELLI STRAWORLD trademark was after it
`
`was assigned the CAPPELLI STRAWORLD, INC.® trademark and ‘188 Registration on March
`
`23, 2010.
`
`Dorfman-Pacific’s ‘616 Application includes the following translation: “The English
`
`translation of ‘CAPPELLI’ in the mark is ‘HAT’.” Cronen Dec., Exhibit C. The Trademark
`
`Examiner also required a “Disclaimer” of the word “CAPPELLI”, as follows:
`
`4
`
`

`
` “Applicant must disclaim the descriptive wording ‘CAPPELLI’
`apart from the mark as shown because it merely describes the fact
`that Applicant sells hats. See, 15 U.S.C. §1056(a); TMEP §§1213,
`1213.03(a). Indeed, the Italian word ‘cappelli’ means hat.’ See
`attachments.”
`Cronen Dec., Exhibit D (Office Action of 6/23/2010).
`
`Thereafter, Dorfman-Pacific amended its ‘616 Application to disclaim the word
`
`“CAPPELLI” in accordance with the Examining Attorney’s requests. On September 21, 2010,
`
`the ‘616 Application was published for opposition. On October 14, 2010, GMA instituted the
`
`present opposition proceedings.
`
`E.
`
`Cancellation No. 92044972 Involved Different Parties, Different Marks,
`Different Claims, Different Transactional Facts, And Was
`Never Litigated On The Merits
`
`As more fully set forth below, the prior cancellation proceeding identified in GMA’s
`
`moving papers has nothing to do with transactional facts or substantive merits underlying
`
`Dorfman-Pacific’s present application to register its CAPPELLI STRAWORLD mark.
`
`On April 23, 2002, Cappelli Straworld, Inc. filed an application to register the mark
`
`CAPPELLI on the Principal Register. Registration on the Principal Register was refused.
`
`However, on December 31, 2002, Registration No. 2,670,642 was issued for this name on the
`
`Supplemental Register. Rubel Dec., ¶12
`
`Thereafter, GMA alleged common law rights to the words CAPELLI and CAPELLI
`
`NEW YORK, sometimes appearing as three separate words, and sometimes appearing as a single
`
`word, i.e. CAPELLINEWYORK, and filed its Petition for Cancellation of Trademark
`
`Registration No. 2,670,642, against Cappelli Straworld, Inc., in Cancellation No. 92044972.
`
`The Petition for Cancellation was filed on September 29, 2005. It did not allege any federal
`
`5
`
`

`
`trademark registrations, but only common law rights.
`
`Cappelli Straworld, Inc. answered the Petition For Cancellation, pointing out that GMA
`
`used only CAPELLI NEW YORK/CAPELLINEWYORK and did not use “the term
`
`‘CAPPELLI’ standing alone” (Affirmative Defenses, ¶1). See also, Supplemental Declaration of
`
`Michael James Cronen, Exhibit C (Archival printout or GMA’s website, dated December 15,
`
`2005, displaying the name CAPELLINEWYORK).
`
`Cappelli Straworld, Inc.’s President, Ms. Bonnie Rubel, thereafter made a business
`
`decision that the “legal expenses, executive time, and employee inconvenience associated with
`
`litigating th[e] proceeding through to a judgment on the merits was not worth pursuing.” Rubel
`
`Dec., ¶14. There was no further defense of the registration and, eventually, judgment cancelling
`
`Supplemental Registration No. 2,670,642 was “granted as conceded”. Id.; Cronen, Exhibit E.
`
`GMA’s Petition for Cancellation and the conceded judgment were limited to GMA’s
`
`alleged common law rights. The prior proceeding did not involve any of the registrations alleged
`
`in GMA’s present Notice Of Opposition. These registrations (i.e. U.S. Trademark Registration
`
`Nos.: 3,241,182; 3,241,184; 3,248,875; 3,258,734; 3,273,451; and 3,322,312) had not issued and,
`
`in fact, GMA’s applications for these had not even been filed when GMA filed its Petition for
`
`Cancellation.
`
`IV.
`
`ARGUMENT
`
`GMA’s Motion For Summary Judgment should be denied. Under established principles
`
`of res judicata, there is no claim or issue preclusion under the circumstances of this case. This is
`
`because the prior proceeding alleged in GMA’s moving papers, Cancellation No. 92044972,
`
`6
`
`

`
`involved different parties, different trademarks, different transactional facts, different legal
`
`issues, and, further, the issues in that proceeding were never litigated on their merits.
`
`A. Legal Standard For The Grant Of Summary Judgment
`
`Under Fed. R. Civ. P. Rule 56(c), GMA “has the burden of demonstrating the absence of
`
`any genuine issue of material fact, and that it is entitled to a judgment as a matter of law.” See,
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). This is a higher burden than GMA’s burden
`
`of proof at trial. Gasser Chair Co. Inc. v. Infanti Chair Mfg Co., 60 F.3d 770, 773, 34 USPQ2d
`
`1822, 1824 (Fed. Cir. 1995) (In addition to establishing claim elements of cause of action by a
`
`preponderance of evidence, movant must also establish there is no genuine issue of material fact
`
`regarding those elements).
`
`In deciding a motion for summary judgment, the Board’s determination is limited to the
`
`issue of whether or not there are any genuine issues of material fact to be determined at trial.
`
`Opryland USA, Inc. v. The Great American Music Show, Inc., 970 F.2d 847, 16 USPQ2d 1783
`
`(Fed. Cir. 1990). A fact is material if it “may affect the decision, whereby the finding of that fact
`
`is relevant and necessary to the proceedings.” Opryland, 970 F.2d at 849-50.
`
`
`
`As the non-moving party, Dorfman-Pacific must be given the benefit of all reasonable
`
`doubt regarding the existence of genuine issues of material fact. The evidentiary record,
`
`therefore, and all inferences therefrom, must be viewed in a light most favorable to Dorfman-
`
`Pacific. See, Lloyd’s Food Products, Inc. v. Eli’s Inc., 987 F.2d 766, 767, 25 USPQ2d 2027
`
`(Fed. Cir. 1993); Opryland,970 F.2d at p.850; Old Tyme Foods, Inc. v. Roundy’s Inc., 961 F.2d
`
`200, 202, 22 USPQ2d 1542 (Fed. Cir. 1992); Copeland’s Enterprises, Ltd. v. Capital Speadkers
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`Clup of Washington DC, Inc., 41 USPQ2d 1030, 1034 (TTAB 1996).
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`7
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`In the present case, the evidentiary record submitted by Dorfman-Pacific includes,
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`without limitation, the registrations pleaded and made of record, other registrations, Trademark
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`Office records (TARR web server & TESS generated documents), references to printed
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`publications, such as English and Italian language dictionaries, printouts from the parties’ web
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`sites, and other materials available to the general public and in general circulation among
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`relevant members of the public. This is allowed on summary judgment without the filing of any
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`Notice of Reliance. 37 CFR §2.122.
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`In addition to the above, Dorfman-Pacific also submits, as part of its evidentiary showing,
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`two search reports, one regarding the large number of third-party users of CAPPELLI, and a
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`second report showing Dorfman-Pacific’s exclusive use of its STRAWORLD designation.
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`Supplemental Declaration of Michael Cronen, Exhibit A and Exhibit B, respectively, filed
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`herewith and incorporated herein by this reference. This is submitted to show: GMA’s alleged
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`mark is a “weak” mark entitled to the narrowest range of protection; Dorfman-Pacific’s
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`STRAWORLD designation is a “strong”, distinctive designation; and Dorfman-Pacific’s its
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`applied-for mark, CAPPELLI STRAWORLD, and its registered mark, CAPPELLI
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`STRAWORLD, INC. are distinctive and different from the marks of GMA’s prior cancellation
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`proceeding.
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`B.
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`The Board Should Strike And Disregard The Declaration Of Conor F.
`Donnelly, Esq. And Deny GMA’s Motion For Summary Judgement As
`Unsupported By Admissible Evidence
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`Fed. R. Civ. P. Rule 56(e), requires that any “[s]upporting ... affidavits shall be made on
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`personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show
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`affirmatively that the affiant is competent to testify to the matters stated therein.” The Federal
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`8
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`Rules of Evidence also require that “[a] witness may not testify to a matter unless evidence is
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`introduced sufficient to support a finding that the witness has personal knowledge of the matter.”
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`Fed. R. Evid. Rule 602.
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`In the present case, GMA submits the Declaration of its litigation counsel, Conor F.
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`Donnelly, Esq., as its sole affidavit in support of its Motion For Summary Judgment. However,
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`the Board should strike and disregard the portions of Mr. Donnelly’s Declaration that are beyond
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`his personal knowledge and that comprise mere legal argument and factual speculation.
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`Mr. Donnelly only recently appeared in this matter, having filed his Notice of Appearance
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`on December 7, 2010. It is apparent from Mr. Donnelly’s Declaration that he has no personal
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`knowledge about the matters set forth therein. For example, at paragraph 2 of his Declaration,
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`Mr. Donnelly states his testimony is “based on [his] review of the file maintained in this Firm’s
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`office”. Mr. Donnelly’s testimony regarding the activities of others in 2005 and 2006, is clearly
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`made without his personal knowledge about any of those activities.
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`Mr. Donnelly also testifies without personal knowledge or evidentiary support that
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`“Applicant as purchaser of the defendant in the prior action is in privity with it” for purposes of
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`the prior cancellation of the Supplemental Registration of CAPPELLI in Cancellation No.
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`92044972. Donnelly Dec., ¶10; see also Donnelly Dec.¶8 (“Applicant purchased Straworld”) .
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`Mr. Donnelly provides no documentary or other evidence to support his conclusions regarding
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`purchase terms, privity, what marks are allegedly involved, and other transactional facts he
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`testifies about in his Declaration.
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`In fact, Mr. Donnelly’s testimony is contradicted by the pleadings. For example, in
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`paragraph 24 of Dorfman-Pacific’s Answer And Amended Counterclaims (With Fee), Dorfman-
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`9
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`Pacific denied GMA’s allegation that “Dorfman-Pacific is in privity with Cappelli Straworld,
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`Inc.” It also denied GMA’s allegation that “Dorfman-Pacific is the successor in interest to
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`Cappelli Straworld, Inc.” as vague and ambiguous with respect to the subject matter of that
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`allegation.
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`Finally, paragraphs 9 and 10 of Mr. Donnelly’s Declaration should be disregarded for
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`including inappropriate legal argument and unsupported legal conclusions and factual
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`speculation.
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`The Court should therefore also strike and disregard Mr. Donnelly’s opinions and factual
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`statements as inadmissible opinion evidence and attorney argument. Vitronics Corp. v.
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`Conceptronic, Inc., 90 F3d 1576, 39 USPQ2d 1573, 1579 (Fed. Cir. 1996).
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`C.
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`GMA’s Motion For Summary Judgment Should Be Denied Because Genuine
`Issues Of Material Fact Preclude A Finding Of Res Judicata
`
`The term res judicata includes two related concepts: "claim preclusion" and
`
`"issue preclusion." Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 1370, 81
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`USPQ2d 1748 (Fed. Cir. 2007). As explained by the Court of Appeals for the Federal Circuit,
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`“Res judicata is often analyzed further to consist of two preclusion concepts: ‘issue preclusion’
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`and ‘claim preclusion.’” Id.
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`As stated by the Court in Sharp Kabushiki v. Thinksharp:
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`Issue preclusion refers to the effect of a judgment in foreclosing
`relitigation of a matter that has been litigated and decided. This
`effect is also referred to as direct or collateral estoppel. Claim
`preclusion refers to the effect of a judgment in foreclosing
`litigation of a matter that never has been litigated, because of a
`determination that it should have been advanced in an earlier suit.
`Claim preclusion therefore encompasses the law of merger and bar.
`Citing Migra v. Warren City Sch. Dist. Bd. of Educ., 465 U.S. 75,
`
`10
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`

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`77 n.1 (1984) (internal citations omitted). Id.
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`In the present case, GMA’ submits the inadmissible and incorrect testimony of its
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`litigation counsel who states, without any analysis whatsoever, that “the TTAB’s judgment
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`canceling” Cappelli Straworld, Inc.’s Supplemental Registration No. 2,670,642 of CAPPELLI in
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`Cancellation No. 92044972 “is res judicata and requires refusal of” Dorfman-Pacific’s present
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`application to register its CAPPELLI STRAWORLD trademark. Declaration of Connor F.
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`Donnelly, ¶9.
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`At the outset, it is important to note that GMA is affirmatively asserting a claim of res
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`judicata “not to preclude a claim asserted” by Dorfman-Pacific, but rather to support its
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`opposition, i.e. as a sword, not a shield. The Supreme Court has cautioned against the offensive
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`use of res judicata, as asserted by GMA in the present case, as potentially unfair. See Parklane
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`Hosiery Co. v. Shore, 439 U.S. 322, 330-32 (1979).
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`As fully set forth below, a proper application of established principles of res judicata, in
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`view of the admissible evidence of record, shows that GMA’s motion for summary judgment
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`should be denied.
`
`1.
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`There Is No Issue Preclusion Resulting From Cancellation
`No. 92044972
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`Collateral estoppel, or issue preclusion, may bar relitigation of the same issue in a second
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`action. In Parklane, 439 U.S. at 326 n.5, the Supreme Court explained that "[u]nder the doctrine
`
`of collateral estoppel, ... the second action is upon a different cause of action and the judgment in
`
`the prior suit precludes re-litigation of issues actually litigated and necessary to the outcome of
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`the first action." The requirements for application of collateral estoppel, or issue preclusion, may
`
`11
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`

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`be summarized as follows: “(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
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`litigate the issue in the prior proceeding.” Mayer/Berkshire Corp. v. Berkshire Fashions, Inc.,
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`424 F.3d 1229, 1234 (Fed. Cir. 2005), citing Montana v. United States, 440 U.S. 147, 153-55
`
`(1979).
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`"The public policy underlying the principles of preclusion, whereby potentially
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`meritorious claims may be barred from judicial scrutiny, has led courts to hold that the
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`circumstances for preclusion 'must be certain to every intent.'" Mayer/Berkshire Corp. v.
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`Berkshire Fashions, Inc., 424 F.3d 1229, 1234 (Fed. Cir. 2005), quoting Russell v. Place, 94 U.S.
`
`(4 Otto) 606, 610 (1877)(denying preclusion in a patent infringement case, stating that
`
`"[a]ccording to Coke, an estoppel must 'be certain to every intent;' and if upon the face of a
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`record anything is left to conjecture as to what was necessarily involved and decided, there is no
`
`estoppel in it when pleaded, and nothing conclusive in it when offered as evidence.").
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`As stated by the Court in Mayer/Berkshire, “[c]aution is warranted in the application of
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`preclusion by the PTO, for the purposes of administrative trademark procedures include
`
`protecting both the consuming public and the purveyors.” Mayer/Berkshire Corp., 424 F.3d at
`
`p.1234. 606, 610 (1878). “[A] reasonable doubt as to what was decided in the first action should
`
`preclude the drastic remedy of foreclosing a party from litigating an essential issue." United
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`States v. Munsingwear, Inc., 340 U.S. 36, 38 (1950).
`
`a.
`
`The Issues In Prior Cancellation No. 92044972 Were Different
`Than The Issues In The Present Opposition Proceeding
`
`12
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`

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`
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`The issue in the present Opposition, as alleged in GMA’s Notice of Opposition, is
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`whether or not “there will be a likelihood of confusion with GMA’s CAPELLI and dilution of
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`GMA’s CAPELLI mark” resulting from Dorfman-Pacific’s CAPPELLI STRAWORLD mark.
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`Notice of Opposition, ¶21.
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`This is entirely different than the issues involved in Cancellation No. 92044972. Unlike
`
`the present opposition, the prior cancellation involved GMA’s alleged common law ownership of
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`CAPPELLI or CAPELLINEWYORK to attack Cappelli Straworld Inc.’s federal trademark
`
`registration of CAPPELLI standing alone. Conversely, in the present case, GMA alleges federal
`
`trademark registrations of CAPPELLI standing alone to attack Dorfman-Pacific’s application to
`
`register the combined word mark CAPPELLI STRAWORLD. Because of these differences in
`
`GMA’s asserted ownership interests, the common law ownership rights alleged in the prior
`
`cancellation proceeding involved different issues than GMA’s alleged ownership of federal
`
`trademark registrations in the present case.
`
`The legal issues in the two proceedings are also different. The present case relates to
`
`GMA’s alleged statutory rights arising under the Trademark Act, 15 U.S.C §1001, et seq., in
`
`connection with U.S. Trademark Registration Nos.: 3,241,182; 3,241,184; 3,248,875;
`
`3,258,734; 3,273,451; and 3,322,312. GMA’s alleged trademark registrations were not part of
`
`the prior proceedings. In fact, none of these trademark registrations could have been involved in
`
`the prior proceeding because they had not issued at the time GMA filed its prior Petition For
`
`Cancellation. Indeed, the applications for these registrations had not even been filed at that time.
`
`The issues in Cancellation No. 92044972 also involved different parties. That proceeding
`
`resulted from Cappelli Straworld, Inc.’s federal registration of CAPPELLI on December 31,
`
`13
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`

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`2002. Dorfman-Pacific was not involved in that proceeding.
`
`It also involved different marks. GMA’s prior Petition For Cancellation alleged common
`
`law rights to the words CAPELLI and/or CAPELLI NEW YORK, sometimes appearing as three
`
`separate words, and sometimes appearing as a single word, i.e. CAPELLINEWYORK. See,
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`Cappelli Straworld, Inc.’s Affirmative Defenses, ¶1 (GMA’s Petition For Cancellation did not
`
`involve rights to “the term ‘CAPPELLI’ standing alone”). A printout of an archival copy of
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`GMA’s website from this period, dated December 15, 2005, shows GMA’s use of
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`CAPELLINEWYORK at the time of the p