UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`THIS OPINION IS NOT
`PRECEDENT OF THE
`TTAB
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`Mailed: October 29, 2008
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`Cancellation No. 92048605
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`Joro Companies, Inc. dba RID-
`O-VIT
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`Trashbusters Inc.
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`Skoro
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`Before Hohein, Rogers and Cataldo,
`Administrative Trademark Judges.
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`By the Board:
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`Trashbusters Inc. owns Registration No. 2659120 for the
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`mark 1 800 RID-OF-IT,1 for “custom trash hauling” in
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`International Class 39. On December 8, 2007, Joro
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`Companies, Inc., d/b/a RID-O-VIT, (hereinafter “Joro”) filed
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`a petition to cancel the registration, claiming a likelihood
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`of confusion with the mark in its predecessor’s, Michael
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`Saya, (hereinafter “Saya”) now cancelled Registration No.
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`1886345 for RID-O-VIT and Design2 for “contract truck
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`hauling” in International Class 39, and its own common law
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`1 Issued December 10, 2002, claiming dates of first use
`anywhere of August 2001 and first use in commerce of November
`2001. “1 800” is disclaimed.
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` 2
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` Issued March 28, 1995, claiming dates of first use anywhere
`and first use in commerce of September 9, 1992; cancelled under
`Section 8 on April 4, 2002.
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`Cancellation No. 92048605
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`trademark rights since 19943 for “contract truck hauling,
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`trash and recycling pickup; and rental of dumpsters”.4
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`This case now comes up on respondent’s motion for
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`summary judgment, filed June 30, 2008. As grounds for its
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`motion, respondent alleges claim preclusion.5 Petitioner
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`filed its opposition to respondent’s motion on August 4,
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`2008, and respondent filed a reply.
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`In support of its motion for summary judgment,
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`respondent asserts that the decision in Cancellation No.
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`92042608, “Michael J. Saya v. Trashbusters Inc.,” provides
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`the basis for the application of claim preclusion.
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`Respondent argues that the previous cancellation involved
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`the same claim, namely a likelihood of confusion between the
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`3 Petitioner claims that Mr. Saya is a predecessor in interest
`for purposes of tacking on to the dates of use from 1994 until
`its own use of the mark began in 2000, based on an exclusive
`license agreement.
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` 4
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` On April 16, 2006, a co-founder of petitioner and also
`described as its chief executive officer, Wendy R. Pollichemi,
`filed a trademark application, as an individual, Serial No.
`78862431, for the mark RID-O-VIT for “commercial waste services,
`namely, contract truck hauling, trash and recycling pickup,
`rental of dumpsters” in Class 39; claiming dates of first use
`anywhere and first use in commerce of March 2, 1994. Examination
`thereof has been suspended pending determination of this
`cancellation proceeding.
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` 5
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` The deadline for the parties’ settlement and discovery
`conference as well as the deadline for the parties to exchange
`initial disclosures, see Trademark Rules 2.120(a)(2) and
`2.120(a)(3), both preceded the filing of the motion for summary
`judgment. The record does not reveal whether respondent made
`initial disclosures prior to the filing of the motion for summary
`judgment, but a motion based on claim preclusion is considered an
`exception to the rule that otherwise bars filing of a motion for
`summary judgment prior to making initial disclosures. See
`Trademark Rule 2.127(e)(1).
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`2
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`Cancellation No. 92048605
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`same marks; that the present petitioner, as a licensee of
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`Mr. Saya, was and is in privity and thus there is an
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`identity of the parties; and that while the prior proceeding
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`was dismissed with prejudice as a sanction for failure to
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`comply with a Board order granting a motion to compel, the
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`judgment was a final judgment on the same pleaded claim,
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`thereby barring relitigation of the claim in this
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`cancellation proceeding.
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` To establish its allegation that the claims involved
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`are identical, respondent submitted a copy of the petition
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`to cancel in the previous proceeding, to demonstrate that
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`both cancellation proceedings involve the same registration
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`owned by respondent and the same claims of priority and
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`likelihood of confusion; and a copy of the final order
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`wherein the earlier proceeding was dismissed with prejudice.
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`To establish its allegation that the parties are the
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`same, in particular, the party in the position of plaintiff
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`is identical or in privity with petitioner, respondent has
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`provided a copy of the exclusive license agreement entered
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`into between petitioner Saya and petitioner Joro, executed
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`on July 7, 2000.6
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`6 This license agreement provides for petitioner’s exclusive use
`of the mark in the State of New York in connection with the
`identified services. Petitioner also submitted a fully executed
`copy of this agreement.
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`3
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`Cancellation No. 92048605
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`In its opposition to the motion for summary judgment,
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`petitioner argues that Joro is not “substantially identical”
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`to Saya; that the transactional facts are not the same
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`because Joro’s services have expanded and are “significantly
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`different” from Saya’s; and that abandonment and
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`descriptiveness claims were not raised in the first
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`cancellation proceeding.
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`Under the doctrine of claim preclusion, the entry of a
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`final judgment “on the merits” of a claim (or cause of
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`action) in a proceeding will preclude the relitigation of
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`the same claim in a later proceeding that involves the same
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`parties or their privies. Claim preclusion also extends to
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`those claims or defenses that could have been raised in the
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`prior action. See Chromalloy American Corp. v. Kenneth
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`Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984);
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`see also, Jet, Inc. v. Sewage Aeration Systems, 223 F.3d
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`1360, 55 USPQ2d 1854 (Fed. Cir. 2000), reh’g and reh’g en
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`banc denied, 2000 U.S. App. LEXIS 26699 (Fed. Cir. 2000);
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`and Flowers Industries Inc. v. Interstate Brands Corp., 5
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`USPQ2d 1580 (TTAB 1987).
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`Because Joro was an exclusive licensee of Saya during
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`the prior proceeding, because the claim of a likelihood of
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`confusion asserted by Saya against Trashbusters in the prior
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`proceeding is the same as a claim asserted here, and because
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`the June 9, 2005 judgment dismissed the prior proceeding
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`4
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`Cancellation No. 92048605
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`with prejudice, the principles of claim preclusion apply in
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`this case.
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`A review of the evidence shows that the two
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`cancellation proceedings involve the same claim, even though
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`Joro has included two sentences in its petition that allege
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`abandonment by respondent and that respondent’s mark is
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`merely descriptive. Respondent argues that these latter two
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`issues could have been raised in the prior proceeding and
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`that neither respondent’s use of the mark or its services
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`has changed which only now give rise to new grounds for a
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`petition. Petitioner responds that these grounds arise from
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`different transactional facts, which is the correct focus of
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`the test for preclusion7, rest on different proofs and,
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`therefore, are not precluded. Respondent counters that
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`because these issues could have been raised in the prior
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`proceeding, they are equally barred in this proceeding under
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`the doctrine of claim preclusion.
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`Both proceedings involve challenges to Trashbusters
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`registration of the mark 1 800 RID-OF-IT based on a
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`7 Petitioner cites Acumed LLC v. Stryker Corp., 525 F.3d 1319, 86
`USPQ2d 1950 (Fed. Cir. 2008) in support of the proposition that
`for claim preclusion the test is whether the transactional facts
`are the same between the “claims”, not whether the “claims” in
`the second action could have been raised in the first action.
`This case is inapposite. The Federal Circuit had before it a
`patent infringement case and the “claims” referred to are patent
`claims. The Court did state that claim preclusion issue is
`particular to patent law and defined “transactional fact” in
`patent infringement as the “structure of the device in issue”
`(Id. at 1955). In trademark cancellation proceedings,
`transactional facts and claim preclusion are broader concepts.
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`5
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`Cancellation No. 92048605
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`likelihood of confusion with petitioner’s RID-O-VIT
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`registration. The evidence further shows that petitioner,
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`Joro, was a licensee of Saya on July 7, 2000, during the
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`litigation of Cancellation No. 92042608; the final decision
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`in that case issued on June 9, 2005; and the cancellation
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`resulted in final judgment against petitioner, Saya, and in
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`favor of respondent herein, Trashbusters Inc.
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`Based on our finding that the parties involved in
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`Cancellation No. 92042608 and this proceeding are the same,
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`that the act or occurrence involved in both cases is the
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`same, and that judgment has been entered in the prior
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`proceeding against petitioner, respondent is entitled to
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`judgment as a matter or law based on claim preclusion and,
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`accordingly, its motion for summary judgment is hereby
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`granted.
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`The petition to cancel is hereby dismissed.
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`6