Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA228108
`ESTTA Tracking number:
`08/04/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048605
`Plaintiff
`Joro Companies, Inc. dba RID-O-VIT
`Erik M Pelton
`Erik M. Pelton & Associates, PLLC
`P.O. Box 100637
`Arlington, VA 22210
`UNITED STATES
`info@tm4smallbiz.com
`Opposition/Response to Motion
`Erik M. Pelton
`info@tm4smallbiz.com
`/emp/
`08/04/2008
`800 RID OF IT MSJ RESPONSE.pdf ( 89 pages )(1689237 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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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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`Joro Companies, Inc. dba RID—O—VIT
`Petitioner,
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`V.
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`Trashbusters Inc.,
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`Respondent.
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`Cancellation No. 92048605
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`Registration No. 2659120
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`Mark:
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`1 800 RID—OF-IT
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`PETITIONER’S RESPONSE TO RESPONDENT’S
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`MOTION FOR SUMMARY JUDGMENT
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`Pursuant to TBMP §§528.0l et. seq., Fed. R. CiV. P. 56, and 37 C.F.R. § 2.l27(e)(l), and
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`for the reasons stated herein, Petitioner Joro Companies, Inc. (“J oro”) respectfully requests that
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`the Board deny Respondent Trashbusters Inc.’s (“Trashbusters”) Motion for Summary Judgment.
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`I.
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`Introduction
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`In December, 2007, Joro petitioned for cancellation of Trashbusters’ Registration No.
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`2659120 for l 800 RID OF IT in connection with “custom trash hauling” on the grounds of
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`likelihood of confusion, based on Joro’s rights in the mark RID—O—VIT for “contract truck
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`hauling; trash and recycling pickup, and dumpster rental.” Petition For Cancellation, Docket No.
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`l at ‘J1 1 (“Petition”). J oro made claims of abandonment and mere descriptiveness. Id at ‘J1 21, 28.
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`Trashbusters has filed the instant Motion for Summary Judgment asking for dismissal of all three
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`claims with prejudice on the grounds that J oro’s claims are barred by the doctrine of claim
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`preclusion. Respondent’s Motion For Summary Judgment, Docket No. 6 at 2 (“MSJ”) . As the
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`basis for their preclusion argument, Trashbusters points to a 2003 Cancellation filed by Michael
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`J. Saya (“Saya”) against Trashbusters’ mark, in which Saya claimed likelihood of confusion with
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`ElE[l®E©‘='\‘l[l‘lJ"
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`his mark
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`for “contract truck hauling.” MSJ at 2. The Saya Cancellation was
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`dismissed with prejudice due to Saya’s failure to respond to discovery requests. Exhibit 8.
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`II.
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`Facts
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`Joro uses the mark RID—O—VIT for a variety of services, including trash hauling, used tire
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`recycling, used tire sales, scrap metal and cardboard recycling, and dumpster rental. Declaration
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`of Joseph Pollicliemi, ‘J1 ll — l7 (“Decl. of Pollichemi”)(attached as Exhibit 2); see also web site
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`of Joro Companies, Inc., www.ridovit.com, (“Joro Website”)(attached as Exhibit 5). Joro has a
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`long history of using the mark in connection with these services and has built significant
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`goodwill in the mark as a result of using the mark for these services. Decl. of Pollicliemi ‘J1 5, 10.
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`Joro’s Formatioin And Entry Into The Solid Waste Market
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`In March, 2000, Joseph and Wendy Pollicherni formed J oro Companies, Inc. for the
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`purpose of starting a trash hauling, recycling pickup, and dumpster rental business in Syracuse,
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`New York. Decl. of Pollicliemi ‘J1 2. The Pollichemis, through J oro, sought out small local
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`companies in the solid waste industry holding assets they could purchase and develop according
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`to their plan to become a full service solid waste and recycling provider. Decl. of Pollicliemi ‘J1 3.
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`During their search they discovered RID—O—VIT Co., Inc., (“Rid—O—Vit Co.”), a small company
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`owned and operated by Michael J . Saya (“Saya”). Id. Rid—O—Vit Co.’s business was limited to
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`“contract truck hauling.” Decl. of Pollicliemi ‘J1 4; See also TESS Printout of Trademark
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`Registration No. 1886345 (“Reg. No. l886345”)(attached as Exhibit 6).. In “contract truck
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`hauling,” a customer, such as a builder, a real estate agent, or a home owner removing junk or
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.2
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`remodeling hires the contractor, in this example, Rid—O—Vit Co., on a one—time basis to remove
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`specific debris from a property. Id. Rid—O—Vit would then provide either a truck and labor to
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`remove the debris, or a dumpster to collect the debris and later a truck and labor to remove it. Id.
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`To that end, Rid—O—Vit owned four trucks, and a number of small dumpsters, as well as office
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`equipment, and a federal trademark registration for their trademark, Registration No. 1886345
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`EE3ll[3)E@E'\‘l[l‘ll’
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`for
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`for “contract truck hauling.” Asset Purchase Agreement, Schedule A
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`(“Asset Agt.”)(attached as Exhibit 3). On May 9th, 2000, Joro purchased the assets of Rid—O—Vit
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`Co. and Saya. Asset Agt. These assets included all of the physical equipment, including trucks,
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`radios and office equipment, and the corporate goodwill of the company. Id, Schedule A. On
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`July 7th, 2000, Joro and Saya signed an “irrevocable license” agreement (the “License
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`Agreement”) as contemplated in the prior asset purchase agreement. 1 Irrevocable License
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`(“License Agreement”)(attached as Exhibit 4).
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`The License Agreement granted Joro the exclusive right to use the mark RlD—O—VIT in
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`New York State for “solid waste cleanout and hauling,” and obligated Saya to protect the rights
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`to the mark. License Agreement. Saya them moved to North Carolina, and on information and
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`belief currently operates a “contract truck hauling” business, providing removal of junk and
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`debris, based in Charlotte, North Carolina under the name RlD—O—VIT. Decl. 0fP0llicliemi, ‘][8,
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`9. See also Rid—O—Vit website, www.rid—o—vit.com (attached as Exhibit 16).
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`Joro’s Expansion of the RID—O—VIT Business
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`Immediately upon acquiring the assets of Rid—O—Vit Co., Joro began expanding its
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`1 Trashbusters’ copy of the license agreement contains only Saya’s signature. Joro’s exhibit contains the complete
`signature page of the License Agreement.
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`Cancellation No. 92048605: PETlTlONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.3
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`offerings under the RID—O—VIT brand. Decl. 0fP0llichemi, ‘J1l0—l7. In addition to the “contract
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`truck hauling” debris removal services for which J oro had a license to the RID—O—VIT mark, J oro
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`began offering “Front Load Service” trash hauling, a service whereby J oro contracts with
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`businesses to remove waste from dumpsters on a weekly basis, essentially, a commercial “trash
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`route,” in late 2000. Id ‘J1 ll. J oro augmented its private sector “Front Load Service” hauling with
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`a contract with Onondaga County, New York to offer Front Load Service to county owned
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`properties. Id ‘J1 12. Joro also began to offer scrap tire recycling under the RID—O—VIT brand, a
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`service whereby Joro contracted with automobile repair shops, dealerships, and junkyards to
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`remove their waste tires, and simultaneously contracted with a local landfill to deliver those tires
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`to be ground into rubber pellets for landfill surfacing. Id ‘J1 13. Joro also sorted the tires it
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`received, and sold those tires that were still serviceable as used tires under the RID—O—VIT “Tire
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`Division” brand. Id ‘J1 14. J oro also began offering cardboard and scrap metal recycling services
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`under the RID—O—VIT brand using the same “trash route” business model whereby J oro would
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`deliver recycling bins to customers and remove scrap recyclables from those bins on a regular
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`basis Id, 15. Currently, J oro uses RID—O—VIT on a wide variety of services, including dumpster
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`rental, cleanouts and junk hauling, demolition, equipment removal, dumpster leasing, “Front
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`Load” trash hauling services, scrap metal and cardboard recycling, scrap tire recycling, and used
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`tire sales. Id‘J1 ll — l7.
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`Saya’ s Abandonment of the RID—O—VIT Mark
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`After selling the assets of Rid—O—Vit Co. to J oro, Saya moved to North Carolina and
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`opened a “contract truck hauling,” debris removal business under the RID—O—VIT mark there. Id
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`‘J18, 9; Rid—O—Vit Website. Between March 28, 2001, and March 28, 2002, Saya’s Registration for
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.4
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`E{?3l][3)3©‘=Vfl'1T
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`was eligible for the filing of a Section 8 Declaration of Continued Use. Saya
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`did not file a declaration, and on April 6, 2002, the registration was cancelled. Reg. No. 1886345.
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`Separately, and unknown to Joro, Trashbusters registered 1 800 RID OF IT for “custom trash
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`hauling” on December 10, 2002, Registration No. 2659120, the registration at issue in the current
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`cancellation. Petition ‘J1 7. In October, 2003, Saya filed a cancellation against Trashbusters’
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`registration. Petition For Cancellation in Cancellation No. 92042608 (“Saya Petition”)(attached
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`as Exhibit 7). Saya cited as grounds for the cancellation his use of the mark RID—O—VIT for
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`“custom trash hauling” since 1992, his registration of the
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`mark, and his filing
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`EBfl®E©"é\Wfl‘F
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`of an application, Serial No. 78182465 for RID—O—VIT for “contract truck hauling services.”
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`Saya Petition ‘J1 1, 2. Saya did not respond to discovery requests and on June 9, 2005, the
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`cancellation was dismissed with prejudice. Boards Dismissal in Cancellation No. 92042608
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`(“Saya Dismissal”)(attached as Exhibit 8).
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`Joro’s Discovery Of Saya’s Abandonment and Breach of the License Agreement
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`In September, 2004, Joro sent a Cease & Desist letter, by counsel, to a pest control
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`company in central New York that was using the mark RID—O—VIT for pest control services.
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`Exhibit 9. In the course of correspondence with that company’s counsel, J oro discovered that
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`Saya had allowed his registration to be cancelled. Id. In October 2004, Joro attempted without
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`success to communicate with Saya and resolve the issue of Saya’s non—compliance with his
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`obligations under the License Agreement. Exhibit 1 0. After unsuccessfully attempting to resolve
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`the issue, on February 9, 2005, Joro sent Saya formal notice that it considered him in breach of
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`the license, and demanded immediate cure of the breach. Exhibit 1 I . On April 13, 2007, Joro
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.5
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`sent Saya notification that it considered him in breach of the license agreement, and notifying
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`him that it would file suit for damages. Exhibit 12. On August 21, 2007, J oro filed suit in New
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`York state court against Saya seeking damages arising out of his breach of the license agreement.
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`Exhibit 13 . Since the breach, Joro has never received any demand or complaint from Saya
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`regarding J oro’s use of the RID—O—VIT mark.
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`Joro’s protection of its trademark rights separate from its dispute with Saya
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`Throughout Joro’s dispute with Saya, Joro continued to use the mark RID—O—VIT on its
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`services, with the understanding and belief that it had rights to the name separate from those
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`granted in the license, and would be able to lawfully continue using the name for those services
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`outside the license agreement regardless of the outcome of its dispute with Saya. Decl. of
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`Pollichemi ‘J1 20. J oro continued to expand its services throughout the dispute period, and
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`continued to apply the RID—O—VIT brand to services it had not purchased from Saya. Id ‘J1 ll— 17,
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`20. In furtherance of its common law rights to those services not included in the license from
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`Saya, and to codify the rights Joro believes it has in the mark, J oro filed for and was granted a
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`New York State trademark registration for RlD—O—VIT in connection with “dumpster rentals,
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`trash and junk hauling, recycling, waste tire hauling, shredding, demolition and rubbish
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`removal,” Registration No. S—l9086. Id ‘J1 20; Exhibit 14. Joro filed for a U.S. Trademark
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`Registration for RID—O—VIT for “Commercial waste services, namely, contract truck hauling;
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`trash and recycling pickup, rental of dumpsters,” Serial No. 7886243l.Id ‘J1 20; Exhibit 15. When
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`registration of its application was refused on the basis of likelihood of confusion with
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`Trashbusters’ Registration No. 2659120, Joro filed the instant cancellation. Petition. Joro cites as
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`grounds for the cancellation its common law rights to the mark RID—O—VIT, as embodied in
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.6
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`application Serial No. 78862431. Petition ‘J1 1, 2. Joro’s right and priority in the RID—O—VIT mark
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`flow either from its use of the mark on services not encompassed in the License Agreement, such
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`as recycling services, “Front End Services,” used tire pickup, used tire recycling, and used tire
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`sales; or from its use of the mark on the services encompassed in the License Agreement,
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`namely, contract truck hauling and waste cleanout, from the time Saya breached the License
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`Agreement and abandoned his claim to the exclusive use of the mark when he allowed the
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`Registration to be cancelled in April, 2002. Id. In either case, and considering Trashbusters’
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`claimed date of first use in interstate commerce in the United States of December 1, 2001
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`(“2001—11—00”), Joro believes that its priority of use of the RID—O—VIT mark vis—a—vis
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`Trashbusters stems from J oro’s own use of the mark, and is not derived from Saya’s license.
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`To protect its right to the mark, Joro filed the instant action December 8, 2007. Petition.
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`Trashbusters has filed a Motion for Summary Judgment on the grounds that Joro’ s claims are
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`precluded by the prior judgment against Saya. MSJ.
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`III.
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`Ar gument
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`Summary judgment is only appropriate if there are no material facts in dispute and the
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`movant is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c). The party moving
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`for summary judgment has the burden of demonstrating the absence of any genuine issue of
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`material fact, and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett,
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`477 U.S. 317 (1986); see also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
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`USPQ2d 1793 (Fed. Cir. 1987). Further, the evidence must be viewed in a light most favorable
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`to the non—movant, and all justifiable inferences are to be drawn in the non—movant’s favor. See
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`Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
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`Cancellation No. 92048605: PETlTlONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.7
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`Trashbusters has moved for summary judgment in this case on all three claims in this
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`case on the grounds of claim preclusion. For claim preclusion to bar a claim, the summary
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`judgment movant must prove (1) identity of the successive parties or their privies, (2) that the
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`prior claim was a final judgment on the merits, and (3) that the second claim is based on the
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`same transactional facts as the first claim and should have been litigated in the prior case.
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`Parklane Hosiery Co. v. Shore, 439 U.S. 322, 327 n.5 (1979); Jet, Inc. v. Sewage Aeration
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`Systems, 223 F.3d 1360, 1360, 55 U.S.P.Q.2d 1854, 1855 (Fed. Cir., 2000).
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`Because claim preclusion operates as a bar to potentially meritorious claims, the
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`circumstances for applying the doctrine of claim preclusion “must be certain to every intent.”
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`Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 1230, 76 U.S.P.Q. 2d 1310,
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`1314 (Fed. Cir. 2005) (citing Russell v. Place, 94 U.S. (4 Otto) 606, 610 (1876)). The proponent
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`of claim preclusion bears the burden of showing that the transactional facts in the two suits are
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`the same. Foster v. Hallco Mfg. Co., Inc., 947 F.2d 469, 480, 20 U.S.P.Q.2d 1241, 1252 (Fed.
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`Cir. 1991). Any doubts as to what was decided in a prior proceeding should be resolved against
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`the application of claim preclusion. See, e. g. McNellis v. First Fed. Sav. and Loan Ass 'n of
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`Rochester, New York, 364 F.2d 251, 257 (2d Cir. 1966).
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`Here, there are material facts in dispute, and Trashbusters is not entitled to judgment as a
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`matter of law. J oro, Petitioner in the current suit, is not substantially identical to Michael Saya,
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`Petitioner in the prior suit. Additionally, even assuming Joro were substantially identical to Saya,
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`the transactional facts between the suits are not the same, because the services on which Joro
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`uses the mark differ significantly from the services on which Saya used the mark. For either or
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`both of those reasons, claim preclusion should not bar Joro’s likelihood of confusion claim.
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`Cancellation No. 92048605: PETlTlONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.8
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`In addition, J oro’s abandonment and mere descriptiveness claims were not raised in the
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`prior suit, and the transactional facts supporting claims of abandonment and mere descriptiveness
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`are different from the transactional facts supporting a claim of likelihood of confusion such that
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`the prior judgment on likelihood of confusion cannot operate to bar Joro’s current claims of
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`abandonment and mere descriptiveness.
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`A. There are Material Facts in Dispute
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`Under Fed. R. Civ. P. 56(c), a moving party is entitled to summary judgment if the
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`pleadings, depositions, answers to interrogatories, and admissions on file, together with the
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`affidavits, if any, show that there is no genuine issue as to any material fact and that the moving
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`party is entitled to judgment as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
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`248, 106 S. Ct. 2505, 2510 (1986); Fed. R. Civ. P. 56(c). The substantive law of the case
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`determines what facts are material. Id. A factual dispute is genuine “if the evidence is such that a
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`reasonable jury could return a verdict for the nonmoving party.” Id at 248, 251-252, 106 S.Ct. at
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`2510, 2511-12.
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`Several of the key facts at issue here are in dispute, including the following:
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`1. Whether Joro’s rights flow from Saya’s license only, or whether Joro has created
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`common law rights in the RID—O—VIT mark separate from those rights granted by
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`Saya.
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`2. Whether Joro’s status as Saya’s licensee is such that Joro is “in privity” with Saya for
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`the purposes of claim preclusion.
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`3. Whether Saya’s license to J oro is a naked license such that the creation of the license
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`itself caused the abandonment of any rights either party had in the mark at that time.
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.9
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`In such an analysis, J oro’s rights therefore stem only from Joro’s use of the mark
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`commencing after the purported licensing.
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`Trashbusters argues that “as a licensee J oro Companies is in privity with its licensor.
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`[Joro]’s interest in the subject matter of this action relies on and is identical to Mr. Saya’s rights,
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`and inures to the benefit of Mr. Saya.” MSJ at 4. This argument is not only unsupported by any
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`law, or by the evidence Trashbusters presents, it also ignores the clear and material dispute over
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`the facts surrounding the genesis of J oro’s rights to the RID—O—VIT mark, suggesting that Joro
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`agrees with Trashbusters’ statement of the factual basis for J oro’s claims. As the list of material
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`facts in dispute makes clear, Joro disputes Trashbusters’ allegations regarding the basis of Joro’s
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`rights in the RID—O—VIT mark. J oro presents evidence herewith demonstrating an alternate basis
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`for Joro’s rights in the RID—O—VIT mark, namely, that Joro expanded the use of the RID—O—VIT
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`mark beyond the services contemplated in the license agreement, and that the rights and benefits
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`accruing from such use inure solely to Joro’s benefit; or that Saya’s breach of the license
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`agreement voided the license agreement, such that the benefit of J oro’ s use of the mark
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`subsequent to that breach inured solely to Joro; or both. On the evidence Joro presents here, a
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`reasonable finder of fact could find that the parties are not in privity, or that the transactional
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`facts between the claims are different. On that basis alone, summary judgment is not appropriate,
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`because there are material facts in dispute.
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`B. The Current Petitioner Joro Companies Is Not Substantially Identical To The
`Prior Petitioner, Michael J. Saya
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`Even if there were no material facts in dispute, Trashbusters is not entitled to judgment as
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`a matter of law because Joro is not identical to or in privity with Saya. Privity is characterized as
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`a relationship where “there [is] a substantial identity of parties.” See Symbol Technologies, Inc. v.
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.10
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`Metrologic Instruments, Inc., 21 USPQ 1481, 1488 (D.N.J. 1991), quoting Chicago, Rock Island
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`& Pac. Ry. V. Schendel, 270 U.S. 611, 621 (1926). If the later party controls the actions of the
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`earlier party, the later party may be barred from a later claim on the same rights. See Restatement
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`(Second) of Judgments § 39 (1982); see also I8 Wright & Miller, Federal Practice and Procedure
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`§ 4451 (updated by pocket part 2004). An alternate basis for privity is a series successive
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`interests in the same property. See International Nutrition Co. v. Horphag Research Ltd., 220
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`F.3d 1325, 1328 (Fed. Cir. 2000) (citing Litchfield v. Crane, 123 U.S. 549, 551 (1887)).
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`However, privity by successive interest binds transferees only where the interest was transferred
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`after the judgment. Id (citing Restatement (Second) of Judgments § 43 (1982)). Importantly,
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`successors in interest are only in privity with respect to the property that was transferred. Id.
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`Rights that were not transferred between the parties cannot be barred from adjudication merely
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`because the parties have transferred other rights between them. Id.
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`Here, the parties are not identical. Saya has no relationship with J oro outside of his status
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`as licensor of certain rights to the mark RID—O—VlT. Decl. of Pollichemi ‘J1 23. As between J oro
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`and Saya, Joro has questioned the validity of the license, and is actively seeking to have it
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`terminated. Id ‘J1 21, 22; Exhibits I0 — I 3 . Neither J oro nor Mr. Saya control the other party’s
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`actions or have any stake in the other party’s actions. Decl. of Pollichemi. Indeed, Joro’s
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`relationship with Saya, to the extent that a relationship exists, can be characterized as
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`contentious. Id. Furthermore, the rights to the RlD—O—VIT mark Saya licensed to J oro cannot
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`form the basis of privity between Saya and J oro: First, to the extent J oro asserts trademark rights
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`to the name RID—O—VlT, those rights only minimally flow from the rights granted in the license.
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`Joro has developed significant rights of its own in the mark RlD—O—VIT for services not
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`contemplated under the license, such as scrap metal and cardboard recycling, tire recycling, and
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`Cancellation No. 92048605: PETlTlONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.11
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`“Front End Service.” J oro has codified and protected these rights through application for and
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`receipt of a New York State Trademark Registration, and an application for registration of a
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`Federal Trademark; Exhibits I4 and 15; Second, Joro disputes Saya’s own rights to the mark
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`Saya purportedly licensed to Joro, and his authority to control Joro’s use of the mark dating back
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`to Saya’s breach of the license agreement. Exhibits I0 — I3.
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`Trashbusters asserts that as a licensee of Saya, J oro is in privity with Saya, but provides
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`no law or precedent to support that position. MSJ at 3,4. Trashbusters concurrently asserts that
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`Saya is Joro’s predecessor in interest, that J oro’s rights to the mark are identical to Saya’s, and
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`that Joro’s use of the mark inures to the benefit of Saya. Id. As Joro describes herein, none of
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`these assertions are correct. Contrary to the position advocated in Trashbusters’ unsupported
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`assertions, the law clearly draws a circle around the relationships necessary to support privity
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`and bar a later claim from an unrelated party. J oro’s lin1ited, disputed and contentious
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`relationship with Saya falls outside that circle, and should not act as a bar to Joro’s present suit.
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`C. The Transactional Facts Are Different Between The Claims In The Prior Action
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`And The Claims In The Present Action
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`Even assuming the relationship between J oro and Saya is such that they are in privity
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`with each other, Joro’s likelihood of confusion claim and mere descriptiveness and abandonment
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`claims arise out of different sets of transactional facts from Saya’s earlier likelihood of confusion
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`claim, and therefore should not be barred. The Federal Circuit has adopted the Restatement
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`(Second) of Judgments as a guide in determining what constitutes a single “set of transactional
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`facts,” or “set of factual allegations.” The Young Engineers v. U.S. International Trade
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`Commission, 721 F.2d 1305, 1314, 721 F.2d 1305, 1151 (Fed. Cir. 1983); Chromalloy American
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`Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694, 696, 222 U.S.P.Q. 187, 189 (Fed.
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.12
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`Cir. 1984). The Second Restatement requires a “pragmatic” analysis of whether two factual
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`groupings constitute a single transaction for the purposes of claim preclusion. Restatement
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`(Second) of Judgments, §24(2 ) (1982). The Federal Circuit has interpreted that pragmatic View in
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`trademark cases to require the same or nearly the same factual allegations be made in both the
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`first and second claim before claim preclusion will bar the second claim. Jet, 223 F.3d at 1363,
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`55 U.S.P.Q.2d at 1857. The Second Restatement requires a pragmatic analysis of factual
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`allegations, giving weight to such considerations as whether the facts are related in time, space,
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`origin, or motivation, whether they form a convenient trial unit, and whether their treatment as a
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`unit conforms to the parties’ expectations or business understanding or usage. Chromalloy, 736
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`F.2d at 697, 222 U.S.P.Q. at 189,190 (citing Restatement (Second) ofJadgments, §24(2) (1982)).
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`Joro turns to each set of factual allegations in turn:
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`i.
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`The transactional facts are different between the prior likelihood of
`confusion claim and the current likelihood of confusion claim
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`Joro claims rights to the mark RID—O—VIT for services not contemplated in Saya’s
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`original claim. Saya’s original claim was of likelihood of confusion on the basis of priority in the
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`EE3[l@3©‘:Wl’
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`mark
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`for “contract truck hauling.” Saya ’s Petition. Joro’ s current likelihood
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`of confusion claim is based on its common law rights as embodied in application Serial No.
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`78862431 for the word mark RID—O—VIT for “Commercial waste services, namely, contract
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`truck hauling; trash and recycling pickup, rental of dumpsters.” Joro claims services in its
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`application not included in Saya’s registration. Joro has developed significant rights to the mark
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`RID—O—VIT as applied to these services, none of which services were included in Saya’s original
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`claim. Saya’s Petition; Decl. of Pollichemi, ‘J1 11 — 17. The evidence and proof required to show
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`likelihood of confusion or lack thereof must include evidence of the relatedness of used tire
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.13
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`recycling, used tire sales, scrap metal and cardboard recycling, and “Front End Services” with
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`custom trash hauling. The evidence and proof must include proof of the meaning of the phrases
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`RID—O—VIT and 800 RID OF IT, as they relate to used tire recycling, used tire sales, scrap metal
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`and cardboard recycling and “Front End Services,” as well as custom trash hauling and contract
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`truck hauling.
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`Even if Saya and Joro were in fact essentially identical, the “set of transactional facts”
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`that form the basis of Saya’ s prior likelihood of confusion claim and Joro’ s current likelihood of
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`confusion claim are different. Therefore, even if the parties were in privity, the prior claim
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`should not act as a bar to the current one.
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`ii.
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`Claim Preclusion Does Not Apply To Petitioner’s Claims Of Mere
`Descriptiveness and Abandonment
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`J oro’ s claims of mere descriptiveness and abandonment cannot be barred by the prior
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`judgment merely because they could have been raised in the prior action. A prior final judgment
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`only bars later claims based on the same set of transactional facts. Jet, 223 F.3d at 1360. Here,
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`mere descriptiveness and abandonment arise from different transactional facts, and rest on
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`different proofs and different evidence that likelihood of confusion.
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`Trashbusters disingenuously suggests that because the descriptiveness and abandonment
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`claims could have been raised in the prior action, the final judgment in the prior action should
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`bar them now. MSJ at 5,6. The Federal Circuit recently addressed this specific issue in Acumed
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`LLC v. Stryker Corp, clarifying that the proper consideration for claim preclusion is whether the
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`transactional facts are the same between the claims, n_ot whether the claims in the second action
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`could have been raised in the first action. Acumed LLC v. Stryker Corp., No. 2007-1 1 l5, slip. op.
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`at 9 (Fed. Cir., May 13, 2008). The court cited both the Supreme Court and a recent Ninth
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`Circuit case both in support of the proposition that the could have been raised language is a by-
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`Cancellation No. 92048605: PETlTlONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.14
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`product of loose drafting, and is not to be interpreted as a rule of law. Id at 9,10 (citing Cromwell
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`v. County ofSac, 94 U.S. 351, 356 (1876) and Hells Canyon Pres. Council v. U.S. Forest Serv.,
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`403 F.3d 683, 686 n.2 (9th Cir. 2005)). Here, the transactional facts between the prior likelihood
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`of confusion claim and current claims for mere descriptiveness and abandonment claims are
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`clearly different, and Trashbusters’ suggestion that they should be barred is founded on an
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`incorrect interpretation of the law that purposefully ignores binding precedent to the contrary.
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`Trashbusters’ final argument appears to be that J oro’s claim of abandonment should be
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`barred on the basis of claim preclusion because it is without merit. The substantive merit of the
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`involved claims is not considered when determining claim preclusion, and J oro does not directly
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`address this argument.2
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`D. Conclusion
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`Joro has used the mark RID—O—VIT, and acquired common law trademark rights to the
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`phrase in connection with services such as used tire recycling, “Front End Services,” and scrap
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`metal and cardboard recycling since prior to Trashbusters’ first use of the mark 800 RID OF IT.
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`Because of this separate basis for Joro’s rights to RID—O—VIT, the transactional facts of J oro’s
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`likelihood of confusion claim are different from the transactional facts of Saya’ s prior likelihood
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`of confusion claim. Additionally, Joro’s abandonment and mere descriptiveness claims were not
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`raised in Saya’s prior Cancellation, and are not barred here, despite Trashbusters’ assertions to
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`the contrary. Even assuming any or all of the claims were based on the same set of transactional
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`facts, J oro is not in privity with Saya. Joro is not substantially identical with Saya. J oro’s rights
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`in the mark do not inure to Saya, and Saya’s purported prior rights in the mark do not inure to
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`2 Joro does note in regards to this argument, however, that Trashbusters’ sole evidence in support of its argument
`that Joro’s abandonment claim is Without merit is a mere printout of a Google® search result. Joro’s more in-depth
`investigation has lead it to a bona fide belief that Trashbusters may have abandoned its mark in interstate commerce
`in the United States, regardless of its use of the mark in the cities of Toronto, Canada and Vancouver, Canada, and
`regardless of its alleged use of the mark intrastate in Seattle, Washington.
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.15
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`Joro. Finally, there are material facts in dispute regarding the relationship between Joro and
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`Saya. For each of these reasons and for all of them, summary judgment for Trashbusters is not
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`appropriate in this case. Therefore Joro respectfully requests that the Board deny Trashbusters’
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`motion for summary judgment on J oro’s likelihood of confusion claim, deny Trashbusters’
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`motion for summary judgment on J oro’s abandonment claim, and deny Trashbusters’ motion for
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`summary judgment on J oro’s mere descriptiveness claim.
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`Dated this 4th day of August, 2008.
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`Erik M. Pelton
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`Christopher R. Shiplett
`ERIK M. PELTON & ASSOCIATES, PLLC
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`PO Box 100637
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`Arlington, Virginia 222 l 0
`TEL: (703) 525-8009
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`FAX: (703) 525-8089
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`Attorneys for Petitioner
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`Cancellation No. 92048605: PETITIONER’S RESPONSE
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`TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`p.16
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`CERTIFICATE OF SERVICE
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`I hereby ce