Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA722629
`ESTTA Tracking number:
`01/25/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061951
`Defendant
`Great Concepts, LLC
`LISEL M FERGUSON
`PROCOPIO CORY HARGREAVES & SAVITCH LLP
`525 B STREET, SUITE 2200
`SAN DIEGO, CA 92101
`UNITED STATES
`lisel.ferguson@procopio.com,
`michele.fuger@procopio.com,fred.taylor@procopio.com,
`fua.akeli@procopio.com
`Motion for Summary Judgment
`Lisel M. Ferguson
`lisel.ferguson@procopio.com,michele.fuger@procopio.com,calendaring@proco
`pio.com,fkt@procopio.com
`/Lisel M. Ferguson/
`01/25/2016
`2016-01-25_Great_Concepts_s_Motion_for_Summary_Judgment_re_Res_Judi
`cata.PDF(96970 bytes )
`2016-1-25_Declaration_of_Frederick_Taylor_ISO_Great_Concepts_s_Motion_f
`or_Summary_Judgment_re_Res_Judicata.PDF(32055 bytes )
`Exhibit A - Great Concept's Registration.pdf(47229 bytes )
`Exhibit B - Petition to Cancel from Prior Cancellation Proceeding-1.pdf(1660813
`bytes )
`Exhibit C - Combined Declaration under Sections 8 and 15.pdf(3515202 bytes )
`Exhibit D - Combined Notice of Acceptance and Acknowledgement of Declara-
`tion.pdf(18433 bytes )
`Exhibit E - Request to Remove Suspension of Proceedings.pdf(1393247 bytes )
`Exhibit F - Order to Resume Prior Cancellation Proceedings.pdf(39868 bytes )
`Exhibit G - Certificate of Service or Request to Remove Suspension of Proceed-
`ings.pdf(17356 bytes )
`Exhibit H - Order to Show Cause Why Prior Cancellation Proceeding Should Not
`Be Dismissed.pdf(24529 bytes )
`Exhibit I - Order Dismissing Prior Cancellation Proceeding.PDF(21892 bytes )
`Exhibit J - Section 8 and 15 Declaration from S Industries v. Covington Indus-
`tries case.pdf(252237 bytes )
`
`

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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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`CHUTTER, INC.,
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`Petitioner,
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`v.
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`GREAT CONCEPTS, LLC,
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`Registrant.
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`CANCELLATION NO. 92061951
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`GREAT CONCEPTS, LLC’S MOTION FOR SUMMARY JUDGMENT UNDER
`FED.R.CIV.P. 56 REGARDING CHUTTER, INC.’S PETITION TO CANCEL
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`Pursuant to Rule 56 of the Federal Rules of Civil Procedure, Registrant Great Concepts,
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`LLC (“Registrant”) respectfully submits the following motion for summary judgment based on
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`the doctrine of res judicata with respect to Petitioner Chutter, Inc.’s (“Petitioner”) Petition to
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`Cancel Registration No. 2,929,764 (the “Registration”).
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`I.
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`INTRODUCTION
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`Nearly ten years ago, Petitioner’s predecessor-in-interest, Dan Tana (“predecessor-in-
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`interest” or “Tana”) brought a prior petition to cancel the Registration before the Trademark
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`Trial and Appeal Board (the “Board”). That petition to cancel was suspended temporarily while
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`the Petitioner’s predecessor-in-interest pursued a civil action in the Northern District of Georgia
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`for infringement against Registrant. While the petition to cancel and the civil action were still
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`pending, Registrant publicly filed a combined declaration of continued use and incontestability
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`relating to its Registration with the USPTO, and the USPTO publicly issued a Combined Notice
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`of Acceptance and Acknowledgement of the declaration. After the Northern District of Georgia
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`granted summary judgment in favor of Registrant and the U.S. Court of Appeals for the Eleventh
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`Circuit affirmed, the petition to cancel resumed. However, despite being specifically ordered by
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`the Board to amend its petition in light of the decision in the civil action, Petitioner’s
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`predecessor-in-interest demonstrated an “apparent loss of interest” and the Board terminated the
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`1
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`petition to cancel.
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`Now, in an effort to pursue the legal strategy that its predecessor-in-interest opted to
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`forgo, Petitioner has filed the present Petition to Cancel the Registration. Petitioner now asserts
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`a cause of action based on the alleged fraud in Registrant’s filing an incorrect combined
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`declaration of use and incontestability under Sections 8 and 15. Although Registrant strongly
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`disputes the merits of both the intent and materiality aspects of this fraud cause of action,
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`Petitioner’s claim to cancel the Registration precluded by the doctrine of res judicata.
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`Petitioner’s predecessor-in-interest had at least constructive or inquiry notice of the publicly filed
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`declaration of use and incontestability, particularly since the declaration was filed while the Tana
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`was actively litigating against the Registration in both the civil action and the prior cancellation
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`proceeding. Despite having such notice, Petitioner allowed the Board to dismiss its claim against
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`Registrant with prejudice due to its “apparent loss of interest.”
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`Petitioner should not be permitted to have this improper second bite at the apple. There
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`are no genuine issues of material fact allowing the Petitioner to re-litigate its precluded claim,
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`and Registrant respectfully requests that the Board dismiss the present Petition to Cancel.
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`The United States Patent and Trademark Office issued Registration No. 2,929,764 to
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`Registrant for the mark DANTANNA’S in connection with steak and seafood restaurants in
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`International Class 43 (the “Registration”) on March 1, 2005. Declaration of Frederick K.
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`Taylor (“Taylor Decl.”), ¶ 3; Petition to Cancel, ¶ 9.
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`On June 6, 2006, Petitioner’s predecessor-in-interest Tana filed with the Board a petition
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`to cancel the Registration, Cancellation No. 92045947 (the “Prior Cancellation Proceeding”),
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`which involved Registrant’s right to register and use the mark DANTANNA’S for “restaurant
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`services.” Taylor Decl., ¶ 3; Petition to Cancel, ¶¶ 1, 10. Petitioner’s predecessor-in-interest
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`Tana then commenced a civil action for infringement against Registrant on March 13, 2008, in
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`the United States District Court for the Northern District of Georgia, Civil Action No. 1:08-CV-
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`2
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`975-TWT (the “Civil Action”), which also involved Registrant’s right to register and use the
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`mark DANTANNA’S for “restaurant services.” Taylor Decl., ¶ 5; Petition to Cancel, ¶ 10.
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`On March 8, 2010, while the Prior Cancellation Proceeding and the Civil Action were
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`still pending, Registrant’s counsel, Frederick K. Taylor, signed and filed with the USPTO on
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`behalf of Registrant a “Combined Declaration of Use and Incontestability under Sections 8 &
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`15” (the “Declaration”) with respect to the Registration. Taylor Decl., ¶ 6; Petition to Cancel, ¶
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`22. The Declaration incorrectly stated that, at the time, there were no pending proceedings
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`involving Registrant’s rights in the Registration. Petition to Cancel, ¶¶ 23, 28. The USPTO
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`issued a combined Notice of Acceptance (as to Section 8) and Notice of Acknowledgement (as
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`to Section 15) (the “Combined Notice”) with respect to the Registration on March 26, 2010,
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`which was over eight months before the Board dismissed the Prior Cancellation Proceeding on
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`December 14, 2010. Taylor Decl., ¶ 7; Petition to Cancel, ¶ 37.
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`The Civil Action subsequently ended after the U.S. Court of Appeals for the Eleventh
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`Circuit issued a mandate on August 13, 2010 for its opinion affirming the district court’s
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`judgment and order granting summary judgment in favor of Registrant. Taylor Decl., ¶ 8;
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`Petition to Cancel, ¶¶ 13-16.
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`On September 1, 2010, Registrant filed a request with the Board to resume the Prior
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`Cancellation Proceeding against the Registration. Taylor Decl., ¶ 9; Petition to Cancel, ¶¶ 18,
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`35. The Board issued an order on September 7, 2010 to resume the Prior Cancellation
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`Proceeding, in which the Board instructed Petitioner to amend its petition to cancel from the
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`Prior Cancellation Proceeding. Taylor Decl., ¶ 10. Registrant served a copy of Registrant’s
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`Request to Remove Suspension of Proceedings to counsel for the Petitioner on September 8,
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`2010. Taylor Decl., ¶ 11.
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`Despite having at least constructive or inquiry notice of the Declaration filed on March 8,
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`2010, Petitioner’s predecessor-in-interest Tana made no attempt to amend its petition in the Prior
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`Cancellation Proceeding to include fraud as a ground for cancellation. Taylor Decl., ¶ 12;
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`Petition to Cancel, generally.
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`3
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`On October 26, 2010, the Board issued an “order to show cause why [the Prior
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`Cancellation Proceeding] should not be dismissed with prejudice based on petitioner’s apparent
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`loss of interest.” Taylor Decl., ¶ 13. Subsequently, the Prior Cancellation Proceeding ended
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`when the Board entered an Order terminating the proceeding on December 14, 2010, as a result
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`of default by Petitioner’s predecessor-in-interest Tana. Taylor Decl., ¶ 14; Petition to Cancel,
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`¶ 19. The Board’s order stated as follows: “In view of petitioner’s failure to respond to the order
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`to show cause that the Board issued on October 26, 2010, the petition to cancel is dismissed with
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`prejudice based on petitioner’s apparent loss of interest.” Taylor Decl., ¶ 14, Exhibit I.
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`Despite the fact that the Northern District of Georgia and the Eleventh Circuit both ruled
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`against Petitioner in the Civil Action (Petition to Cancel, ¶¶ 13, 16), and the fact that the Board
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`dismissed Petitioner’s Prior Cancellation Proceeding with prejudice (Petition to Cancel, ¶ 19),
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`Petitioner has since filed application Serial No. 86-452,290 for the mark DAN TANA’S for
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`“restaurant services” in International Class 43 on November 12, 2014. Petition to Cancel, ¶ 6.
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`Finally, on July 29, 2015, Petitioner filed the present Petition to Cancel Registrant’s
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`Registration on the ground of fraud. See Petition to Cancel, ¶ 45.
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`III. LEGAL STANDARD
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`Entry of summary judgment is appropriate where there are no genuine disputes as to any
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`material facts, thus allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). A
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`factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the
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`matter in favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music Show Inc.,
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`970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy's, Inc.,
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`961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be
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`viewed in a light favorable to the non-movant, and all justifiable inferences are to be drawn in
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`the non-movant's favor. Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d 2027,
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`2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve genuine
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`disputes as to material facts on summary judgment; it may only ascertain whether genuine
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`disputes as to material facts exist. See Lloyd's Food Prods., 25 USPQ2d at 2029; Olde Tyme
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`4
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`

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`Foods, 22 USPQ2d at 1542.
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`Once a moving party demonstrates the absence of any genuine issue of material fact and
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`that it is entitled to judgment as a matter of law, the burden shifts to the nonmoving party to
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`present sufficient evidence to show an evidentiary conflict as to one or more material facts in
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`issue. Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB
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`2001). In countering a motion for summary judgment, more is required than mere assertions of
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`counsel. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 626-27 (Fed. Cir. 1984). The
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`non-movant may not rest on its conclusory pleadings but, under Rule 56, must set out, usually in
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`an affidavit by one with knowledge of specific facts, what specific evidence could be offered at
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`trial. Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836, 221
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`USPQ 561, 564 (Fed.Cir.1984). A non-movant runs the risk of a grant of summary judgment by
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`failing to disclose the evidentiary basis for its claim. Pure Gold, 739 F.2d at 627.
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`IV. ANY CLAIM PETITIONER COULD HAVE BROUGHT REGARDING
`REGISTRANT’S MARK FOR “RESTAURANT SERVICES” IS PRECLUDED
`UNDER THE DOCTRINE OF RES JUDICATA.
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`Petitioner is unable to bring a Petition to Cancel based on its application for the mark
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`DAN TANA’s for “restaurant services,” through application Serial No. 86-452,290 or any other
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`application to register such a mark, because of the doctrine of res judicata. Petitioner already
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`raised – and lost on the merits – the same claim against Registrant in its predecessor-in-interest
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`Tana’s “Prior Cancellation Proceeding.”
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`Under the doctrine of res judicata or claim preclusion, the entry of a final judgment “on
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`the merits” of a claim (i.e., cause of action) in a proceeding serves to preclude the re-litigation of
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`the same claim in a subsequent proceeding between the parties or their privies, even in those
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`cases where prior judgment was the result of a default or consent. See Lawlor v. National Screen
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`Service Corp., 349 U.S. 322, 75 S.Ct. 865, 99 L.Ed. 1122 (1955); Chromalloy American Corp. v.
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`Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984); and Flowers Industries,
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`Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987). A second suit will be barred by
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`claim preclusion if there is: (1) identity of parties (or their privies); (2) an earlier final judgment
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`5
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`on the merits of a claim; and (3) a second claim based on the same set of transactional facts as
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`the first. Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir.
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`2000).
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`A.
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`Petitioner Does Not and Cannot Dispute That the Parties to the Prior
`Cancellation Proceeding Were the Same as the Ones in the Present Petition
`to Cancel.
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`The first element of claim preclusion is met because the parties to the “Prior Cancellation
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`Proceeding” were the same parties as those in the present Petition to Cancel. Notably, Petitioner
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`did not dispute in either its Petition to Cancel or in its Opposition to Registrant’s Motion to
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`Dismiss the Petition to Cancel that the parties or their privities are the same between the Prior
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`Cancellation Proceeding and the present cancellation proceeding.
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`As alleged by Petitioner in its present Petition to Cancel, “Petitioner is the owner, by
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`assignment from its predecessor Dan Tana (“Tana”), of all rights in and to the mark DAN
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`TANA’S for restaurant services.” Petition to Cancel, ¶ 1. Therefore, Petitioner (the party
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`seeking the cancellation in this action) is in privity with Tana (the party that sought cancellation
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`in the Prior Cancellation Proceeding). Moreover, Petitioner alleged that both “Petitioner’s
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`predecessor Tana and Registrant were engaged in [the Prior Cancellation Proceeding] in which
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`Registrant’s right to register and use the mark DANTANNA’S for restaurant services were
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`involved.” Petition to Cancel, ¶ 10. Accordingly, it is undisputed that both Petitioner and
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`Registrant were parties to both the Prior Cancellation Proceeding and the present Petition to
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`Cancel.
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`B.
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`Petitioner Does Not and Cannot Dispute That There Was a Final Judgment
`on the Merits in the Prior Cancellation Proceeding.
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`Similarly, the second element of claim preclusion is met, because there was a final
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`judgment on the merits in the Prior Cancellation Proceeding. Again, Petitioner did not dispute in
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`either its Petition to Cancel or in its Opposition to Registrant’s Motion to Dismiss the Petition to
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`Cancel that the Prior Cancellation Proceeding resulted in a dismissal with prejudice based on
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`Petitioner’s failure to respond to the Board’s order to show cause and Petitioner’s “apparent loss
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`6
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`of interest.”
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`Whether the judgment in the prior proceeding was the result of a dismissal with prejudice
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`or even default, it is a final judgment on the merits for claim preclusion purposes. The Urock
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`Network, LLC, 115 U.S.P.Q.2d 1409 (TTAB 2015) (citing Morris v. Jones, 329 U.S. 545, 550-51
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`(1947) (“A judgment of a court having jurisdiction of the parties and of the subject matter
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`operates as res judicata, in the absence of fraud or collusion, even if obtained upon a default.”)
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`(citation omitted); Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203 USPQ 564, 566
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`(CCPA 1979) (“Default judgments generally operate as res judicata….”) (citations omitted); see
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`also Orouba Agrifoods Processing Co. v. United Food Import, 97 USPQ2d 1310, 1314-15
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`(TTAB 2010) (granting summary judgment to registrant on claim preclusion where petitioner’s
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`prior opposition had been dismissed with prejudice for failure to prosecute the case). Here, the
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`Prior Cancellation Proceeding resulted in a dismissal with prejudice based on Petitioner’s failure
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`to respond to the Board’s order to show cause and “apparent loss of interest.” Petition to Cancel,
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`¶ 19; Taylor Decl., ¶ 14. Therefore, the Prior Cancellation Proceeding would qualify as an
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`earlier final judgment on the merits for purposes of claim preclusion.
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`In Petitioner’s Opposition to Registrant’s Motion to Dismiss, Petitioner claimed without
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`support that its Prior Cancellation Proceeding was dismissed only on “procedural grounds” and
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`never adjudicated on the merits. However, Federal Circuit and Board precedent clearly hold that
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`there is no requirement for the actual litigation of issues for claim preclusion, which instead
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`operates by virtue of a final judgment, including by default, consent, or dismissal with prejudice.
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`Young Engineers v. US Intern. Trade Com'n, 721 F.2d 1305, 1314 (Fed. Cir. 1983); The Urock
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`Network, LLC v. Umberto Sulpasso, 115 U.S.P.Q.2d 1409, at *4
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`(TTAB 2015)
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`(“Notwithstanding [Petitioner’s] contention that claim preclusion is inapplicable here because the
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`prior proceeding was ended by a ‘technical procedure,’ whether the judgment in the prior
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`proceeding was the result of a dismissal with prejudice or even default, for claim preclusion
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`purposes, it is a final judgment on the merits.”). Since it is undisputable that the Prior
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`Cancellation Proceeding was dismissed with prejudice based on Petitioner’s “apparent loss of
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`7
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`interest,” the “final judgment on the merits” element of res judicata is clearly met.
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`C.
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`The Present Petition to Cancel Is Based on the Same Set of Transactional
`Facts as the Prior Cancellation Proceeding, and Petitioner Had at Least
`Constructive or Inquiry Notice of the Possible Cause of Action for Fraud.
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`Finally, the third element of claim preclusion is met because the present Petition to
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`Cancel is based on the same set of transactional facts as the Prior Cancellation Proceeding. Both
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`cancellation actions have sought the cancellation of Registration Number 2,929,764. Petition to
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`Cancel, p. 1 and ¶ 10. Thus, at a minimum, the Prior Cancellation Proceeding precludes
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`Petitioner from bringing any claim to cancel the Registration that stems from Petitioner’s
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`application to register the DAN TANA’s mark for restaurant services in International Class 43.
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`Petition to Cancel, ¶ 6. However, the doctrine of res judicata bars not only the claims that were
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`raised, but also those that “could have been raised” in the action. Rivet v. Regions Bank of La.,
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`522 U.S. 470, 476 (1998). Despite having notice of the Declaration filed on March 8, 2010,
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`Petitioner’s predecessor-in-interest Tana made no attempt to amend its petition in the Prior
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`Cancellation Proceeding to include fraud in the Declaration as a ground for cancellation. Taylor
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`Decl., ¶ 12; see also Petition to Cancel, generally. Therefore, as Petitioner even alleges that the
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`Prior Cancellation Proceeding involved “Registrant’s right to register and use the mark
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`DANTANNA’S for restaurant services” generally (Petition to Cancel, ¶ 10), Petitioner is
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`likewise precluded from bringing any claim to cancel Registrant’s right to register and use the
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`mark DANTANNA’S on the ground of fraud, including a claim stemming from Petitioner’s
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`application Serial No. 86-452,382 for marinara sauce. Petition to Cancel, ¶ 6. Consequently, the
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`entire Petition to Cancel is precluded under the doctrine of res judicata.
`1.
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`The Prior Cancellation Proceeding Involved the Same Transactional
`Facts as the Present Cancellation Proceeding.
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`Petitioner has contended that the Prior Cancellation Proceeding did not involve the same
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`transactional facts as the present proceeding, even though: (i) both were petitions to cancel
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`Registrant’s Registration No. 2,929,764 for the mark DANTANNA’s for restaurant services; (ii)
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`in which Petitioner claimed damages to its own DAN TANA’S mark for restaurant services; (iii)
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`8
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`resulting from the USPTO’s issuing Office Actions refusing Petitioner’s applications to register
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`its mark because of a likelihood of confusion with Registrant’s mark under § 2(d) of the Lanham
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`Act, 15 U.S.C. § 1052(d). See Taylor Decl., Exhibit B at p. 1-2; Petition to Cancel, p. 1-3.1
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`Thus, the subject and prayer for relief of the petitions are the same, the claimed damages are the
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`same, and the cause of the damages are the same. Id. These compose the same core or nucleus
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`of operative facts, notwithstanding Petitioner’s attempt to distinguish its second petition to
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`cancel by pointing to its new ground of fraud, which it could have raised in the first petition to
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`cancel.
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`Contrary to the Petitioner’s suggestion, neither the specific ground of fraud nor the
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`specific facts on which the claim is based need to have been actually raised in the Prior
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`Cancellation Proceeding. Rather, “[t]his bar extends to relitigation of ‘claims that were raised or
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`could have been raised’ in an earlier action. The Urock Network, 115 U.S.P.Q.2d 1409, at *4
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`(TTAB 2015) (citing Allen v. McCurry, 449 U.S. 90, 94 (1980); Migra v. Warren City School
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`Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984)) (emphasis in original). Thus, “[c]laim preclusion
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`refers to the effect of a judgment in foreclosing litigation of a matter that never has been
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`litigated, because of a determination that it should have been advanced in an earlier suit.” Jet,
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`Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000). While the Board and the
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`Federal Circuit recognize that an infringement action in district court generally differs from a
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`cancellation proceeding before the Board for claim preclusion purposes, such a distinction does
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`not exist if a plaintiff’s two actions shared a common basis and pursued the same prayer for
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`relief to prevent the defendant’s ability to register its mark. Sharp Kabushiki Kaisha a/k/a Sharp
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`Corp., 91154103, 2012 WL 2930648, at *2-3 (TTAB 2012) (contrasting Jet, 223 F.3d at 1364).
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`As recognized by Petitioner, the Federal Circuit is guided by the Restatement (Second) of
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`Judgments in determining whether a plaintiff's claim in a particular case is barred by claim
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`1 Moreover, Petitioner repeatedly notes that both the Prior Cancellation Proceeding and the Civil Action involved
`“Registrant’s right to register and use the mark DANTANNA’S for restaurant services” and “Registrant’s right to
`register and use the mark that is the subject of the Registration and to keep the mark on the register.” Petition to
`Cancel, ¶¶ 10, 26, 27, 32. This is again the subject of the present cancellation proceeding.
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`9
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`

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`
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`preclusion. The Urock Network, 115 U.S.P.Q.2d 1409, at *5 (TTAB 2015); Young Engineers,
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`721 F.2d at 1314. The Restatement provides that:
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`(1) When a valid and final judgment rendered in an action extinguishes the
`plaintiff's claim pursuant to the rules of merger or bar . . . the claim
`extinguished includes all rights of the plaintiff to remedies against the
`defendant with respect to all or any part of the transaction, or series of
`connected transactions, out of which the action arose.
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`(2) What factual grouping constitutes a “transaction”, and what grouping
`constitutes a “series”, are to be determined pragmatically, giving weight
`to such considerations as whether the facts are related in time, space,
`origin or motivation, whether they form a convenient trial unit, and
`whether their treatment as a unit conforms to the parties' expectations or
`business understanding or usage.
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`Id. (emphasis added). Although Petitioner stresses the fact that it is bringing a different “cause
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`of action” in the present Petition to Cancel, the “Restatement speaks in terms of claims and does
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`not make reference to ‘causes of action,’” since “generally, reference to a ‘cause of action’ in this
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`connection leads to consideration of what have come to be regarded as irrelevant matters.”
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`Young Engineers, 721 F.2d at 1314 n.6 (emphasis in original). For instance, a party may be
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`precluded from bringing a petition to cancel on the theory or cause of action of abandonment
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`even when its earlier petition to cancel was based on a theory or cause of action for fraud. See
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`Vitaline Corp. v. Gen. Mills, Inc., 891 F.2d 273, 275 (Fed. Cir. 1989).
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`The facts of this case closely resemble those in S Industries, Inc. and Central Mfg. Co. v.
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`Covington Industries, Inc., in which the Board precluded a petition to cancel on the grounds of
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`fraud and abandonment that “could have been brought together” with a previous petition to
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`cancel on the ground of likelihood of confusion under Section 2(d). S Industries, Inc. and
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`Central Mfg. Co. v. Covington Industries, Inc. 69, 2002 WL 31651761, at *5 (TTAB 2002). The
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`Board concluded that the claims in these two petitions were “the same” since “[b]oth petitions
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`seek the same relief (the cancellation of the same registration) for at least overlapping reasons
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`(petitioner is the owner of the same registration and that petitioner will be damaged by the
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`continuing presence of that registration on the register).” Id. Although the Board in S Industries
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`ultimately precluded only the abandonment claim and not the fraud claim, this was because the
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`petitioner “could not have” raised the fraud claim in the first cancellation action since it was
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`based on an affidavit submitted on December 9, 1994, i.e., well after the first cancellation was
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`dismissed with prejudice on April 28, 1993. See S Indus., Inc., 69, 2002 WL 31651761, at *5, 8
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`(TTAB 2002); see also Taylor Decl., Exhibit J.2 Thus, the only reason the fraud cause of action
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`was not precluded like the abandonment cause of action in that case was because the petitioner
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`truly had no claim yet. Here, however, Petitioner easily “could have raised” the fraud claim at
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`issue in the present Petition to Cancel well before the Prior Cancellation Proceeding was
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`dismissed with prejudice. Unlike in S Industries, the USPTO issued the Combined Notice of the
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`Declaration on March 26, 2010 over eight months before the Board dismissed the Prior
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`Cancellation Proceeding on December 14, 2010. Petition to Cancel, ¶¶ 19, 37; Taylor Decl., ¶ 7,
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`Exhibit D.
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`Thus, it is immaterial to the claim preclusion analysis that Petitioner is now bringing a
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`cause of action for fraud when it previously brought a cause of action for likelihood of
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`confusion. Both causes of action are part of the same claim for cancellation of the Registration
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`based upon alleged damages to Petitioner’s mark.
`2.
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`Petitioner Had Either Constructive or Inquiry Notice of the Cause of
`Action for Fraud During the Prior Cancellation Proceeding.
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`Because Petitioner had either constructive or inquiry notice of the Declaration over eight
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`months prior to when the Prior Cancellation Proceeding was terminated, it could easily have
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`amended its previous petition to cancel to include the cause of action for fraud. A party is
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`charged with “constructive notice” of a public record of a registration on the principal register.
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`Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359,
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`1362 (Fed. Cir. 2001); Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 U.S.P.Q.2d
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`1203, at *9 (TTAB 2006). Additionally, a party is charged with “inquiry notice” when
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`circumstances would lead a reasonable person to begin investigating the possibility that his legal
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`rights had been infringed. See Merck & Co., Inc. v. Reynolds, 130 S. Ct. 1784, 1797 (2010). A
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`2 The Board may take notice of filings in other TTAB proceedings. The Urock Network, 115 U.S.P.Q.2d 1409, at *6
`n.10 (TTAB 2015) (citing Kraft, Inc. v. Balin, 209 USPQ 877, 881 n.8 (TTAB 1981)).
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`party’s “constructive or inquiry notice” of publicly recorded documents “renders any claims
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`stemming from these documents as barred by res judicata, as such claims could have and should
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`have been brought” in the first action. See Carlisle v. Matson Lumber Co., 186 F. App'x 219,
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`224 (3d Cir. 2006).
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`Although Petitioner insists it did not have notice of the Combined Declaration such that it
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`“could have raised” its cause of action for fraud in the Prior Cancellation Proceeding, Petitioner
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`had at least constructive notice or inquiry notice of it when the USPTO issued its public record
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`of the Combined “Notice” of the Declaration. See Petition to Cancel, ¶ 37; Taylor Decl. ¶ 7; see
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`also In re Shell Oil Co., 992 F. 2d 1204, 1207 n.3 (Fed. Cir. 1993) (the Board may take judicial
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`notice of agency action relating to declarations under Sections 8 and 15, since it is an
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`adjudicative fact of a “public record”). Petitioner had at least constructive notice of both the
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`Declaration and the Combined Notice of the Declaration when they were publicly recorded by
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`the USPTO. Petitioner also had inquiry notice of both the Declaration and the Combined Notice,
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`since it was actively seeking to cancel the Registration at the time when the Declaration and the
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`Combined Notice were publicly recorded and had a motivation to track any filings pertaining to
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`the Registration.
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`Petitioner had this constructive or inquiry notice of the Declaration and the Combined
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`“Notice” for over eight months before the Board dismissed the Prior Cancellation Proceeding
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`with prejudice. See Petition to Cancel, ¶¶ 19, 37; Taylor Decl., ¶ 7. In fact, on September 7,
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`2010, the Board even issued an order roughly five months after the Combined Notice that
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`instructed Petitioner to amend its petition to cancel from the Prior Cancellation Proceeding for
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`other grounds. See Petition to Cancel, ¶37; Taylor Decl., ¶ 10, Exhibit F. The Board then issued
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`a subsequent order on October 26, 2010 for Petitioner to show cause why the Prior Cancellation
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`Proceeding should not be dismissed with prejudice. Taylor Decl., ¶ 13, Exhibit H. Instead of
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`taking any action, however, Petitioner displayed an “apparent loss of interest,” and the Board
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`dismissed its Prior Cancellation Proceeding with prejudice. Taylor Decl., ¶ 14, Exhibit I.
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`Petitioner cannot argue that it had no notice of the resumption of the Prior Cancellation
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`Proceeding, since Registrant served a copy of its request to remove the suspension of the
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`proceedings to the Petitioner. Taylor Decl., ¶ 11, Exhibit G; Petition to Cancel, ¶ 18.
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`Accordingly, given the ample amount of time the Board afforded to the Petitioner to
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`amend its petition in the Prior Cancellation Proceeding, as well as the clear motivation that
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`Petitioner had to track the status of the Registration it was actively seeking to cancel, Petitioner
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`easily “could have” amended its petition to include the cause of action raised in the present
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`Petition to Cancel. Petitioner’s claim for fraud is thus precluded under the doctrine of res
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`judicata.
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`V.
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`CONCLUSION
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`Based on the foregoing, Registrant respectfully requests that the Board dismiss the
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`Petitioner’s Petition to Cancel.
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`Dated: January 25, 2016
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`
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`Respectfully submitted,
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`PROCOPIO, CORY, HARGREAVES
` & SAVITCH LLP
`
`
`
`
`
`/Lisel M. Ferguson/
`By:
`Lisel M. Ferguson
`Procopio, Cory, Hargreaves & Savitch LLP
`525 B Street, Suite 2200
`San Diego, CA 92101
`Telephone: (619) 238-1900
`Facsimile: (619) 235-0398
`Email: lmf@procopio.com
`
`Attorneys for Applicant
`GREAT CONCEPTS, LLC
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing GREAT CONCEPTS,
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`LLC’S MOTION FOR SUMMARY JUDGMENT UNDER FED.R.CIV.P. 56 REGARDING
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`CHUTTER, INC.’S PETITION TO CANCEL is being mailed via United States mail, postage
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`prepaid and sent electronically, on January 25, 2016 to the counsel for Registrant as follows:
`
`Bruce W. Baber
`King & Spalding LLP
`1180 Peachtree St