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This Opinion is a
`Precedent of the TTAB
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`CME
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`Mailed: August 29, 2016
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`Cancellation No. 92062824
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`NH Beach Pizza LLC
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`v.
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`Before Shaw, Adlin and Heasley,
`Administrative Trademark Judges.
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`Cristy’s Pizza Inc.
`
`
`By the Board:
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`This case now comes up on Respondent’s motion, filed January 25, 2016, for
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`summary judgment on the ground that Petitioner’s claims are barred by issue
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`preclusion, traditionally called collateral estoppel.1 The motion is fully briefed.
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`Background
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`1. Current Action
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`Petitioner seeks cancellation of Registration No. 4503226 for the mark BEACH
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`PIZZA, in standard character form, for “pizza.”2 In its petition, Petitioner alleges that
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`it “will be damaged should it be prevented from using the generic term ‘beach pizza’
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`1 Respondent’s motion, which it filed in lieu of an answer, is captioned as a motion to dismiss
`and refers to Fed. R. Civ. P. 12(b)(6). The Board issued an order on February 4, 2016 (the
`“Prior Order”) explaining that the motion does not challenge the sufficiency of Petitioner’s
`pleading, but rather seeks dismissal of the proceeding based on issue preclusion. 5 TTABVUE
`1. Accordingly, as was explained in the Prior Order, the motion is treated as a motion for
`summary judgment on issue preclusion. Id.
`2 Registered March 25, 2014 based on an application filed on May 3, 2013.
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`

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`Cancellation No. 92062824
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`in the advertising and sale of its goods, and [it] has received consumer claims of
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`likelihood of confusion with the mark by [Respondent].” 1 TTABVUE 4. As grounds
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`for cancellation, Petitioner alleges genericness, descriptiveness, geographic
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`descriptiveness, fraud, and abandonment.
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`2. Prior Action
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`On April 2, 2014, Petitioner filed Cancellation No. 92058955 against the same
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`registration involved here (the “Prior Action”). In the Prior Action, Petitioner alleged
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`that it would be “damaged should it be prevented from using the generic term ‘beach
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`pizza’ in the advertising of its goods, and [it] has received claims of likelihood of
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`confusion with the mark by [Respondent].” 4 TTABVUE 17. Petitioner pleaded the
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`same grounds for cancellation that it pleads in this proceeding. Id. at 15-19.
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`On November 20, 2015, following trial and briefing, the Board dismissed the Prior
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`Action for lack of standing, finding that Petitioner “failed to establish a ‘real interest’
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`and ‘reasonable belief in damage.’”3 Id. at 32. Specifically, the Board found that the
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`record was “utterly devoid of any evidence concerning the nature of Petitioner’s
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`commercial activities and its interest in Respondent’s registered BEACH PIZZA
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`mark.” Id.
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`The Parties’ Arguments
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`Respondent argues that “Petitioner is barred by collateral estoppel from
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`instituting this cancellation proceeding” because “the Board’s decision in the [Prior
`
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`3 The Board also deemed Petitioner’s claims of geographic descriptiveness and abandonment
`waived because Petitioner did not assert these claims at trial. 4 TTABVUE 22 n.2.
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`-2-
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`

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`Cancellation No. 92062824
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`Action] is conclusive as to Petitioner’s lack of standing to challenge the BEACH
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`PIZZA trademark registration.” 4 TTABVUE 2-3. In support of its position,
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`Respondent argues that “courts have … held that a party adjudged to lack standing
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`to bring a claim is barred by collateral estoppel from bringing the same claim in the
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`second action,” id. at 5-6; that the petition for cancellation here is “factually identical”
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`to the petition for cancellation filed in the Prior Action, and “Petitioner alleges no
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`intervening change in the facts or legal principals [sic] animating its claims,” id. at
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`7; that Petitioner “was given a full and fair opportunity to litigate its claims,” id. at
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`7-8; and that standing was “actually litigated” in the Prior Action as “[t]he Board set
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`forth an in-depth analysis of Petitioner’s standing,” finding “that while the Petitioner
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`could have submitted testimony or competent documentary evidence as to its asserted
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`need to use the term BEACH PIZZA and the nature of its business activities to
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`establish its standing, it did not do so.” Id. at 7.
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`In opposition to the motion, Petitioner argues that the “Federal Circuit has found
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`that dismissals for lack of standing should be without prejudice,” 6 TTABVUE 8; that
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`the Board’s dismissal of the Prior Action “was made without prejudice” and “[a]
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`collateral estoppel claim would seek to undo this holding by functionally transforming
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`[sic] into a dismissal with prejudice,” id.; that “the issue of standing was not argued
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`or otherwise litigated by the parties,” and the claims, “while argued by the parties,
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`were not decided by the Board,” id. at 5; that “there exist numerous genuine issues of
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`fact pertaining to the issue of Petitioner’s current standing to bring this proceeding”
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`as Petitioner has attached to its response brief its “official Certificate of Organization
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`-3-
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`Cancellation No. 92062824
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`for Massachusetts clearly show[ing] that Petitioner is in the business of selling pizza
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`to the public and uses the generic term ‘beach pizza’ in doing so” and cease and desist
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`letters that Respondent sent to Petitioner demonstrating that Respondent “views
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`Petitioner as a competitor and threat to its business...[,]” id. at 6; that based on such
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`evidence “Petitioner has clearly demonstrated the ability to cure any standing
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`problems…,” id. at 8; and that “[t]he previous proceeding also established that
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`[Respondent] could produce no evidence as to its first use in commerce, and the
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`prosecution history [of the involved registration] inferred fraud in obtainment of the
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`mark….” Id. at 3.
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`Respondent is Entitled to Judgment
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`Whether issue preclusion applies to bar an action is a question of law. Levi Strauss
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`& Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1171
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`(Fed. Cir. 2013). Accordingly, when the facts material to issue preclusion are not in
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`dispute, summary judgment is appropriate. Fed. R. Civ. P. 56(a).
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`Here, Petitioner has not identified any genuine disputes of fact that are material
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`to the preclusion question presented. Instead, Petitioner asserts legal arguments
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`regarding why issue preclusion should not bar this proceeding. For the reasons
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`discussed below, we find Petitioner’s legal arguments unpersuasive, and therefore,
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`Respondent is entitled to summary judgment as a matter of law.
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`1. Issue Preclusion Applies to Board Determinations of Standing
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`Issue preclusion bars the re-litigation of the same issue in a second action. B & B
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`Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2051 (2015).
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`-4-
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`Cancellation No. 92062824
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`Several federal courts of appeal, including our primary reviewing court, the Federal
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`Circuit, have applied issue preclusion to bar the re-litigation of standing. See, e.g.,
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`Ammex, Inc. v. United States, 384 F.3d 1368 (Fed. Cir. 2004) (finding under Federal
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`Circuit law that issue preclusion barred the plaintiff’s claims because the same
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`issues, including whether plaintiff had standing to bring a claim pursuant to the
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`Export Clause of the Constitution, were decided by the Sixth Circuit); V&M Mgmt.,
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`Inc. v. Farrell, 321 F.3d 6, 9 (1st Cir. 2003) (explaining that issue preclusion barred
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`plaintiff from re-litigating its standing).
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`Moreover, unlike in a federal court – where a plaintiff must demonstrate a “case
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`or controversy” between itself and the defendant to have standing and for the court
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`to have jurisdiction, and thus, is an issue usually addressed in pretrial motions – in
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`a Board proceeding, standing is often not addressed until the trial stage. Compare
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`Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 102 (1998) and Nat’l Org. for
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`Women, Inc. v. Scheidler, 510 U.S. 249, 255 (1994) with Ritchie v. Simpson, 170 F.3d
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`1092, 1098, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and Lipton Indus., Inc. v. Ralston
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`Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Accordingly, it is
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`particularly apt that issue preclusion may bar a plaintiff from re-litigating a standing
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`determination made in a prior Board proceeding.
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`2. The Elements of Issue Preclusion Are Satisfied
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`Now that we have determined that issue preclusion may bar the re-litigation of
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`standing, we consider whether the elements of issue preclusion have been satisfied
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`here. The application of issue preclusion requires: (1) identity of an issue in the
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`-5-
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`

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`Cancellation No. 92062824
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`current and a prior proceeding; (2) actual litigation of that issue in the prior
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`proceeding; (3) that determination of the issue was necessary in entering judgment
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`in the prior proceeding; and (4) that the party with the burden of proof on that issue
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`in the second proceeding had a full and fair opportunity to litigate the issue in the
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`prior proceeding. See Montana v. United States, 440 U.S. 147, 153-54 (1979). There
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`are no genuine disputes of material fact that each of the elements of issue preclusion
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`has been met here.
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`With respect to the first element, Petitioner pleads the same basis for standing
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`here that it pleaded in the Prior Action, namely, that it uses “the generic term ‘beach
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`pizza’” to promote its goods and that Respondent has asserted that such use has
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`caused actual consumer confusion. 1 TTABVUE 3-4 and 4 TTABVUE 17. Accordingly,
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`the issue of standing in this proceeding is identical to the issue of standing in the
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`Prior Action.
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`Turning to the second factor, standing is a threshold issue that must be proven in
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`every inter partes proceeding, and the Board decided the issue of standing in the Prior
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`Action after a full trial. 4 TTABVUE 32. Accordingly, standing was actually litigated
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`in the Prior Action. See James Talcot, Inc. v. Allahabad Bank Ltd., 444 F.2d. 451,
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`459-60 (5th Cir. 1971) (“[W]here a question of fact is put in issue by the pleadings,
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`and is submitted to the jury or other trier of facts for its determination, and is
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`determined, that question of fact has been ‘actually litigated’” for purposes of issue
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`preclusion). The fact that the decision in the Prior Action was based on Petitioner’s
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`failure to introduce any evidence regarding its alleged standing does not change that
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`-6-
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`

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`Cancellation No. 92062824
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`the issue of standing was “actually litigated.” See Nichols & Co. v. United States, 586
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`F.2d 826, 829 (C.C.P.A. 1978) (“[A]n issue is actually litigated for purposes of
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`collateral estoppel even though the determination is based on a failure of proof.”); see
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`also Peck v. Comm’r, 904 F.2d 525, 530 (9th Cir. 1990) (“If [the litigants’] case was
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`not effectively presented at the first trial it was their fault; affording them a second
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`opportunity in which to litigate the matter, with the benefit of hindsight, would
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`contravene the very principles upon which collateral estoppel is based and should not
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`be allowed.”) (quoting Jones v. United States, 466 F.2d 131, 136 (10th Cir 1972)).
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`Petitioner argues that the Prior Action was “dismissed without prejudice.” This
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`is incorrect. The Prior Action was simply “dismissed.” 4 TTABVUE 32. In any event,
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`under principles of issue preclusion, even a case dismissed without prejudice has
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`preclusive effect on the issues actually litigated. See Perry v. Sheahan, 222 F.3d 309,
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`318 (7th Cir. 2000) (claim preclusion may not apply to determinations of standing,
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`but issue preclusion will bar the re-litigation of the same standing argument in a
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`second proceeding); Cutler v. Hayes, 818 F.2d 879, 888-99 (D.C. Cir. 1987)
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`(recognizing that claim preclusion may not attach where a prior case was determined
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`on the issue of standing, but finding that “[p]rinciples of collateral estoppel [also
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`known as issue preclusion] clearly apply to standing determinations”); Shaw v.
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`Merritt-Chapman & Scott Corp., 554 F.2d 786, 789 (6th Cir. 1977) (“[W]hile a
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`dismissal for lack of jurisdiction does not constitute an adjudication upon the merits,
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`it does constitute a binding determination on the jurisdictional question, which is not
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`subject to collateral attack.”).
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`-7-
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`

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`Cancellation No. 92062824
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`Petitioner further argues that it should be allowed “to cure the standing problem,”
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`and in support thereof cites two cases in which the Federal Circuit vacated a district
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`court’s dismissal of a patent infringement action “with prejudice” for lack of standing.
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`Univ. of Pitt. v. Varian Med. Sys., Inc., 569 F.3d 1328, 91 USPQ2d 1251, 1256 (Fed.
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`Cir. 2009); Fieldturf, Inc. v. Sw. Recreational Indus., Inc., 357 F.3d 1266, 69 USPQ2d
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`1795 (Fed. Cir. 2004). In the cited cases, either the wrong party filed the action or a
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`potentially necessary party was not joined as a plaintiff to the proceeding, and
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`dismissal of the action “with prejudice” would have deprived the proper plaintiff(s) of
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`an opportunity to pursue relief. This proceeding is not procedurally analogous to the
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`cited cases. In both this proceeding and the Prior Action, the same, sole, correct party
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`(i.e. Petitioner) pleaded a sufficient basis for standing. Petitioner simply failed to
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`carry the burden of proving its standing in the Prior Action.
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`Petitioner could have rectified its evidentiary deficiencies by pursuing an appeal
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`of the Board’s decision pursuant to Section 21(b) of the Trademark Act, 15 U.S.C.
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`§ 1071(b), which would have allowed Petitioner an opportunity to submit new
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`evidence regarding its standing. Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150,
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`109 USPQ2d 1291, 1295 (4th Cir. 2014) (where an appeal of a TTAB decision is made
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`pursuant to Section 1071(b) of the Trademark Act “the parties have an unrestricted
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`right to submit further evidence as long as it is admissible under the Federal Rules
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`of Evidence and Civil Procedure”); see also Kappos v. Hyatt, 132 S. Ct. 1690, 102
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`USPQ2d 1337, 1339-40 (2012) (interpreting Section 1071(b)’s patent parallel, 35
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`U.S.C. § 145). Petitioner, however, took no such action. Shaw, 554 F.2d at 789-90
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`-8-
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`

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`Cancellation No. 92062824
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`(plaintiffs who failed to file an appeal were bound by the prior decision and “precluded
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`from bringing a subsequent suit, asserting essentially the same claims, citing the
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`same jurisdictional basis”).
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`Moreover, this is not a case where there has been a change of circumstances with
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`respect to standing. Instead, the evidence that Petitioner asserts would prove its
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`standing – e.g. Petitioner’s certificate of organization and cease and desist letters that
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`Respondent sent Petitioner – existed at the time Petitioner filed the Prior Action.
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`Accordingly, this evidence does not defeat the application of issue preclusion. Cf.
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`V&M Mgmt., 321 F.3d at 9 (“To the extent [the plaintiff] now seeks to add … new (but
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`previously available) factual allegations to establish his standing to bring the present
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`claims, such assertions do not defeat the bar of issue preclusion”); Perry, 222 F.3d at
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`318 (“[W]here a prior suit is dismissed for lack of jurisdiction, the inclusion of
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`additional factual allegations on the jurisdictional issue will not avoid issue
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`preclusion when those facts were available at the time the original complaint was
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`filed. Only facts arising after the complaint was dismissed – or at least after the final
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`opportunity to present the facts to the court – can operate to defeat the bar of issue
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`preclusion.”).
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`The third factor of issue preclusion also has been met, as the Board’s
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`determination that Petitioner failed to prove its standing was necessary to the
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`Board’s decision in the Prior Action. Indeed, it was the reason that the Board
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`dismissed the Prior Action.
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`-9-
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`Cancellation No. 92062824
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`Last, the fourth factor of issue preclusion has been satisfied as Petitioner was fully
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`represented in the Prior Action and had a full and fair opportunity to introduce
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`testimony or other evidence on the issue of its standing. It simply failed to do so.
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`Conclusion
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`In view of the foregoing, Respondent’s motion for summary judgment is
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`GRANTED. Because issue preclusion bars Petitioner from re-litigating the issue of
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`standing decided in the Prior Action, Petitioner cannot prove the threshold
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`requirement of standing in this proceeding. Accordingly, the petition for cancellation
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`is DISMISSED WITH PREJUDICE.
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`***
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`-10-

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