Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1239095
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`Filing date:
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`09/30/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92079964
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Cambria Company LLC
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`KRISTEN MCCALLION
`FISH & RICHARDSON P.C.
`PO BOX 1022
`MINNEAPOLIS, MN 55440-1022
`UNITED STATES
`Primary email: tmdoctc@fr.com
`Secondary email(s): mccallion@fr.com, cheng@fr.com, loganzo@fr.com
`2126415070
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`Opposition/Response to Motion
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`Darra Loganzo
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`loganzo@fr.com, mccallion@fr.com, cheng@fr.com
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`/Darra Loganzo/
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`09/30/2022
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`2022-09-30 Cambria Opp to Respondents MTD MSJ.pdf(734905 bytes )
`Ex. 1 - Excerpt of Lakeside Opp to Mot to Amend.pdf(99431 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
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`Cambria Company LLC,
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` Petitioner,
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` v.
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`Lakeside Surfaces, LLC,
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` Respondent.
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`
`
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`Cancellation No. 92079964
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`Mark: THE FINEST COUNTERTOP
`MAKERS IN THE WORLD
`
`
`Registration No. 4957640
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`Registration Date: May 10, 2016
`
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`PETITIONER’S OPPOSITION TO RESPONDENT’S MOTION TO DISMISS, OR
`ALTERNATIVELY, MOTION FOR SUMMARY JUDGMENT
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`

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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION .............................................................................................................3
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`II.
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`RELEVANT FACTUAL AND PROCEDURAL BACKGROUND ................................4
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`III.
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`ARGUMENT .....................................................................................................................6
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`A.
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`B.
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`There Was No Final Judgment on the Merits ........................................................6
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`The 2020 Action and This Cancellation Proceeding Are Not
`Based on the Same Set of Transactional Facts ......................................................9
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`1.
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`2.
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`Priority and Likelihood of Confusion ........................................................9
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`Fraud and Lack of Ownership..................................................................12
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`IV.
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`CONCLUSION ................................................................................................................16
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`2
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`Petitioner Cambria Company LLC (“Cambria” or “Petitioner”) hereby opposes Lakeside
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`Surfaces, LLC’s (“Respondent’s” or “Lakeside’s”) Motion to Dismiss, or Alternatively, Motion
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`for Summary Judgment (“Motion”).
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`I.
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`INTRODUCTION
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`Respondent’s Motion should be denied because it is based on the misapplication of claim
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`preclusion and because Respondent conceded in the prior action that Cambria could still petition
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`for cancellation. As alleged in Cambria’s Petition for Cancellation, Respondent fraudulently filed
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`a trademark application asserting ownership of Cambria’s trademark “FINEST COUNTERTOP
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`MAKERS IN THE WORLD” while knowing that the mark is owned and had been used by
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`Cambria long before Respondent’s false claim of ownership. Respondent now seeks to keep its
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`ill-gotten Registration No. 4,957,640 (the “Registration”) by seeking dismissal of this cancellation
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`proceeding based on claim preclusion despite previously acknowledging Cambria’s ability to seek
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`cancellation of the Registration in the USPTO. Respondent omitted this fact from its Motion.
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`But even putting aside this concession, Respondent cannot show that there has been a final
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`judgment on the merits in a prior lawsuit on a claim based on the same set of transactional facts as
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`the three grounds for cancellation asserted here. In fact, the very Joint Stipulation on which
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`Respondent relies shows that the parties agree that judgment has not been entered in the prior court
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`action yet. And, as Respondent notes, the complaint in the prior lawsuit “did not specifically seek
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`cancellation of Lakeside’s [Registration].” 7 TTABVUE 7. Still, Respondent glosses over the
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`lack of fraud and non-ownership cancellation claims in the prior lawsuit and the significant
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`differences between an infringement claim before a court and a cancellation claim before the
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`Board.
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`As Respondent itself notes, the doctrine of res judicata or claim preclusion serves to
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`“preclude certain attempts at second litigation chances, but only in defined circumstances,
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`3
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`

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`reflecting the need to avoid depriving litigants of their first chances.” Levi Strauss & Co. v.
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`Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1371, 107 USPQ2d 1167, 1171 (Fed. Cir. 2013)
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`(quoted at 7 TTABVUE 9). This is not one of those limited circumstances. Cambria is seeking to
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`cancel the Registration based on fraud, lack of ownership, and priority and likelihood of confusion
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`for the first time. The Board should deny Respondent’s motion and permit this cancellation to
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`proceed on the merits.
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`II.
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`RELEVANT FACTUAL AND PROCEDURAL BACKGROUND
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`Cambria is a well-known U.S. manufacturer of natural quartz surface products used for a
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`variety of uses in homes and businesses including for countertops, floor tiles, vanities, fireplace
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`surrounds, wet bars, and showers. Cambria is an industry leader in the design and manufacture of
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`natural quartz surface products earning its reputation as a leader in the industry through years of
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`innovation and a steadfast commitment to high quality in the design and manufacture of its
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`products.
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`Respondent is a fabricator of quartz and other countertop surface products that was
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`formerly an authorized distributor of Cambria’s quartz surface products in Michigan. In 2020,
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`Cambria filed an action against Lakeside in the U.S. District Court for the Western District of
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`Michigan, No. 1:20-cv-00508 (the “2020 Action”), alleging four counts: (1) patent infringement,
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`(2) federal trademark infringement, (3) federal unfair competition and false designation of origin,
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`and (4) state unfair competition. Counts 2–4 in the 2020 Action were based on Lakeside’s
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`unauthorized adoption and use of Cambria’s common law tagline “FINEST COUNTERTOP
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`MAKERS IN THE WORLD,” which Cambria has used for nearly a decade to promote and sell its
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`quartz surface products and related fabrication services for those products.
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`At the time, Cambria suspected that Lakeside obtained the Registration through fraud, but
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`did not plead fraud in the 2020 Action given the serious nature of this claim and the need to plead
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`4
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`fraud with particularity in accordance with Federal Rules 9(b) and 11. Later, through emails and
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`deposition testimony obtained by Cambria in discovery in the 2020 Action, Cambria discovered
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`facts that confirmed its suspicion of Lakeside’s intent to defraud the USPTO. 7 TTABVUE 65–
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`69, 71–72 (Ex. G at 2–6, 8–9). Cambria therefore moved to amend its complaint in the 2020
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`Action to add counts for fraudulent registration under 15 U.SC. § 1120 and cancellation of the
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`Registration under 15 U.S.C. § 1119 based on fraud. 7 TTABVUE 64. In its motion to amend,
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`Cambria noted that should the court deny its motion, Cambria would be “forced to pursue its
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`allegations of fraud either in a new case filed in this district . . . or in a proceeding before the
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`USPTO.” 7 TTABVUE 73 (Ex. G at 10). Lakeside opposed the amendment. Notably, Lakeside
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`agreed that the Court’s denial of Cambria’s motion would mean that Cambria could proceed to
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`allege fraud in the USPTO. Exhibit 1 (excerpt of Lakeside’s Memorandum in Opposition to
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`Cambria’s Motion for Leave to Amend Complaint) at 5 n.5 (“If this Court denies Cambria’s
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`Motion, Cambria can seek the exact same relief as in [the proposed count for cancellation of the
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`Registration] in the Trademark Office by filing what is called a Cancellation Petition, raising the
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`same arguments.” (emphasis added)). The court denied Cambria’s motion to amend based solely
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`on the timing of the proposed amendment and not on the merits of the proposed claims. The court
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`declined to address Lakeside’s argument that amendment was futile. After the court’s denial of
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`Cambria’s motion, Cambria promptly filed a Petition for Cancellation before the Board seeking
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`cancellation of the Registration—just as the parties anticipated and Respondent put forward as a
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`reason for the district court to deny adding the claim to that case. Cambria now seeks cancellation
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`of the Registration based on fraud in the procurement of the registration, Lakeside’s lack of
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`ownership of the mark rendering the application void ab initio, and priority and likelihood of
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`confusion with Cambria’s mark. See 1 TTABVUE.
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`5
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`In the 2020 Action, the parties also stipulated to the dismissal of Cambria’s trademark
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`infringement and unfair competition claims in “an effort to streamline the issues for adjudication.”
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`7 TTABVUE 36–39 (Ex. B, Joint Stipulation and Order of Dismissal Regarding Cambria’s
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`Complaint Counts 2-4 (“Joint Stipulation”)). As detailed below, the plain language of the Joint
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`Stipulation shows that there was no final judgment on Cambria’s trademark claims in the 2020
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`Action, much less a final judgment on the merits of the fraud or non-ownership grounds for
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`cancellation, which were never part of the federal suit.
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`III. ARGUMENT
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` Claim preclusion does not apply to any ground in this cancellation proceeding because
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`there was no final judgment and none of the cancellation grounds are based on the same set of
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`transactional facts as the prior trademark infringement claims. To succeed on its motion based on
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`claim preclusion, Respondent must show that: (1) there is an identity of parties or their privities
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`between the 2020 Action and this proceeding; (2) there was an earlier final judgment on the merits
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`of a claim in the 2020 Action; and (3) each of the grounds for cancellation of the Registration—a
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`likelihood of confusion with Cambria’s prior common law trademark, Lakeside’s fraud in the
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`procurement of the Registration, and that Respondent was not the rightful owner of the mark—is
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`based on the same set of transactional facts as the trademark claim in the 2020 Action. Jet Inc. v.
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`Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000). Cambria does not
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`dispute that there is identity of the parties and therefore focuses on Respondent’s failure to prove
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`the two other requirements for claim preclusion: a final judgment on the merits and claims based
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`on the same set of transactional facts.
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`A.
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`There Was No Final Judgment on the Merits
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`There was no final judgment on the merits on Cambria’s federal trademark infringement,
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`unfair competition and false designation of origin, and state unfair competition claims in the 2020
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`6
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`Action. “[A] federal judgment ordinarily is effective only after it has been set forth in a separate
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`document and entered into the civil docket by the clerk.” 18 Moore’s Federal Practice - Civil
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`§ 131.30 (2022) (citing FED R. CIV. P. 58, 79(a)). Respondent admits that “the 2020 action is still
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`pending and there is no stand-alone document entitled ‘Final Judgment’ which has . . . been
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`entered.” 7 TTABVUE 13. It merely argues that under Rule 54(b), “the court may direct entry of
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`a final judgment as to one or more, but fewer than all, claims . . . .” (id. (quoting FED. R. CIV. P.
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`54(b) (emphasis added)), stopping short of arguing that this is what the district court actually did
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`in the 2020 Action (it did not). That is because, under Rule 58(a), “[e]very judgment and amended
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`judgment must be set out in a separate document . . .” (except for limited exceptions not relevant
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`here). Such a judgment is considered “entered” only when “the judgment is entered in the civil
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`docket under Rule 79(a) and the earlier of these events occurs: (A) it is set out in a separate
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`document; or (B) 150 days have run from the entry in the civil docket.” FED. R. CIV. P. 58(c)(2)
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`(emphasis added). There is no dispute that no such separate judgment was entered in the 2020
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`Action.
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`In fact, the parties agreed in the Joint Stipulation to delay the entry of judgment until after
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`the still pending patent infringement claim against Respondent is resolved. The Joint Stipulation
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`expressly states that a “Final Judgment” would be entered sometime in the future. 7 TTABVUE
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`38 (Ex. B at 2 ¶ 4). Paragraph (3) of the Joint Stipulation indicates that the parties agreed that “any
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`adjudication on the issue of attorneys’ fees with respect to [Cambria’s trademark-related Counts
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`2-4] can take place after resolution of Count 1 of the Complaint, in a single Rule 54 (Fed.R.Civ.P.
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`54) motion after a Final Judgment is entered on all issues in the case.” Id. (emphasis added).
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`This further confirms that no “Final Judgment” has been entered in the 2020 Action. Id.
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`Respondent also argues that Cambria “formally agreed to never again raise [the trademark
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`7
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`claims from the 2020 Action] against Lakeside” in the Joint Stipulation and that any attempt by
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`Cambria to raise those claims in this proceeding is “a breach of that stipulated agreement.” 7
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`TTABVUE 15. This too is refuted by the Joint Stipulation. As shown in the Joint Stipulation,
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`Cambria agreed to dismiss its three trademark-related claims in “an effort to streamline the issues
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`for adjudication” in the 2020 Action in federal court. 7 TTABVUE 37 (Ex. B at 1). It is silent on
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`whether Cambria may pursue other trademark claims—including a petition to cancel Lakeside’s
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`registration at issue here—in a separate TTAB proceeding. Id. at 37–39. In fact, and as noted,
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`both parties knew that Cambria would pursue its allegations of fraud “in a proceeding before the
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`USPTO.” 7 TTABVUE 17 (quoting 7 TTABVUE 73 (Ex. G at 10)). Conspicuously absent from
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`Respondent’s Motion is the fact that the Joint Stipulation was signed and ordered after Respondent
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`already agreed that Cambria may file a petition for cancellation raising the fraud and cancellation
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`claims if the court denied Cambria’s motion to amend in the 2020 Action. Exhibit 1 at 5 n.5. This
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`concession alone should foreclose the application of claim preclusion.
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`Neither of the two cases Respondent relies on for the “final judgment” preclusion
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`requirement support dismissal of this proceeding. 7 TTABVUE 13–15. Respondent asserts that
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`this case is similar to Keith Mfg. Co. v. Butterfield, 955 F.3d 936 (Fed. Cir. 2020), but that case
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`did not concern claim preclusion whatsoever. Rather, Keith Mfg. Co. concerns whether judgment
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`had been entered for the purposes of filing a Rule 54 motion for attorneys’ fees. Respondent does
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`not explain how “judgment” for the purposes of a Rule 54 motion is relevant to the “final judgment
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`on the merits” precondition for claim preclusion, but even if we assume they may be one in the
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`same, Respondent cannot escape the fact that the Joint Stipulation itself shows Respondent
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`acknowledged a final judgment has not yet been entered with respect to the trademark-related
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`claims in the 2020 Action.
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`8
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`Nor is Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106
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`(TTAB 2011) “highly analogous,” as Respondent claims (7 TTABVUE 14). In that case, the
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`Board precluded a ground for cancellation based on fraud because an earlier civil action had
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`included an identical counterclaim for cancellation based on fraud that was dismissed with
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`prejudice. 98 USPQ2d at 1109–11. Here, the 2020 Action never included a claim for cancellation
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`based on fraud or any other ground. 7 TTABVUE 7.
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`B.
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`The 2020 Action and This Cancellation Proceeding Are Not Based on the Same
`Set of Transactional Facts
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`Regardless of whether there was a final judgment from the district court, preclusion is
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`inappropriate because none of the three grounds for cancellation is based on the same set of
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`transactional facts as the trademark infringement and unfair competition claims dismissed from
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`the 2020 Action.
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`1.
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`Priority and Likelihood of Confusion
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`Respondent’s argument that the priority and likelihood of confusion ground for
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`cancellation asserted in this proceeding “was already alleged in the 2020 [A]ction” consists of a
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`single paragraph of conclusory statements (e.g., “there is no doubt that res judicata applies”) and
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`not a single citation of legal authority. 7 TTABVUE 16. This is unsurprising given that it is
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`longstanding precedent—including as stated in two Federal Circuit cases cited by Respondent—
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`that “an earlier infringement action [in district court] does not bar, under the doctrine of claim
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`preclusion, a later petition for cancellation.” Jet, 55 USPQ2d at 18581 (cited at 7 TTABVUE 9,
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`1 The Federal Circuit also noted that the Board “has held at least twice that claim preclusion does not apply
`between infringement and cancellation or opposition proceedings.” Id. at 1858 n.1. See, e.g., Treadwell’s
`Drifters, Inc. v. Marshak, 18 U.S.P.Q.2D 1318, 1321 (TTAB 1990) (explaining that a civil infringement
`action is “based on a claim of injury resulting from respondent’s use of his mark in commerce” whereas a
`petition to cancel is based on petitioner’s belief that “it is damaged by registration of respondent’s mark,”
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`9
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`11); see also Levi Strauss & Co., 107 USPQ2d at 1173–74 (holding that earlier judgments on
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`infringement and dilution claims in federal court do not give rise to a claim preclusion bar on
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`petitioner’s/opposer’s challenges based on likelihood of confusion and dilution in later opposition
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`and cancellation proceedings) (cited at 7 TTABVUE 9).
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`In Jet, the Federal Circuit considered “whether, for purposes of claim preclusion, a claim
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`for trademark infringement is based on the same set of factual allegations as a petition to cancel
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`the defendant's federally registered mark” and held that “they are not.” Jet, 55 USPQ2d at 1857.
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`After comparing the facts required to establish a trademark infringement claim to the facts required
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`in a petition for cancellation and finding “significant differences,” the Federal Circuit concluded
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`that the “array of differences in transactional facts conclusively demonstrates that claim preclusion
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`cannot serve to bar a petition for cancellation based upon an earlier infringement proceeding.” Id.
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`The key factual distinctions include, for example, that “infringement requires the defendant to have
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`used the allegedly infringing words or symbols in commerce and in connection with the sale or
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`promotion of goods or services, [whereas] cancellation requires none of these” and “cancellation
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`requires inquiry into the registrability of the respondent’s mark, [whereas] infringement does not.”
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`Id. The Federal Circuit further noted that “the only common ground between the two causes of
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`action appears to be that, in some cases at least, both infringement and cancellation will involve a
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`‘likelihood of confusion’ analysis. But even this superficial similarity provides no support for the
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`operation of claim preclusion.” Id. The court explained:
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`[i]n the infringement context, the ‘likelihood of confusion’ is between
`the plaintiff’s registered mark and the defendant’s use of words,
`symbols, etc. (which need not, of course, be registered). In contrast,
`in the cancellation context, the ‘likelihood of confusion’ is between
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`and thus no preclusion applies between these “fundamentally different” claims); Am. Hygienic Labs., Inc.
`v. Tiffany & Co., 228 U.S.P.Q. 855, 857 (TTAB 1986) (“[A] claim of infringement before the court and a
`claim of priority and likelihood of confusion before this Board are different claims.”).
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`10
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`the respondent’s registered mark and a prior-registered trademark
`(which need not be held by the petitioner) or prior use by the petitioner
`of an unregistered mark (such as in advertising or as a trade name) that
`has resulted in establishing a trade identity.
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`Id. (internal citations omitted).
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`The Board has consistently followed the holding in Jet, rejecting assertions of claim
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`preclusion of a likelihood of confusion ground for cancellation or opposition based on prior
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`infringement claims brought in federal court. See, e.g., Basic Sports Apparel, Inc. v. Spiral Direct
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`Ltd., No. 91242798, 2022 WL 2256163, at *7–8 (TTAB June 16, 2022); Smartling, Inc. v. Skawa
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`Innovation Kft., No. 92063654, 2021 TTAB LEXIS 234, at *27 (TTAB June 25, 2021); JIPC
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`Mgmt. v. Incredible Pizza Co., Nos. 91170452, 92043316, 2017 TTAB LEXIS 472, at *16–17
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`(TTAB Dec. 29, 2017); World Lebanese Cultural Union of New York, Inc. v. World Lebanese
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`Cultural Union, Inc., No. 92053563, 2013 WL 11247706, at *2 (TTAB Sept. 27, 2013) (prior
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`cancellation claim based on fraud and infringement claims in civil action did not preclude petition
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`for cancellation based on likelihood of confusion). This has included holdings of no claim
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`preclusion of a likelihood of confusion cancellation claim based on a prior judgment on an
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`infringement claim based on common law rights (i.e., the same claim brought by Cambria in the
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`2020 Action). See Basic Sports Apparel, 2022 WL 2256163, at *8 (explaining that “[f]or
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`preclusion purposes, an infringement action in district court generally is not considered identical
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`to a likelihood of confusion claim in an opposition or cancellation proceeding before the Board,”
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`and that in the district court, the marks were assessed “not based on Applicant’s identification of
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`goods and services in the opposed applications, but rather on the actual marketplace realities of
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`the parties’ services and goods . . . which highlight the different nature of the claims in the Prior
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`Litigation”).
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`Respondent presents no reason for the Board to depart from this well-settled law.
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`11
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`2.
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`Fraud and Lack of Ownership
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`Just like likelihood of confusion, the two remaining grounds for cancellation—fraud and
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`lack of ownership of the mark—differ from the trademark infringement claims dismissed by
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`stipulation from the 2020 Action. These remaining grounds are based on trademark law that
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`permits cancellation of a registration “[a]t any time” if the registration “was obtained fraudulently”
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`(15 U.S.C. § 1064(3)), and the rule that only the owner of a mark may file a use-based application
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`to register a mark with the USPTO, otherwise the application is void ab initio. 15 U.S.C.
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`§ 1051(a); 37 C.F.R. § 2.71(d). Respondent aims to cut off Cambria’s ability to petition to cancel
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`the Registration for fraud and lack of ownership simply because Cambria previously agreed to
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`dismiss a trademark infringement claim in the 2020 Action. Again, Respondent fails to cite to any
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`legal authority that supports its position that these grounds for cancellation “could have been
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`raised” in the 2020 Action because they were based on the same set of transactional facts as
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`Cambria’s infringement claims in the 2020 Action.2
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`Cambria’s fraud and non-ownership grounds for cancellation are even more dissimilar to
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`an infringement claim in court than the likelihood of confusion ground discussed in Jet. To plead
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`fraud in the procurement of a registration, the petitioner must allege that: (1) applicant/registrant
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`made a false representation to the USPTO; (2) the false representation is material to the
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`registrability of the mark; (3) applicant/registrant had knowledge of the falsity of the
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`representation; and (4) applicant/registrant made the representation with intent to deceive the
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`2 Respondent cites to four cases in this section of its motion (7 TTABVUE 16–17) but none of those cases
`support a finding of claim preclusion. The court in Acumend LLC v. Stryker Corp., 525 F.3d 1319, 1327
`(Fed. Cir. 2008) and the Board in Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1870 (TTAB
`2016) both held that claim preclusion did not bar the challenged claim. The other two cases, Int’l Nutrition
`Co. v. Horphaq Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492 (Fed. Cir. 2000) and Vitaline Corp. v.
`General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989), concern the issue of preclusion
`between two Board proceedings, which the Federal Circuit has indicated differs from the circumstances
`here. Jet, 55 U.S.P.Q.2D at 1858 n.1 (distinguishing Int’l Nutrition Co.).
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`12
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`USPTO in order to obtain a registration to which it otherwise was not entitled. In re Bose Corp.,
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`580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009). In addition, since, unlike a trademark
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`infringement claim, fraud allegations are subject to the heightened Rule 9(b) pleading standard,
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`the petitioner must identify the who, what, where, when, and how of the material misrepresentation
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`or omission committed before the USPTO. See Petroleos Mexicanos v. Intermix S.A., 97 USPQ2d
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`1403, 1407 (TTAB 2010). To state a claim for cancellation based on lack of ownership of the
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`mark, the petitioner must allege that the registrant “is not (and was not, at the time of the filing of
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`its application for registration) the rightful owner of the registered mark.” Trademark Trial and
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`Appeal Board Manual of Procedure § 309.03(c)(1)(7); 37 C.F.R. § 2.71(d) (“An application filed
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`in the name of an entity that did not own the mark as of the filing date of the application is void.”);
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`Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014) (finding
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`application void ab initio because applicant is not the sole owner of the mark). None of these
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`elements of a fraud or non-ownership cancellation claim are required to prove trademark
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`infringement in court.3
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`Respondent’s failure to identify a single case in which a prior final judgment on a
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`trademark infringement claim barred a fraud or lack of ownership cancellation claim in the TTAB
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`is both telling and expected given these differences.
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`3 Respondent’s selective “comparative excerpts” of Cambria’s complaint from the 2020 Action and Petition
`for Cancellation are not “proof” that both proceedings are based on the same set of transactional facts, as
`Respondent claims. 7 TTABVUE 18–19. It is not uncommon to include facts in a complaint that provide
`background and context for a pleaded claim even if they are not necessary to establish the claim. For
`example, the cherry-picked allegation that Lakeside applied for trademark protection for the phrase “THE
`FINEST COUNTERTOP MAKERS IN THE WORLD” in paragraph 15 of the 2020 Action complaint was
`not a “key factual assertion[]” for any of Cambria’s infringement claims in the 2020 Action. As the Federal
`Circuit explained in Jet, 55 USPQ2d at 1857, in an infringement claim, the focus is on the defendant’s use
`of the allegedly infringing mark, and there is no requirement for the party in the position of defendant to
`hold a federal registration.
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`World Lebanese Cultural Union of New York, Inc., 2013 WL 11247706, a case in which a
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`prior district court judgment on a fraud cancellation claim and infringement claims did not
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`preclude a likelihood of confusion cancellation claim in the TTAB, is highly instructive and
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`supports the application of Jet in these circumstances. In that cancellation proceeding, the
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`petitioner sought to cancel the respondent’s registration based on priority and likelihood of
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`confusion. Id. at *1. The petitioner had previously asserted trademark infringement, false
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`designation of origin, and common law unfair competition counterclaims against the respondent
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`in a civil action as well as a counterclaim seeking to cancel the respondent’s registration based on
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`fraud. Id. After the district court dismissed or found in the respondent’s favor on all of the
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`petitioner’s counterclaims, the respondent moved for summary judgment on claim preclusion in
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`the cancellation proceeding. Id. at *1–2. The Board, relying on Jet, denied the respondent’s
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`motion, and denied reconsideration of that decision. Id. at *2–3. With respect to the prior
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`cancellation claim based on fraud, the Board explained:
`
`Petitioner’s counterclaim seeking cancellation of respondent’s
`involved registration in the prior civil action was based on a claim
`of fraud, not likelihood of confusion. In this proceeding, however,
`petitioner is seeking to cancel respondent’s involved registration
`likelihood of confusion. Petitioner’s
`based on a claim of
`counterclaim for cancellation in the prior civil action therefore was
`based on a different legal theory and different transactional facts
`than its asserted claim of likelihood of confusion in this matter.
`
`Id. at *3 (emphasis added).4 Here, the Board should similarly find that Cambria’s previously
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`asserted trademark infringement claim is based on a different legal theory and different
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`transactional facts than its fraud and non-ownership grounds for cancellation.
`
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`4 The Board also rejected the respondent’s assertion that the Board should have followed Zoba Int’l Corp.
`v. DVD Fromat/Logo Licensing Corp.—the distinguishable case cited by Respondent here (see supra p.
`9)—instead of Jet. World Lebanese Cultural Union of New York, Inc., 2013 WL 11247706 at *2.
`
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`The fact that Cambria argued in the 2020 Action that no further discovery would be
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`necessary if the court allowed the addition of the fraud and cancellation claims to Cambria’s civil
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`complaint does not change the lack of identity between the infringement claim and fraud and lack
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`of ownership grounds. As noted, Cambria did not believe that it had sufficient information to
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`assert fraud in the procurement of the Registration when it first filed the 2020 Action. Cambria
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`moved to amend its complaint in the 2020 Action only after obtaining evidence of Respondent’s
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`fraud through discovery, including a deposition of Lakeside’s CEO in which he admitted to
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`photographing the phrase at issue at Cambria’s facility and then filing the trademark application
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`that is now the Registration. 7 TTABVUE 65–68 (Exhibit G). For this reason, Cambria argued in
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`its motion to amend that the reopening of discovery in the 2020 Action would not be necessary
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`should Cambria be permitted to proceed with its proposed fraud and cancellation claims. Cambria
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`did not, as Respondent claims, concede that the fraud and cancellation claims were based on the
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`same set of transactional facts for the purposes of claim preclusion. This is unlike Respondent’s
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`clear concession in its opposition to Cambria’s motion to amend that Cambria can “seek the exact
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`same relief” in its proposed claim for cancellation by filing a petition for cancellation. Exhibit 1
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`at 5 n.5 (emphasis added). Because the court denied Cambria’s motion to amend, the fraud and
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`cancellation claims were never part of the 2020 Action and Cambria filed a Petition for
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`Cancellation just as the parties anticipated.
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`In sum, claim preclusion does not bar any of Cambria’s grounds for cancellation because
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`there was no final judgment on the merits of Cambria’s trademark claims in the 2020 Action and
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`the grounds for cancellation are not based on the same set of transactional facts as Cambria’s prior
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`claims. At the very least, when viewing all the evidence in the light most favorable to Cambria,
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`as required on a motion to dismiss and on a motion for summary judgment, Respondent’s
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`statements concerning the lack of final judgment on the trademark claims in the 2020 Action and
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`Petitioner’s ability to file this Petition for Cancellation create a genuine issue of fact that precludes
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`its requested relief.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner requests that the Board deny Respondent’s Motion to
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`Dismiss, or Alternatively, its Motion for Summary Judgment.
`
`
`Date: September 30, 2022
`
`
`
`
`
`Respectfully submitted,
`
`/Kristen McCallion/
`Kristen McCallion
`mccallion@fr.com
`Vivian Cheng
`cheng@fr.com
`FISH & RICHARDSON P.C.
`7 Times Square, 20th Floor
`New York, NY 10036
`
`Attorneys for Petitioner,
`Cambria Company LLC.
`
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`CERTIFICATE OF SERVICE
`
`I certify that a true and correct copy of the foregoing Petitioner’s Opposition to
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`Respondent’s Motion to Dismiss, or Alternatively, Motion for Summary Judgement has been
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`served upon the following counsel of record for Respondent via e-mail