Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1231581
`
`Filing date:
`
`08/25/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92079964
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Lakeside Surfaces, Inc.
`
`DAVID L. OPPENHUIZEN
`OPPENHUIZEN LAW PLC
`5960 TAHOE DR. SE
`STE. 105
`GRAND RAPIDS, MI 49546
`UNITED STATES
`Primary email: david@oppenhuizen.com
`616-242-9550
`
`Motion to Dismiss - Rule 12(b)
`
`David L. Oppenhuizen
`
`docket@oppenhuizen.com
`
`/David L. Oppenhuizen/
`
`08/25/2022
`
`Attachments
`
`Motion to Dismiss incl exhibits.pdf(2434529 bytes )
`
`

`

`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Cambria Company LLC,
`
`
`
`v.
`
`Lakeside Surfaces, LLC
`
`
`
`
`Petitioner,
`
` Registrant.
`
`
`
`
`
`Cancellation No. 92079964
`
`THE FINEST COUNTERTOP
`Mark:
`
` MAKERS IN THE WORLD
`
`Registration No. 4957640
`
`Registration Date: May 10, 2016
`
`
`
`
`
`
`REGISTRANT’S MOTION TO DISMISS, OR ALTERNATIVELY,
`MOTION FOR SUMMARY JUDGMENT
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .......................................................................................................... 3
`
`I.
`
`INTRODUCTION ................................................................................................................... 5
`
`II. LEGAL PRINCIPLES ............................................................................................................. 6
`
`A. Summary Judgment ............................................................................................................. 7
`
`B. Res Judicata ......................................................................................................................... 8
`
`III. ARGUMENT ..................................................................................................................... 10
`
`A.
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`Identity of Parties ............................................................................................................... 10
`
`B. Final Judgment on the Merits of a Claim........................................................................... 11
`
`1. Finality of the Judgment .................................................................................................... 12
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`2.
`
`Judgment on the Merits ...................................................................................................... 14
`
`C. Second Claim Based on the Same Set of Transactional Facts as the First ........................ 15
`
`1. Likelihood of Confusion .................................................................................................... 15
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`2. Fraud and Non-Ownership of the Mark ............................................................................. 15
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`IV. CONCLUSION .................................................................................................................. 18
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`
`
`
`
`
`
`2
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`

`

`TABLE OF AUTHORITIES
`
`CASES
`
`Acumed LLC v. Stryker Corp.,
`525 F.3d 1319 (Fed. Cir. 2008)..................................................................................... 9, 16
`
`Chutter, Inc. v. Great Concepts, LLC,
`119 USPQ2d 1865 (TTAB 2016) ................................................................................. 9, 16
`
`Flowers Indus. Inc. v. Interstate Brands Corp.,
`5 USPQ2d 1580 (TTAB 1987) ..................................................................................... 9, 14
`
`Foster v. Hallco Mfg. Co.,
`947 F.2d 469, 20 USPQ2d 1241 (Fed. Cir. 1991) ........................................................ 8, 14
`
`Haider Capital Holding Corp. v. Skin Deep Laser MD, LLC,
`2021 USPQ2d 991 (TTAB 2021) ....................................................................................... 7
`
`Herrmann v. Cencom Cable Assoc., Inc.,
`999 F.2d 223 (7th Cir. 1993) ............................................................................................ 10
`
`Int’l Nutrition Co. v. Horphaq Research Ltd.,
`220 F.3d 1325, 55 USPQ2d 1492 (Fed. Cir. 2000) ...................................................... 9, 16
`
`Jet Inc. v. Sewage Aeration Sys.,
`223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000) ...................................................... 8, 10
`
`Keith Mfg Co. v. Butterfield,
`955 F.3d 936 (Fed. Cir. 2020)....................................................................................... 9, 12
`
`Lawlor v. National Screen Service Corp.,
`349 U.S. 322 (1955) ...................................................................................................... 8, 14
`
`Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.,
`719 F.3d 1367, 107 USPQ2d 1167 (Fed. Cir. 2013) .......................................................... 8
`
`Lloyd’s Food Prods., Inc. v. Eli’s, Inc.,
`987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) .............................................................. 7
`
`Morris v. Jones,
`329 U.S. 545 (1947) ............................................................................................................ 8
`
`Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
`961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992) .............................................................. 7
`
`
`
`3
`
`

`

`Opryland USA Inc. v. Great Am. Music Show Inc.,
`970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992) .............................................................. 7
`
`Orouba Agrifoods Processing Co. v. United Food Import,
`97 USPQ2d 1310 (TTAB 2010) ......................................................................................... 7
`
`Parklane Hosiery Co. v. Shore,
`439 U.S. 322 (1979) ............................................................................................................ 8
`
`Seven-Up Co. v. Bubble Up Corp.,
`50 C.C.P.A. 1012, 312 F.2d 472, 136 U.S.P.Q. 210 (C.C.P.A. 1963) ............................... 6
`
`United States v. Haytian Rep.,
`154 U.S. 118 (1894) .......................................................................................................... 10
`
`Urock Network, LLC v. Sulpasso,
`115 USPQ2d 1409 (TTAB 2015) ....................................................................................... 7
`
`Vitaline Corp. v. General Mills Inc.,
`891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989) ........................................................ 9, 16
`
`Zoba International Corp. v. DVD Format/LOGO Licensing Corp.,
`98 USPQ2d 1106 (TTAB 2011) ................................................................................... 7, 13
`
`RULES
`
`Fed. R. Civ. P. 12(b) ....................................................................................................................... 6
`
`Fed. R. Civ. P. 41(a)(1)(A)(ii) ...................................................................................................... 11
`
`Fed. R. Civ. P. 54(b) ................................................................................................................. 9, 11
`
`Fed. R. Civ. P. 56(a) ....................................................................................................................... 7
`
`
`
`
`
`4
`
`

`

`Registrant, Lakeside Surfaces, LLC (“Lakeside”) 1, moves to dismiss this cancellation
`
`proceeding under Rule 12(b)(6) on the basis of res judicata, or claim preclusion. In this
`
`proceeding, Petitioner Cambria Company LLC (“Cambria”) seeks cancellation of Lakeside’s
`
`trademark registration no. 4957640 for “THE FINEST COUNTERTOP MAKERS IN THE
`
`WORLD” on the following bases: (1) fraud on the USPTO in the procurement of the registration;
`
`(2) that Lakeside is not the owner of the mark; and (3) likelihood of confusion with Cambria’s
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`alleged common law trademark for “FINEST COUNTERTOP MAKERS IN THE WORLD.” The
`
`likelihood of confusion claim was already asserted in an earlier-filed federal action, and the other
`
`two claims could have been brought in that same action. Therefore, res judicata applies because
`
`these claims arise from the same set of transactional facts as in the federal case.
`
`I.
`
`INTRODUCTION
`
`This proceeding is the latest installment of legal battles between Lakeside and Cambria
`
`that originated in 2018 when the parties’ business relationship came to a tumultuous conclusion.
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`First, in 2018 Lakeside filed an action (case no. 1:18-cv-00110) against Cambria in the U.S.
`
`District Court for the Western District of Michigan alleging Breach of Contract for wrongful
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`termination, Violation of the Michigan Franchise Investment Law, and Violation of Section 309
`
`of the Uniform Commercial Code based on the general accusation that Cambria illegally
`
`terminated its business relationship with Lakeside. That action is still pending.
`
`Next, in 2020 Cambria filed a collateral action (case no. 1:20-cv-00508) against Lakeside
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`in the U.S. District Court for the Western District of Michigan alleging patent infringement,
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`trademark infringement, and unfair competition (“2020 action”). (Exhibit A) The trademark
`
`
`
`1 Registration No. 4957640 was first obtained by Lakeside Surfaces, Inc. On October 12, 2021 Lakeside
`Surfaces, Inc. was legally converted to a limited liability company named Lakeside Surfaces, LLC. The
`entity conversion was recorded with the USPTO on March 18, 2022, and is located at Reel/Frame:
`7664/0596. The USPTO records in TSDR have not yet been updated to reflect the entity conversion.
`
`
`
`5
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`

`

`infringement claim was based upon a likelihood of confusion with Cambria’s alleged common law
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`mark – which is also one of the three bases for cancellation asserted in this Cancellation.
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`The Complaint in the 2020 action did not specifically seek cancellation of Lakeside’s
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`trademark registration no. 4957640 for “THE FINEST COUNTERTOP MAKERS IN THE
`
`WORLD.” However, Cambria later attempted to amend its Complaint to seek cancellation of
`
`Lakeside’s trademark registration on the basis of fraud and non-ownership of the mark, which are
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`the two other bases for cancellation in this proceeding. Cambria’s motion to amend the pleadings
`
`was ultimately denied. But in its own brief in support of the motion, Cambria itself argued that it
`
`should be permitted to amend its pleadings to seek cancellation based on fraud and non-ownership
`
`because these “claims . . . arise from the same set of facts” as those already before the court in that
`
`case. Even Cambria admits that the transactional facts in the 2020 action and those in this
`
`cancellation proceeding are the exact same. Thus, res judicata additionally applies as to the bases
`
`of fraud and non-ownership of the mark even though Cambria was not successful in raising those
`
`claims in the 2020 action. Although the 2020 action is also still pending, only the patent
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`infringement allegation now remains because the parties recently stipulated to a voluntary
`
`dismissal – with prejudice – of the claims for trademark infringement and unfair competition.
`
`(Exhibit B) The 2020 action is currently scheduled for trial in December 2022.
`
`II.
`
`LEGAL PRINCIPLES
`
`A. Board’s Treatment of Motions to Dismiss Based on Res Judicata
`
`Motions asserting defenses available under Rule 12(b) must be made before pleading if a
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`responsive pleading is allowed. Fed. R. Civ. P. 12(b). A motion to dismiss based on Rule 12(b)(6)
`
`may properly assert res judicata. See Seven-Up Co. v. Bubble Up Corp., 50 C.C.P.A. 1012, 312
`
`F.2d 472, 136 U.S.P.Q. 210 (C.C.P.A. 1963) (affirming TTAB’s grant of motion to dismiss based
`
`
`
`6
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`

`

`on res judicata); Orouba Agrifoods Processing Co. v. United Food Import, 97 USPQ2d 1310, 1311
`
`(TTAB 2010).
`
`Furthermore, the Board routinely treats a motion to dismiss under Rule 12(b)(6) based on
`
`res judicata as a motion for summary judgment when the movant relies on matters outside the
`
`pleadings. Haider Capital Holding Corp. v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991, at *3-
`
`5 (TTAB 2021); See also Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.5 (TTAB
`
`2015) (motion to dismiss considered as one for summary judgment where it asserts claim
`
`preclusion); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106,
`
`1108 n.4 (TTAB 2011).
`
`B. Summary Judgment
`
`Entry of summary judgment is appropriate when the movant shows there are no genuine
`
`disputes as to any material facts, thus allowing the case to be resolved as a matter of law. Fed. R.
`
`Civ. P. 56(a). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder
`
`could resolve the matter in favor of the non-moving party. See Opryland USA Inc. v. Great Am.
`
`Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc.
`
`v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary
`
`judgment must be viewed in a light favorable to the non-movant, and all justifiable inferences are
`
`to be drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25
`
`USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not
`
`resolve genuine disputes as to material facts on summary judgment; it may only ascertain whether
`
`genuine disputes as to material facts exist. See Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde
`
`Tyme Foods, 22 USPQ2d at 1542.
`
`
`
`7
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`

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`C. Res Judicata
`
`The doctrine of res judicata, or claim preclusion, serves to “preclude certain attempts at
`
`second litigation chances, but only in defined circumstances, reflecting the need to avoid depriving
`
`litigants of their first chances.” Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d
`
`1367, 107 USPQ2d 1167, 1171 (Fed. Cir. 2013). Under the doctrine of claim preclusion, “a
`
`judgment on the merits in a prior suit bars a second suit involving the same parties or their privies
`
`based on the same cause of action.” Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d
`
`1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5
`
`(1979)).
`
`For claim preclusion to apply, therefore, there must be:
`
`(1) identity of parties (or their privies);
`
`(2) an earlier final judgment on the merits of a claim; and
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`(3) a second claim based on the same set of transactional facts as the first. Id.
`
`Regarding the second factor, namely, whether there has been an earlier final judgment on
`
`the merits of a claim, courts have long held that judgments on consent give rise to res judicata.
`
`See, e.g., Lawlor v. National Screen Service Corp., 349 U.S. 322, 327 (1955) (holding that a
`
`lawsuit, dismissed with prejudice pursuant to a settlement agreement, “bars a later suit on the same
`
`cause of action”); Foster v. Hallco Mfg. Co., 947 F.2d 469, 20 USPQ2d 1241, 1248 (Fed. Cir.
`
`1991) (“there is no dispute that … claim preclusion principles apply to a consent judgment”).
`
`Regardless of whether the judgment in the prior proceeding resulted from a dismissal with
`
`prejudice or even default, for claim preclusion purposes, it is a final judgment on the merits. See,
`
`e.g., Morris v. Jones, 329 U.S. 545, 550-51 (1947) (“A judgment of a court having jurisdiction of
`
`the parties and of the subject matter operates as res judicata, in the absence of fraud or collusion,
`
`
`
`8
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`

`

`even if obtained upon a default.”); Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580,
`
`1583 (TTAB 1987) (claim preclusion applies “even when the prior judgment resulted from default,
`
`consent, or dismissal with prejudice”).
`
`In addition, Rule 54(b) states that “[w]hen an action presents more than one claim for relief
`
`. . . the court may direct entry of a final judgment as to one or more, but fewer than all, claims or
`
`parties only if the court expressly determines that there is no just reason for delay.” Fed. R. Civ.
`
`P. 54(b) And despite the absence of an explicit final judgment, a stipulated dismissal with
`
`prejudice pursuant to Rule 41(a)(1)(A)(ii) may constitute a judgment. Keith Mfg Co. v. Butterfield,
`
`955 F.3d 936, 940 (Fed. Cir. 2020) (“The definition of judgment in Rule 54 indicates that some
`
`non-appealable orders can still constitute a judgment.”).
`
`As to the third element of res judicata, it is not required that each claim brought in the
`
`second action necessarily be the same as that in the first action. Claim preclusion also prohibits
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`those claims or defenses that could have been raised in the prior action, as long as they arise from
`
`the same series of transactional facts as those in the original claims. See Acumed LLC v. Stryker
`
`Corp., 525 F.3d 1319, 1326 (Fed. Cir. 2008); and Int’l Nutrition Co. v. Horphaq Research Ltd.,
`
`220 F.3d 1325, 1328, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000)(emphasis added). “A valid and
`
`final judgment rendered in favor of the defendant bars another action by the plaintiff on the same
`
`claim and encompasses claims that were raised or could have been raised in the earlier action.”
`
`Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1868 (TTAB 2016)(emphasis added)
`
`Under claim preclusion, a plaintiff is barred from a “subsequent assertion of the same transactional
`
`facts in the form of a different cause of action or theory of relief.” Vitaline Corp. v. General Mills
`
`Inc., 891 F.2d 273, 13 USPQ2d 1172, 1173 (Fed. Cir. 1989).
`
`
`
`9
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`

`

`With respect to the “same set of transactional facts,” courts have defined “transaction” in
`
`terms of a “core of operative facts,” the “same operative facts,” or the “same nucleus of operative
`
`facts,” and “based on the same, or nearly the same, factual allegations.” Jet Inc., 55 USPQ2d at
`
`1856 (quoting Herrmann v. Cencom Cable Assoc., Inc., 999 F.2d 223, 226 (7th Cir. 1993)); see
`
`also United States v. Haytian Rep., 154 U.S. 118, 125 (1894) (“One of the tests laid down for the
`
`purpose of determining whether or not the causes of action should have been joined in one suit is
`
`whether the evidence necessary to prove one cause of action would establish the other.”).
`
`III. ARGUMENT
`
`As a preliminary matter, this motion to dismiss is being timely filed in lieu of an Answer.
`
`A motion to dismiss under Rule 12(b) may be based upon res judicata, and the Board routinely
`
`handles such as a motion for summary judgment because the basis for the motion is outside the
`
`pleadings. Therefore, Lakeside contends that this motion is properly presented as a motion for
`
`summary judgment.
`
`A. Identity of Parties
`
`It is not disputed that the parties in this proceeding are the same as in the 2020 action. First,
`
`the 2020 action and this proceeding both name “Cambria Company LLC” as a party.
`
`Furthermore, both this proceeding and the 2020 action include Lakeside Surfaces, LLC,
`
`formerly known as Lakeside Surfaces, Inc. Lakeside Surfaces, Inc. and Lakeside Surfaces, LLC
`
`are the same legal entity because Lakeside Surfaces, Inc. was legally converted to a limited liability
`
`company in 2021, and accordingly renamed as Lakeside Surfaces, LLC in compliance with
`
`Michigan law. (Exhibit C) Furthermore, this entity conversion was recorded with the USPTO on
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`March 18, 2022 under Reel/Frame 7664/0591. (Exhibit D)
`
`
`
`10
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`

`

`Cambria does not dispute this. In fact, Cambria’s Petition for Cancellation states that
`
`“Lakeside Surfaces, Inc. and the converted entity and assignee of the Registration, Lakeside
`
`Surfaces, LLC, are referred to herein as ‘Respondent.’” Furthermore, Paragraph 23 of Cambria’s
`
`Petition for Cancellation specifically alleges that Lakeside Surfaces, Inc. was converted to
`
`Lakeside Surfaces, LLC. 1 TTABVUE 10 Therefore, it is undisputed that the parties in this
`
`proceeding are the same as in the 2020 action.
`
`B. Final Judgment on the Merits of a Claim
`
`The second element for res judicata asks whether or not there is a final judgment on the
`
`merits of the trademark claims in the 2020 action. On June 24, 2022, the parties entered into a
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`stipulated dismissal in that case whereby all of the trademark-based claims were dismissed with
`
`prejudice. (Exhibit E) That agreement states that “Cambria’s claims under Counts 2-4 of its
`
`Complaint regarding trademark infringement, federal unfair competition and false designation of
`
`origin, and state unfair competition are dismissed with prejudice.” Notably, the stipulated
`
`dismissal does not state that the trademark-related claims “will be” or “shall be” dismissed at some
`
`point in the future. Rather, it specifically states that the trademark-related claims “are dismissed
`
`with prejudice” as of June 24, 2022. Cambria willingly and knowingly entered into this agreement
`
`and it was signed by both parties through their attorneys, thereby making it an enforceable
`
`agreement and dismissal of those claims under Fed. R. Civ. P. 41(a)(1)(A)(ii). That stipulated
`
`dismissal was then entered as an order of the court on June 27, 2022. (Exhibit B) The 2020 action
`
`is still pending since the patent infringement claim remains, and it is scheduled for trial in
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`December 2022.
`
`
`
`11
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`

`

`1. Finality of the Judgment
`
`Admittedly, the 2020 action is still pending and there is not a stand-alone document entitled
`
`“Final Judgment” which has yet been entered. However, that is hardly fatal to Lakeside’s res
`
`judicata argument. Even though the patent infringement claim remains, final judgment can still
`
`be entered prior to resolution of the patent infringement claim. Rule 54(b) states that “[w]hen an
`
`action presents more than one claim for relief . . . the court may direct entry of a final judgment as
`
`to one or more, but fewer than all, claims or parties only if the court expressly determines that
`
`there is no just reason for delay.” Fed. R. Civ. P. 54(b)(emphasis added) Therefore, final judgment
`
`of the trademark-related claims is not necessarily precluded by the pending patent infringement
`
`claim.
`
`Additionally, the present case is similar to Keith Mfg Co. v. Butterfield in which the Court
`
`of Appeals for the Federal Circuit (“CAFC”) held that a stipulated dismissal with prejudice
`
`pursuant to Rule 41(a)(1)(A)(ii) constitutes a judgment, despite the absence of an explicit final
`
`judgment. In that case the parties also entered into a signed dismissal under Rule 41(a)(1)(A)(ii),
`
`which was not entered as an order by the court in that instance. Twelve days later the defendant
`
`moved for attorney's fees under Fed. R. Civ. P. 54(d). Importantly, that motion was filed before
`
`any document purporting to be a final judgment had been entered by the court. The motion for
`
`fees was denied by the trial court on the basis that judgment had not been entered. The defendant
`
`appealed, and the issue before the CAFC was “whether the stipulated dismissal with prejudice
`
`constitutes a judgment for the purposes of Rule 54.” Keith Mfg Co. 955 F.3d at 939. The CAFC
`
`indeed held that the stipulated dismissal with prejudice was a judgment on the claim because the
`
`stipulated agreement was an act of finality which concluded the claim between the parties. The
`
`Court went on to state that:
`
`
`
`12
`
`

`

`[t]he definition of judgment in Rule 54 indicates that some non-
`appealable orders can still constitute a judgment. Rule 54(a) states
`that judgment “includes . . . any order from which an appeal lies,”
`(emphasis added), not that judgment is any order from which an
`appeal lies. This inclusive language reveals that Rule 54
`“judgment” includes more than just appealable orders. Id. at 940.
`
`The CAFC, having determined that the stipulated dismissal with prejudice was a judgment
`
`on the claim, then vacated the district court's order denying the motion for fees, and remanded the
`
`case back to the trial court to resolve the motion.
`
`The present case is also highly analogous to Zoba International Corp. v. DVD
`
`Format/LOGO Licensing Corp., 98 USPQ2d 1106 (TTAB 2011), in which DVD Format/LOGO
`
`Licensing Corporation (“DVD Format”) filed a trademark infringement case against Zoba
`
`International Corp. (“Zoba”) in the U.S. District Court for the Southern District of New York.
`
`Zoba raised counterclaims alleging that DVD Format had fraudulently obtained the registration
`
`and had also abandoned the mark. The parties later entered into a stipulation and order of dismissal
`
`with prejudice, which stated that “all of Plaintiff’s claims, and the Answer and Counterclaims and
`
`all of Defendant’s counterclaims in this action are dismissed with prejudice.” (Exhibit F) The
`
`stipulation was signed by legal counsel of both parties, and then entered as an order of the judge.
`
`The case concluded without entry of a standalone Final Judgment. Zoba then filed a series of
`
`cancellation proceedings against DVD Format on the same bases of fraud and abandonment of the
`
`marks, which were consolidated into a single proceeding. Regarding the finality of the stipulated
`
`dismissal, Zoba argued that “the judgment simply dismissed all claims; that the stipulated
`
`judgment was simply a dismissal with prejudice; and that no rights were granted to either Plaintiff
`
`or Defendant beyond a release from those claims and counterclaims.” Id. at 5. (internal quotations
`
`omitted) The Board responded to that argument stating:
`
`[t]o the extent that Zoba’s assertions could be construed as an
`argument that the consent order issued by the district court is not a
`
`
`
`13
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`

`

`final judgment with respect to Zoba’s counterclaims in the civil
`action, the contention is not well founded. The “Stipulation and
`Order” issued in the civil action between the parties clearly
`dismissed all parties’ claims, including Zoba’s counterclaims, with
`prejudice. In view thereof, there is no genuine dispute that a final
`judgment order was issued in the civil action between the parties
`and, specifically, with respect to the counterclaims asserted therein.
`Id. (emphasis added)
`
`Similarly, the parties here have also dismissed all trademark-related claims under Rule
`
`41(a)(1)(A)(ii). Even though a separate document title “Final Judgment” has not been entered by
`
`the court in the 2020 action, all of the trademark-related claims have been dismissed with
`
`prejudice, and also by signed agreement by the parties. Any future attempt by Cambria to raise
`
`those claims in a separate action, such as this proceeding, is not only barred by res judicata, but is
`
`also a breach of that stipulated agreement. All trademark-related claims between the parties have
`
`been resolved with every degree of finality. Despite the lack of a formal Final Judgment in the
`
`2020 action, there is more than sufficient basis for the Board to conclude that Cambria has formally
`
`agreed to never again raise those claims against Lakeside, and any attempt to do so (such as this
`
`proceeding) should be wholly denied.
`
`2. Judgment on the Merits
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`Courts have long held that judgments on consent give rise to res judicata. See Lawlor, 349
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`U.S. at 327; Foster, 20 USPQ2d at 1248; Morris, 329 U.S. at 550-51. Claim preclusion applies
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`“even when the prior judgment resulted from default, consent, or dismissal with prejudice.”
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`Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987). Therefore,
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`the stipulated dismissal of all the trademark-related claims in the 2020 action – which was a
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`judgment – was undoubtedly on the merits of the claims.
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`C. Second Claim Based on the Same Set of Transactional Facts as the First
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`Cambria has asserted three claims, or bases, for cancellation of Lakeside’s trademark
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`registration in this proceeding. Those three claims include: (1) fraud on the USPTO in procuring
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`the trademark registration; (2) non-ownership of the trademark; and (3) likelihood of confusion
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`with Cambria’s alleged common law trademark for virtually the identical trademark.
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`1. Likelihood of Confusion
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`The third one, i.e., likelihood of confusion with Cambria’s alleged common law trademark,
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`was already alleged in the 2020 action. Therefore, there is no doubt that res judicata applies toward
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`this claim. To be certain, paragraphs 34-41 of Cambria’s Complaint in the 2020 action assert
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`trademark infringement based on a likelihood of confusion with Cambria’s alleged common law
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`rights in a nearly-identical mark. (Exhibit A) Even more particularly, Cambria’s Complaint alleges
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`at Paragraph 37 that “Lakeside’s registration, adoption, distribution, marketing, promotion,
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`offering for sale and sale of services that use the mark ‘THE FINEST COUNTERTOP MAKERS
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`IN THE WORLD,’ which is confusingly similar to Cambria’s mark, constitutes an infringement
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`of Cambria’s mark in violation of common law.” Thus, res judicata would certainly apply to
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`Cambria’s claim of likelihood of confusion in this Cancellation.
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`2. Fraud and Non-Ownership of the Mark
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`Cambria’s other two claims in this Cancellation are based upon fraud on the USPTO and
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`non-ownership of the mark. Cambria did not raise those claims in the 2020 action, although it
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`unsuccessfully tried to later amend its pleadings to include them. The law is clear that res judicata
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`also applies to those claims that could have been raised in the prior action so long as they arise
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`from the same set of transactional facts as those in the first case. See Acumed LLC, 525 F.3d at
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`1326; Int’l Nutrition Co., 55 USPQ2d at 1494; Chutter, Inc., 119 USPQ2d at 1868; Vitaline Corp.,
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`13 USPQ2d at 1173.
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`As mentioned above, Cambria did not originally assert claims of fraud on the USPTO and
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`non-ownership of the mark in the 2020 action as bases for cancellation of Lakeside’s registration.
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`But on April 13, 2022, Cambria filed a motion in that case requesting leave from the court to
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`amend its complaint. Attached to that motion and brief was a copy of the proposed amended
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`complaint which included allegations of fraud and also that Cambria was the owner of the mark
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`rather than Lakeside. (Exhibit G, number paragraphs 42-56 of the proposed amended complaint)
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`Those assertions stated, inter alia, that “Lakeside fraudulently registered the mark ‘THE FINEST
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`COUNTERTOP MAKERS IN THE WORLD’ by omitting material information regarding
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`Cambria’s ownership and use of the mark and Cambria’s superior rights to the mark.”
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`In its brief in support of the motion to amend the pleadings, Cambria itself even argued
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`that the claims of fraud on the USPTO and non-ownership of the trademark arise from the exact
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`same facts as those in the 2020 action. Cambria argued it should be permitted to amend it
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`pleadings because its “proposed amendments also do not require additional discovery. First, the
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`amended counts rely on the same factual elements – i.e., Lakeside’s appropriation and use of
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`Cambria’s mark.” (Exhibit G, pages 7-8 of the brief) (emphasis added) Cambria then later argued
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`that “[s]hould the court deny Cambria’s motion, Cambria will be forced to pursue its allegations
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`of fraud either in a new case filed in this district . . . or in a proceeding before the USPTO. In
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`either scenario, the parties would be required to engage in the discovery process all over again
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`only to pursue claims that, as described above, arise from the same set of facts.” (Exhibit G, page
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`10 of the brief)(emphasis added) Therefore, even Cambria agrees that the claims in this
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`Cancellation arise from the same set of transactional facts as that in the 2020 action, and this
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`concession alone should be sufficient to conclude that all of the claims in the Cancellation
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`Proceeding either were raised or could have been raised in the 2020 action.
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`Cambria’s motion for leave to amend its pleadings was then denied on June 1, 2022, and
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`Cambria promptly filed this Petition for Cancellation – only 16 days later – whereby it asserted
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`the very same claims of fraud and non-ownership of the mark that had just been denied in the 2020
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`action.
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`Lastly, a comparison of the Complaint in the 2020 action and the Petition for Cancellation
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`should erase any remaining doubt as to whether or not the claims in this cancellation arise from
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`the same transactional facts as in the 2020 action. Generally speaking, Cambria’s factual
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`allegations regarding its trademark claims are that: (1) Cambria first adopted and made use in
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`commerce of a virtually identical mark; (2) key personnel at Lakeside then saw the mark and
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`started using its own similar variation of the mark; and (3) Lakeside then filed for and obtained its
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`trademark registration by intentionally misleading the USPTO into believing that Lakeside o