Ttab Decisions and Developments

• Jurisdiction: United States,Federal
• Citation: Vol. 46 No. 2
• Publication year: 2021
• topic: Trademark,Civil Procedure

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

Claim Preclusion — No Solution

If There's Not A Big-Time Change

The Case Was Lost

The Mark Was Tossed

(The Board's Opinion Wasn't Strange)

The Board affirmed the Examining Attorney's refusal to register the mark POWERCOATINGS for "electricity generated coatings applied to various substrate surfaces for renewable energy, namely, chemicals for use in connection with solar cells." The Examining Attorney deemed the mark merely descriptive under Sec. 2 (e) (1) of the Trademark Act, 15 U.S.C. Sec. 1052 (e)(1). The Examining Attorney found "the doctrine of res judicata precludes re-litigation of the descriptiveness issue..." because the Board had previously ruled that the Applicant's same mark, for the same goods, was merely descriptive.

The background of the case and the prior litigation were as follows. In 2014, Applicant sought to register the same mark for the same goods as those presented here. The Examining Attorney in the prior application refused registration of the POWERCOATINGS mark on the basis that the mark was merely descriptive for the goods claimed. Applicant appealed to the TTAB. The Board affirmed the Examining Attorney. Applicant took no further appeal, and the prior application was duly abandoned in 2016.

The Board found that Applicant was taking a second bite at registration by re-filing the very same application less than two years after the prior decision. In response to the Office Action precluding registration on the basis of descriptiveness and res judicata, the Applicant attached "additional facts" to show that its proposed mark was not descriptive. But Applicant failed to specify how these so-called "additional facts" presented new circumstances from those extant at the time of the refusal of the identical prior application. Nor did Applicant show that the so-called new evidence was not available when the Board previously looked at the very same mark for the very same goods.

Citing In re Bose Corp., 81 USPQ2d 1748, 1752 (Fed. Cir. 2007), the Board explained that under the doctrine of res judicata (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." However, the Board pointed to cases underscoring that "[t]rademark rights are not static and...the right to register must be determined on the basis of the factual situation at the time when registration is being sought." In re Morton-Norwich Prods., 213 USPQ 9, 18 (CCPA 1982). This gives an applicant an opportunity to show that the marketplace has changed, or that the perception of its own mark has changed, or other factors that might support registration. But these factors must demonstrate a material change of circumstances or conditions. Applicant here simply brought up a new argument that it could have made during prosecution of the prior application. That was insufficient to overcome the res judicata/claim preclusion here.

In re SolarWindow Technologies, Inc. Ser. No. 87819480 (TTAB 3/5/21).

A 'Withdrawal Without Prejudice"

Won't Fly When You've Lost Your Appeal

Express Or Implied

The Request Was Denied

There's A Rule Just To Keep These Things Real

The Board gave short shrift to Applicant's appeal from a refusal to allow it to expressly abandon its application without prejudice after having lost an appeal at the Board and the Federal Circuit on regis-trability on the same application. The Board needed only a few pages to explain why Applicant was not entitled to abandon its previously litigated application without prejudice. Here is the history. Applicant had filed an intent-to-use application for a word plus design mark, INFORMATION BUILDERS. The Examining Attorney found the mark...