In the latest of a mini-boom in decisions relating to the preclusive effect of TTAB proceedings, the Board recently dismissed a cancellation proceeding as being precluded by a prior opposition involving the underlying application. The UROCK Network LLC v. Sulpasso, Canc. No. 92058974.
In 2010, John Kevin Timothy d/b/a UROCK Radio (“Timothy”), on the basis of his application for and alleged prior use of UROCK RADIO, instituted an opposition against Umberto Sulpasso’s (“Sulpasso”) application for UROCK, both applications being for “entertainment services.” Sulpasso’s application date predated Timothy’s, but in his argument, Timothy claimed prior use of the UROCK mark to as early as 1999, and subsequent use of UROCK in domain names, including .
Timothy took no testimony in the case, and his deadline to submit evidence was November 8, 2011 – which he missed. The Board (generously) extended the deadline to submit evidence to July 14, 2013. On that date, Timothy filed a document entitled “Opposer’s Testimony and Evidence,” which was nothing more than a cover sheet and a slightly modified version of Timothy’s previously filed motion for summary judgment. Although the cover sheet listed a number of exhibits, the exhibits were not attached. According to the Board, Timothy’s submission did not constitute evidence, and so the Board granted Sulpasso’s motion to dismiss the opposition – with prejudice — for failure to prosecute. Sulpasso’s application passed to registration on March 11, 2014.
Less than two weeks later, an entity called The Urock Network, LLC (“UNL”), on the basis of its pending application for THE UROCK NETWORK, instituted a cancellation proceeding against Sulpasso’s new registration for UROCK. UNL alleged (just as Timothy had in the opposition) that Sulpasso’s mark was likely to cause confusion with its mark, which had been in use for over ten years.
Sulpasso immediately moved to dismiss on the grounds of res judicata (claim preclusion) – specifically that the issues had already been resolved in Sulpasso’s favor in the earlier opposition proceeding brought by Timothy. UNL admitted that its manager and Timothy were the same person, but contended that the prior opposition had been dismissed on a technicality and not on the merits.
For claim preclusion to apply, there must be:
Identity of parties (or their privies);
An earlier final judgment on the merits of a claim; and
A second claim based on the same set of transactional facts as the first.
Applying the standard above, the Board found in favor of Sulpasso, applying the following analysis:
Factor 1: The parties were effectively identical or in privity. Network conceded that it and Timothy were the same party.
Factor 2: Notwithstanding Network’s claim that the prior opposition was dismissed on the basis of a “technical procedure,” the dismissal was explicitly issued with prejudice. As far as the Board is concerned, “whether the judgment in the prior proceeding was the result of a dismissal with prejudice or even default, for claim preclusion purposes, it is a final judgment on the merits.”
Factor 3: In assessing whether both the opposition and cancellation were based on the same set of transactional facts, the Board compared the facts available to Timothy in 2010, to the facts used by UNL in 2014. The Board identified the nearly identical arguments, and notably pointed to Timothy’s reference to the long-standing use of in his 2010 arguments. Therefore, “the alleged prior use of the mark THE UROCK NETWORK clearly not only relates to, but was a part of, the [prior] opposition.”
And so the Board entered judgment in favor of Sulpasso, dismissing the petition to cancel, again with prejudice.
What lessons can be learned from this nearly five-year saga?
The value of experienced counsel in TTAB proceedings – Timothy/UNL appeared pro se in these matters and suffered from missteps that could have been prevented with advice from counsel familiar with TTAB procedures.
Do not take TTAB deadlines and evidentiary burdens lightly! Had Timothy properly and timely submitted evidence in the earlier case, the outcome could have been very different and the second proceeding may never have been needed.
The TTAB will not be fooled or impressed by attempts to hide behind a d/b/a or new entity in an effort to relitigate a losing case. If anything, if this matter had proceeded, Timothy’s use of different names could have called into question the ownership and validity of his own marks.