• Pizza Petitioner Fails Again to Deliver Cancellation
  • November 25, 2016 | Author: Timothy J. Lockhart
  • Law Firm: Willcox & Savage, P.C. - Norfolk Office
  • The U.S. Trademark Trial and Appeal Board (TTAB”) has granted a registrant’s motion for summary judgment on the issue of whether a petitioner was precluded from bringing a second cancellation proceeding against the same trademark registration. NH Beach Pizza LLC v. Cristy’s Pizza Inc., 119 USPQ2d 1861 (TTAB 2016) [precedential]. The TTAB held that because NH Beach Pizza had failed to establish standing in the first proceeding and because none of the factors concerning standing had changed since that proceeding, NH Beach Pizza’s earlier failure precluded it from getting a second opportunity to cancel the registration of Cristy’s Pizza for the trademark BEACH PIZZA.

    Cristy’s Pizza registered BEACH PIZZA as a mark for pizza in March 2014. A month later NH Beach Pizza filed a petition to cancel the registration, alleging that NH Beach Pizza “will be damaged should it be prevented from using the generic term ‘beach pizza’ in the advertising and sale of its goods” and that it “has received consumer claims of likelihood of confusion” with the BEACH PIZZA mark. Because NH Beach Pizza failed to enter into the record any evidence concerning the nature of its commercial activities and its interest in the registered mark, the TTAB found that NH Beach Pizza lacked standing and dismissed its petition for cancellation.

    NH Beach Pizza prompted filed a second petition for cancellation, and Cristy’s Pizza filed a motion to dismiss, alleging preclusion on the standing issue. Because the motion did not challenge the sufficiency of the petition as a pleading, the TTAB treated the motion as one for summary judgment. The TTAB said that issue preclusion is a matter of law and, as there were no genuine issues of material fact with respect to that issue, summary judgment was appropriate in the case.

    The TTAB made two major points in its analysis. First, citing the recent Supreme Court case of B & B Hardware, Inc. v. Hargis Industries, Inc., --- U.S. ---, 135 S. Ct. 1293 (2015) (discussed in the Tech Law Letter here), the TTAB said that issue preclusion “bars the re-ligation of the same issue in a second action,” including proceedings before the TTAB. In fact, the TTAB said, because standing is often not addressed until the trial stage in a TTAB proceeding, applying issue preclusion is “particularly apt” in such a proceeding.

    Second, the TTAB noted that applying issue preclusion requires: “(1) identity of an issue in the current and a prior proceeding; (2) actual litigation of that issue in the prior proceeding; (3) that determination of the issue was necessary in entering judgment in the prior proceeding; and (4) that the party with the burden of proof on that issue in the second proceeding had a full and fair opportunity to litigate the issue in the prior proceeding” (citing Montana v. United States, 440 U.S. 147, 153-54 (1979)). The TTAB said that all four requirements were met in NH Beach Pizza’s second cancellation proceeding.

    NH Beach Pizza claimed that the TTAB had dismissed the first proceeding without prejudice. But that claim was incorrect, the TTAB said, noting that it had “simply ‘dismissed’” the proceeding. The claim was also irrelevant, according to the TTAB, because issue preclusion may apply even in cases dismissed without prejudice.

    The TTAB also noted that NH Beach Pizza “could have rectified its evidentiary deficiencies by pursuing an appeal of the [TTAB’s] decision pursuant to Section 21(b) of the Trademark Act, 15 U.S.C. § 1071(b), which would have allowed [NH Beach Pizza] an opportunity to submit new evidence regarding its standing.” The TTAB cited Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014), in which the court said that where an appeal of a TTAB decision is made pursuant to Section 1071(b), “the parties have an unrestricted right to submit further evidence as long as it is admissible under the Federal Rules of Evidence and Civil Procedure.” But NH Beach Pizza did not do so, thereby precluding it from bringing a subsequent proceeding in which it asserted essentially the same claims on the same jurisdictional basis as in the prior proceeding.

    Accordingly, the TTAB granted the motion and granted summary judgment to Cristy’s Pizza. Having ruled on the standing issue twice, the TTAB pointedly dismissed NH Beach Pizza’s cancellation proceeding with prejudice.