TTAB Holds That Earlier Failed Opposition Precludes Later Cancellation

On July 17, 2015, the TTAB held that an earlier, failed opposition to a registered mark justified dismissal of a later cancellation proceeding against that same mark.

Umberto Sulpasso owns a registration for the mark UROCK.  In a prior proceeding, John Timothy dba UROCK Radio, had unsuccessfully opposed Mr. Sulpasso’s UROCK application based on priority and likelihood of confusion with Mr. Timothy’s UROCK RADIO mark. 

In this later proceeding, The Urock Network, LLC (“UNL”), which was managed by Mr. Timothy, claimed ownership of an application for the mark THE UROCK NETWORK and filed a petition to cancel Mr. Sulpasso’s registration claiming priority and likelihood of confusion.  Mr. Sulpasso filed a motion to dismiss the cancellation action on grounds of claim preclusion.  For claim preclusion to apply, there must be: (1) identity of the parties (or their privies); (2) an earlier final judgment on the merits; and (3) a second claim based on the same set of transactional facts as the first.

UNL did not dispute that it and the opposer in the prior opposition were the same.

Rather, UNL argued that claim preclusion was inapplicable because the opposition did not result in a final judgment on the merits, but instead was decided on a “technical procedure.”  The Board disagreed.  The earlier opposition had been dismissed with prejudice because Mr. Timothy failed to take testimony or enter evidence.  Citing longstanding precedent, the Board held that for claim preclusion purposes, such a dismissal is a final judgment on the merits and should be accorded preclusive effect.  The Board accordingly dismissed UNL’s petition for cancellation with prejudice.

The case is The Urock Network, LLC v. Umberto Sulpasso, 115 USPQ2d 1409 (TTAB 2015).

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