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Change in Circumstance Can Avoid Claim Preclusion at TTAB

Posted by James Juo | Aug 11, 2022 | 0 Comments

Under the doctrine of claim preclusion (sometimes also referred to as res judicata), a final judgment forecloses successive or subsequent litigation of the same claim. Where the parties have had a full and fair opportunity to litigate, this legal doctrine minimizes the possibility of an inconsistent decision.

Geographically Descriptive LAGUNA CANDLES

In October 2013, the TTAB sustained an opposition to the registration of Application Serial No. 85137006 (“the Prior Application”) for the mark “LAGUNA CANDLES” for “Candles and candle fragrances” in Opposition No. 91200223 (“the Prior Opposition”) because of geographic descriptiveness where the primary significance of LAGUNA CANDLES was “Laguna” in reference to Laguna Beach, California. Flame & Wax, Inc. v. Laguna Candles, LLC, Opposition No. 91200223 (TTAB Oct. 2, 2013).

A few months later, on February 25, 2014, Laguna Candles filed a trademark application for the standard character mark LAGUNA CANDLES for “aromatherapy fragrance candles; candles; scented candles.” That application issued as Registration No. 4609702 (the “`702 registration”) on September 23, 2014.

Almost a decade later, Flame & Wax sought to cancel the `702 registration. Unlike the Prior Application, the `702 registration claims acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). Flame & Wax, Inc. v. Laguna Candles, LLC, Cancellation No. 92072343 (TTAB Aug. 1, 2022).

For the term LAGUNA CANDLES in the `702 registration, the TTAB found the degree of geographic descriptiveness to be “modest.”

Later Acquired Distinctiveness of LAGUNA CANDLES

For acquired distinctiveness. “the considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.” Converse, Inc. v. Int'l Trade Comm'n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

Although all six factors are to be weighed together in determining the existence of secondary meaning, no single factor is determinative. In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *11 (TTAB 2019) (“On this list, no single fact is determinative.” (citing In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009)).

A declaration of five years continuous and substantially exclusive use is usually sufficient to establish acquired distinctiveness for a mark that is not highly descriptive. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013), aff'd mem., 565 F. App'x 900 (Fed. Cir. 2014).

Res Judicata / Claim Preclusion

Claim preclusion requires (1) an identity of parties (or their privies), (2) an earlier final judgment of a claim on the merits, and (3) a second claim based on the same set of transactional facts as the first. Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).

The first two factors (identity of the parties, and an earlier final judgment) were satisfied. But the TTAB found that the second claim was not based on the same set of transactional facts as the first.

“[C]ourts 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, 55 USPQ2d at 1856 (quoting Herrmann v. Cencom Cable Assoc., Inc., 999 F.2d 223, 226 (7th Cir. 1993)).

To avoid claim preclusion, the losing party must demonstrate a material change in the relevant conditions or circumstances since the prior decision for claim preclusion not to apply. In re SolarWindow Techs., Inc., 2021 USPQ2d 257, at *8 (TTAB 2021); see also Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1584 (TTAB 1987) (“[A]n applicant who has received an adverse judicial determination of its right to registration … is not precluded thereby from seeking registration in a second application if the applicant can show that there has been a substantial change in the relevant facts since the rendering of the adverse final decision in its first application.”) (citing In re Oscar Meyer & Co., Inc., 171 USPQ 571 (TTAB 1971)).

Change in Circumstance

The TTAB noted the following facts and evidence in the cancellation were not present in the Prior Opposition:

  • The LAGUNA CANDLES mark subsequently was registered, and registrations are entitled to a presumption of validity pursuant to Section 7(b) of the Trademark Act.
  • The second application for the registered mark includes a Section 2(f) declaration which attests to Laguna Candles's substantially exclusive and continuous use of its mark for a period of at least five years; there was no assertion of substantially exclusive use in the Prior Opposition.
  • LAGUNA CANDLES has been in use seven years longer at the time of trial in the cancellation than at the time of trial in the Prior Opposition.
  • Sales for LAGUNA CANDLES have subsequently increased; and
  • Additional press coverage referencing the LAGUNA CANDLES mark in publications such as the Los Angeles Times Daily Pilot, New York Magazine, Allure, Cosmopolitan, Elle and Women's Health.

“These facts and evidence – notably the increased sales after trial in the Prior Opposition – establish a recognizable change of circumstances from the time of trial in the Prior Opposition and the time of trial in the cancellation.”

Thus, the TTAB concluded that the doctrine of claim preclusion does not apply to the later cancellation proceeding.

The trademark attorneys at Thomas P. Howard, LLC enforce trademarks or defend against infringement nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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