The termination of a reexamination or expungement proceeding in favor of a registrant cannot be the basis for the registrant's assertion of claim or issue preclusion in a cancellation proceeding before the TTAB. Common Sense Press Inc. v. Van Sciver, Cancellation No. 92075375, 2023 USPQ2d 601 (TTAB May 19, 2023).

Procedural History

On October 1, 2020, Common Sense Press (“Petitioner”) filed a petition to cancel Registration No. 6102744 for COMICS GATE (with “COMICS” disclaimed for “comics”), asserting claims of nonuse, abandonment, and fraud.

On March 23, 2022, Petitioner filed a petition to the Director of the USPTO requesting reexamination of that same registration under Trademark Act 16B, 15 U.S.C. § 1066b.

The same day, Petitioner filed a motion to suspend this cancellation proceeding pending final determination of any reexamination proceeding the Director might institute.

The Director of the USPTO instituted a reexamination proceeding on May 9, 2022 (Reexamination No. 2022-100062R).

On May 19, 2022, the TTAB granted Petitioner's motion to suspend, finding that “the reexamination proceeding may have a bearing on this cancellation proceeding, inasmuch as it could result in cancellation of the involved registration.”

On January 6, 2023, the Director issued a notice of termination stating that the evidence of record “has demonstrated use of the mark in commerce for all goods, subject to the proceeding. 37 C.F.R. § 2.93(c)(3)(i).” Accordingly, the reexamination proceeding was terminated.

Afterwards, the Respondents filed a Notice of Termination of Re-Examination and Motion for Judgment requesting that the TTAB enter judgment in their favor on Petitioner's nonuse and abandonment claims based on issue preclusion.

No Preclusion

The Trademark Act provides that the decision to institute (or not) “shall not prejudice any party's right to raise any issue and rely on any evidence in any other proceeding” except as provided in sections 1066a(j) and 1066b(j). 15 U.S.C. §§ 1066a(c)(3), 1066b(d)(3).

The USPTO rules confirm that “termination of an expungement or reexamination proceeding in favor of the registrant does not bar future nonuse cancellation actions under [Trademark Rule] § 2.111 with respect to the registration.”

Neither the statute nor the regulations limit a party's ability to petition to cancel a registration just because it is or has been the subject of a reexamination or expungement proceeding. See generally 15 U.S.C. §§ 1066a, 1066b; 37 C.F.R. §§ 2.91-2.94.

The explicit estoppel provisions that bar the filing of future expungement or reexamination proceedings as to the identical goods or services once a proceeding of the same kind has been instituted (see 15 U.S.C. §§ 1066a(j), 1066b(j); accord 37 C.F.R. § 2.92(d)(1) and (2)) do not apply to cancellation proceedings.

            Inasmuch as reexamination and expungement proceedings are ex parte, they have no preclusive effect against a petitioner who seeks to cancel that same registration through a cancellation proceeding – even if that petitioner also submitted the petition requesting institution of a reexamination or expungement proceeding. See Blonder– Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329, 169 USPQ 513, 519 (1971) (“litigants … who never appeared in a prior action [ ] may not be collaterally estopped without litigating the issue…. Due process prohibits estopping them despite one or more existing adjudications of the identical issue which stand squarely against their position.”); Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (claim preclusion only applies where both proceedings involve the same parties or their privies); . . .

Moreover, reexamination and expungement proceedings have no preclusive effect in TTAB proceedings against non-parties to those ex parte proceedings. See AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357, 2019 USPQ2d 171683, at *4-5 (Fed. Cir. 2019) (it is “a traditional preclusion principle that neither claim nor issue preclusion applies when appellate review of the decision with a potentially preclusive effect is unavailable”).

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