The TTAB sun again failed to shine on Applicant SolarWindow Technologies, Inc. The Board applied the doctrine of res judicata in affirming a Section 2(e)(1) mere descriptiveness refusal of POWERCOATINGS for coatings for solar cells. SolarWindow filed an application in 2014 for the same mark for the same goods, and in 2016 the Board affirmed a mere descriptiveness refusal of that application. SolarWindow filed again in 2018 and was rejected again on both Section 2(e)(1) and res judicata grounds. Here, the Board affirmed on the latter ground because SolarWindow failed to show any change of conditions or circumstances that would excuse the application of res judicata. In re SolarWindow Technologies, Inc., Serial No. 87819480 (March 5, 2021) [precedential] (Opinion by Judge Jyll Taylor).
Under the doctrine of res judicata, or claim preclusion, "a judgment on the merits in a prior suit bars a second suit involving the same parties or third privies based on the same cause of action." In re Bose Corp., 476 F.3d 1331, 81 U.S.P.Q.2d 1748, 1752 (Fed. Cir. 2007) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979)). The CAFC in Bose warned, however, that particular caution is warranted in the application of [claim] preclusion by the PTO, for the purposes of trademark procedures include protecting both the consuming public and the purveyors." In re Bose, 81 U.S.P.Q.2d at 1752 (quoting Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 U.S.P.Q.2d 1310, 1314 (Fed. Cir. 2005)).
Applicant SolarWindow argued that there are "additional facts" that preclude the application of res judicata. The Board observed, however, that "pointing to additional facts or even making a more persuasive argument based on those facts does not avoid preclusion from an earlier decision." Cf. SynQor, Inc v. Vicor Corp., No. 2019-1704, ___ F.3d ___, 2021 USPQ2d 208, at *12 (Fed. Cir. Feb. 22, 2021) ("A losing party does not get a second bite at the apple simply because they can find [] new and arguably more persuasive" evidence to present in the second proceeding.). The losing party must demonstrate "a material change in the relevant conditions or circumstances," and applicant failed to do so.
SolarWindow asserted that consumers may be confused as to whether the term POWERCOATINGS refers to a type of protective coating or finish applied to the product, or a method for applying the coating, or whether the term is a misspelling of the term "powder coating." However, applicant failed to show that this argument was not available during prosecution of its first application.
The Board therefore affirmed the refusal to register on the ground of res judicata.
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