The Board granted Opposer 784's motion for summary judgment,
applying issue preclusion to the issue of nonownership of the mark
shown below for, inter alia, restaurant services. 784 8th Street Corp. dba ZAN'S v. Denise
Ruggiero, Opposition No. 91214883 (November 2, 2018) [not
precedential].
The subject opposition was suspended in view of a civil action
in the U.S. District Court for the Eastern District of New York, in
which Opposer 784, together with Pasquale Ruggiero, filed various
claims and sought a declaratory judgment regarding ownership of the
ZAN's logo (above) and the word mark ZAN'S. The district
court Granted plaintiffs' motion for summary judgment on the
ownership claim, declaring that "Plaintiffs are the owners of
the Zan's name, logo, and materials."
Opposer then moved for summary judgment at the TTAB on the grounds
of fraud and nonownership. Because opposer had not served its
initial disclosures, its motion for summary judgment on the ground
of fraud was premature, but Trademark Rule 2.127(e)(1) makes an
exception for a summary judgment motion based on issue
preclusion.
Issue preclusion bars the re-litigation of the same issue in a
second action and applies whether or not the second action is on
the same or a different cause of action. B&B Hardware, Inc.
v. Hargis Indus., Inc., 136 S. Ct. 1293, 113 USPQ2d 2045, 2051
(2015); Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1301
(TTAB 1986).
The application of issue preclusion requires: (1) identity of an issue in the current and prior proceedings; (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. NH Beach Pizza, 119 USPQ2d at 1864 (citing Montana v. United States, 440 U.S. 147, 153-54 (1979)).
As to factor 1, there was no genuine dispute that the "key
issue" in this proceeding is identical to one of the issues
decided in the civil action: ownership. The district court found
that, although applicant Denise Ruggiero played a part in designing
the Zan's logo and materials, she was an employee of plaintiffs
at the relevant time.
As to factors 2 and 3, there was likewise no dispute that the issue
of ownership was raised, litigated, and actually adjudged in the
civil action. Furthermore, the ownership determination was
necessary to the court's decision.
As to factor 4, there was no genuine dispute that applicant had a
full and fair opportunity to litigate the ownership issue in the
civil action.
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