                      NOTE: This disposition is nonprecedential


United States Court of Appeals for the Federal Circuit
                                     2009-1313
                            (Cancellation No. 92/047,008)

                               AMERICAN RICE, INC.,

                                                     Appellant,

                                          v.

                           DUNMORE PROPERTIES S.A.,

                                                     Appellee.


      Michael S. McCoy, Fulbright & Jaworski L.L.P., for appellant.

       Simon L. Moskowitz, Jacobson Holman PLLC, of Washington, DC, for appellee.
With him on the brief was Matthew J. Cuccias.

Appealed from: United States Patent and Trademark Office
               Trademark Trial and Appeal Board.
                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                      2009-1313
                             (Cancellation No. 92/047,008)

                                AMERICAN RICE, INC.,

                                                             Appellant,

                                           v.

                            DUNMORE PROPERTIES, S.A.,

                                                             Appellee.



On appeal from the United States Patent and Trademark Office, Trademark Trial and
Appeal Board.

                            __________________________

                            DECIDED: November 16, 2009
                            __________________________


Before MICHEL, Chief Judge, PLAGER, and LINN, Circuit Judges.

PER CURIAM.

      The Trademark Trial and Appeal Board (the ”Board”) of the United States Patent

and Trademark Office (the “USPTO”) denied Petitioner American Rice, Inc.’s (“ARI”)

motion for time to conduct discovery and also granted Respondent Dunmore Properties,

Inc.’s (“Dunmore”) motion for summary judgment against ARI’s petition to cancel

Dunmore’s registration of its BINT ALARAB mark. Because the Board correctly barred

ARI’s claims on grounds of res judicata, we affirm.
                                 I.     BACKGROUND

      Both parties to this appeal are purveyors of rice. ARI registered the mark ABU

BINT with the USPTO for use on its rice (International Class 30 (U.S. Class 46)) on May

11, 1982. Dunmore subsequently registered the Mark BINT ALARAB on January, 22,

2002 for use on its corresponding rice product. 1 On February 3, 2003, ARI filed a

petition with the USPTO for cancellation of Dunmore’s BINT ALARAB mark (the “2003

Petition”), alleging confusion in trade and dilution of its ABU BINT brand owing to the

claimed similarity of the marks. Dunmore answered ARI’s petition; however, before the

period for discovery scheduled by the Board closed, ARI withdrew its petition without

Dunmore’s consent.     Consequently, the Board dismissed the petition with prejudice

pursuant to Trademark Rule 20114(c) on May 28, 2004.

      On January 22, 2007, ARI again filed a petition for cancellation of Dunmore’s

BINT ALARAB mark (the “2007 Petition”), again alleging confusion in trade and dilution

of its mark. On March 12, 2007, Dunmore filed a motion to dismiss ARI’s petition

pursuant to Fed. R. Civ. P. 12(b)(6), arguing that ARI’s claims were barred by res

judicata. The Board determined, however, that because Dunmore’s motion necessarily

relied upon matters outside the pleadings (i.e., the order dismissing with prejudice ARI’s

2003 petition for cancellation and the pleadings therein) the motion would be treated as

one for summary judgment under Fed. R. Civ. P. 56, Trademark Rule 2.127(e), and 37

C.F.R. § 2.127(e). On June 19, 2007, ARI amended its petition to include allegations




      1
               ABU BINT is the English transliteration of the Arabic words meaning “Girl
Brand”, “Father, Daughter”, “Father of a Girl”, or “Father of a Daughter” in various
dialects. BINT ALARAB is an English transliteration of the Arabic words meaning
“Arab’s Girl.”


2009-1313                                   2
that Dunmore fraudulently obtained its registration of the BINT ALARAB mark.         ARI

also moved for time to conduct discovery.

      On August 15, 2008, the Board denied ARI’s motion for time to conduct

discovery and, on January 9, 2009, granted Dunmore’s motion for summary judgment

against ARI’s claims, holding that the claims were precluded under the doctrine of res

judicata. ARI consequently filed the instant appeal, seeking reversal of the Board’s

denial of its motion for time for discovery and of its grant of summary judgment.

                                  II.    DISCUSSION

      The Board's determination that ARI's claims are barred by res judicata and its

grant of summary judgment are questions of law that we reviewed de novo.            See

Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 1323 (Fed. Cir. 2008); Sharp

Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 1370 (Fed. Cir. 2006). We review

the Board’s denial of ARI’s motion for time to conduct discovery for abuse of discretion.

Metropolitan Life Ins. Co. v. Bancorp Services, L.L.C., 527 F.3d 1330, 1336 (Fed. Cir.

2008); see also Fed R. Civ. P. 56(f).

      The doctrine of res judicata embraces the two related concepts of claim

preclusion and issue preclusion.        See 3 Restatement (Second) of Judgments,

Introductory Note (1982); see also Nasalok, 522 F.3d at 1323. Claim preclusion refers

to “the effect of foreclosing any litigation of matters that never have been litigated,

because of a determination that they should have been advanced in an earlier suit.”

Nevada v. United States, 463 U.S. 110, 129-30 (1983) (A final judgment is “a finality as

to the claim or demand in controversy . . . not only as to every matter which was offered

and received to sustain or defeat the claim or demand, but as to any other admissible




2009-1313                                   3
matter which might have been offered for that purpose”) (quoting Cromwell v. County of

Sac, 94 U.S. 351, 352 (1877))); see also 18 Charles Alan Wright, Arthur R. Miller &

Edward H. Cooper, Federal Practice and Procedure § 4402 (2d ed. 2002).                  Issue

preclusion, also called collateral estoppel, refers to “the effect of foreclosing relitigation

of matters that have once been litigated and decided.” Wright, Miller & Cooper, Federal

Practice and Procedure § 4402. Because ARI’s 2003 Petition for Cancellation was

never litigated and decided, but rather was dismissed with prejudice upon ARI’s

withdrawal of its petition without Dunmore’s consent, only the doctrine of claim

preclusion is relevant to this case.

       Typically, claim preclusion is applied against a plaintiff who initiates an action that

is related to a prior action. The test for claim preclusion was set forth by this court in

Jet, Inc. v. Sewage Aeration Syst,, 223 F.3d 1360 (Fed. Cir. 2000). Under that test, a

claim is precluded when: (1) there is identity of parties (or their privies); (2) there was an

earlier final judgment on the merits of a claim; and (3) the second claim is based on the

same set of transactional facts as the first. Jet, 223 F.3d at 1362.

       In the case at bar, neither party disputes that the first two conditions of the test

have been met, i.e., both parties agree that the parties in the case at bar are identical to

the parties in ARI’s 2003 Petition for Cancellation, and that the Board’s dismissal of

ARI’s petition with prejudice constituted a final judgment on the merits of the claim. The

sole issue, therefore, with respect to the preclusion of ARI’s claim under res judicata is

whether ARI’s petition for cancellation on grounds of confusion and dilution of its mark

and fraud are based on the same set of transactional facts as its first petition.




2009-1313                                     4
       ARI argues that its new petition for cancellation is inevitably based upon material

facts that occurred after 2003 Petition and therefore cannot be based upon the same

set of transactional facts. ARI does not adduce those material facts; rather, it argues

that the burden is on Dunmore to prove that no new material facts have arisen since

ARI’s prior petition was withdrawn without consent. Moreover, ARI argues that it also

needs time to conduct discovery to uncover any material facts that occurred since the

withdrawal of the 2003 petition.

       However, ARI’s 2007 Petition is, with the exception of a single minor, nonmaterial

word change, identical to its 2003 Petition. 2 Furthermore, paragraphs 1-10 and 18-23

of ARI’s amended 2007 Amended Petition are identical to the paragraphs of the 2007

Petition and, with again a single nonmaterial exception, likewise identical to those of the

2003 Petition. Therefore, in its 2007 Petition and Amended Petition, ARI’s claims point

to nothing that suggests that its 2007 Petition is in any way unconnected to those same

transactional facts alleged in the original 2003 Petition. The court finds, therefore, that

the claims of ARI’s 2007 Petition and Amended Petition for Cancellation are based in

the same set of transactional facts as the original 2003 petition and are consequently

barred by res judicata.

       Moreover, ARI’s claim of fraud against Dunmore points to alleged facts that

occurred in 2000 and 2001 connected with Dunmore’s application for its mark, and prior

to ARI’s original Petition for Cancellation. ARI claims that Dunmore falsely executed the

declaration in the application for the BINT ALARAB mark, claiming it had the exclusive



       2
             Paragraph 9 of the 2003 Petition reads, in part: “adjudged to have
infringed the ‘316 Registration”; whereas the same paragraph of the 2007 Petition
reads: “adjudged to have infringed Registration No. 1,195,316.”


2009-1313                                   5
right to use the mark despite knowledge of ARI’s mark. In short, ARI now alleges

nothing concerning Dunmore’s alleged fraud that was not already known to it at the time

it filed its first Petition for Cancellation. Moreover, these allegations arise from the same

series of transactional facts as its other claims in the 2003 Petition alleging confusion

and dilution and could have been raised by ARI in its Petition at that time. Claim

preclusion also extends to those claims or defenses that could have been raised in the

prior action, as long as they arise from the same series of transactional facts as those in

the original claims. See Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1326 (Fed. Cir.

2008) (citing Hells Canyon Pres. Council v. U.S. Forest Serv., 403 F.3d 683, 686 n.2

(9th Cir. 2005)). Because ARI could have litigated these claims in its 2003 Petition for

Cancellation, they are likewise barred under the doctrine of res judicata.

       With respect to ARI’s motion for time for discovery, § 528.06 of the Trademark

Trial and Appeal Board’s Manual of Procedure (“TBMP”) states, in relevant part:

       A party that believes that it cannot effectively oppose a motion for
       summary judgment without first taking discovery may file a request with
       the Board for time to take the needed discovery. The request must be
       supported by an affidavit showing that the nonmoving party cannot, for
       reasons stated therein, present by affidavit facts essential to justify its
       opposition to the motion.

       It is not sufficient that a nonmoving party simply state in an affidavit
       supporting its motion under Fed. R. Civ. P. 56(f) that it needs discovery in
       order to respond to the motion for summary judgment; rather, the party
       must state therein the reasons why it is unable, without discovery, to
       present by affidavit facts sufficient to show the existence of a genuine
       issue of material fact for trial. If a party has demonstrated a need for
       discovery that is reasonably directed to obtaining facts essential to its
       opposition to the motion, discovery will be permitted, especially if the
       information sought is largely within the control of the party moving for
       summary judgment.

       The motion should set forth with specificity the areas of inquiry needed to
       obtain the information necessary to enable party to respond to the motion for
       summary judgment.


2009-1313                                    6
TBMP § 528.06 (2d ed., rev. 2004).

       The Board reviewed ARI’s motion and found that it inadequately and insufficiently

addressed ARI’s need for discovery on the issue of whether the application of res

judicata barred ARI’s likelihood of confusion, dilution, and fraud claims. The Board

found that ARI failed to demonstrate any need for discovery that was reasonably

directed to obtaining facts essential to opposing Dunmore’s motion for summary

judgment. Moreover, the Board found that ARI’s ability to respond with respect to the

preclusive effect of res judicata was not dependent upon information that was within

Dunmore’s control.

       ARI argues, tautologically, that because it has not had an opportunity to conduct

any discovery, the Board abused its discretion in denying ARI’s motion for time to

conduct discovery on facts it believes are essential to its claims.      It contends that

discovery is needed with respect to facts that have occurred since ARI’s withdrawal of

its 2003 Petition. What ARI does not provide, however, is how the nature of any of

those facts (whatever they might be) will assist it in overcoming the res judicata bar of

its 2007 Petition: the claims in that Petition are identical to those of the 2003 Petition

(with respect to the confusion and dilution claims) or arise from the same series of

transactional facts (with respect to the claims alleging fraud). Given ARI’s failure to

meet the requirements of TBMP § 528.06, we cannot say that the Board abused its

discretion in denying ARI’s motion for time to conduct discovery. Consequently, we

affirm the Board’ denial of ARI’s motion for time for discovery.

                                  III.   CONCLUSION

       For the foregoing reasons, we affirm the decision of the Board.



2009-1313                                    7
