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United States Court of Appeals for the Federal Circuit



                                      05-1220
                            (Opposition No. 91/118,745)



                             SHARP KABUSHIKI KAISHA
                         (also trading as Sharp Corporation),

                                                     Appellant,

                                          v.

                                THINKSHARP, INC.,

                                                     Appellee.



       Duane M. Byers, Nixon & Vanderhye P.C., of Arlington, Virginia, argued for
appellant. With him on the brief were Robert W. Adams and Michael E. Crawford.

      Sherry H. Flax, Saul Ewing LLP, of Baltimore, Maryland, argued for appellee.


Appealed from: United States Patent and Trademark Office, Trademark Trial and
               Appeal Board
      United States Court of Appeals for the Federal Circuit

                                        05-1220
                              (Opposition No. 91/118,745)



                              SHARP KABUSHIKI KAISHA
                          (also trading as Sharp Corporation),

                                                              Appellant,

                                            v.

                                  THINKSHARP, INC.,

                                                              Appellee.


                           __________________________

                           DECIDED: May 30, 2006
                           __________________________



Before NEWMAN, LOURIE, and SCHALL Circuit Judges.

NEWMAN, Circuit Judge.



      Sharp Kabushiki Kaisha, also trading as Sharp Corporation, ("Sharp") appeals the

decision of the United States Patent and Trademark Office, Trademark Trial and Appeal

Board, dismissing Sharp's opposition to the registration by ThinkSharp, Inc. ("ThinkSharp")

of the mark THINKSHARP.1 We affirm the Board's decision.

                                     BACKGROUND

       1      Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 2004 TTAB LEXIS 216,
Opposition No. 91118745 (TTAB Mar. 31, 2004) (initial decision); Sharp Kabushiki Kaisha
v. ThinkSharp, Inc., 2004 TTAB LEXIS 659, Opposition No. 91118745 (TTAB Oct. 26,
2004) (decision on reconsideration).
       ThinkSharp filed an application to register the word mark THINKSHARP on February

26, 1999, and filed a second application to register the mark THINKSHARP and Design on

June 4, 1999. Both marks were designated for use with educational goods and services in

the fields of problem solving and critical thinking, and both applications were duly published

for opposition. Sharp filed a Notice of Opposition to the word mark registration on May 9,

2000, and to the word-and-design registration on June 28, 2001. In both cases Sharp

asserted that THINKSHARP is confusingly similar to and dilutes the family of SHARP

trademarks.

       ThinkSharp chose to defend only the word mark registration and did not file an

answer in the word-and-design opposition. Thus the Board entered a default judgment

sustaining Sharp's opposition to the word-and-design mark. Sharp Kabushiki Kaisha v.

ThinkSharp, Inc., Opposition No. 91123480 (TTAB Oct. 11, 2002) (default judgment).

However, ThinkSharp contested Sharp's opposition to registration of the word mark

THINKSHARP. After the TTAB proceedings were completed but before the Board's

decision, Sharp asserted that the default judgment in its favor on the word-and-design mark

operated as res judicata to preclude ThinkSharp from contesting Sharp's opposition to

registration of the word mark.

       The Board rejected Sharp's opposition, on two grounds. First, the Board held that

Sharp had waived its right to assert res judicata, stating that Sharp had not put ThinkSharp

on notice and had not raised the issue until after the TTAB evidentiary proceedings were

completed. On the merits, the Board held that confusion was not likely between the word

marks SHARP and THINKSHARP. Sharp asked the Board to reconsider. On the res

judicata issue, Sharp pointed out that it had properly raised and given notice of the issue,


05-1220                                       2
and produced a copy of a letter to the Board with copy to ThinkSharp, which stated that

Sharp intended to rely on the default judgment for res judicata effect. The Board then

granted reconsideration, explaining that Sharp's notice letter had been misplaced at the

Board.

         On reconsideration, the Board observed that the ThinkSharp applications were

copending; the Board held that the applicant was entitled to choose to pursue one

registration and abandon the other, even after oppositions had been filed. The Board

explained that an applicant is not required to defend against multiple oppositions in order to

preserve its right to defend against one of them. Thus the Board held that the default

judgment on the word-and-design mark did not preclude defending the application to

register the word mark. The Board also confirmed its decision that there was not a

likelihood of confusion between SHARP and THINKSHARP. Sharp appeals only the

decision of the issue of res judicata.

                                         DISCUSSION

         Whether a particular claim is barred by res judicata is a matter of law, and its

decision by an administrative agency receives plenary review. See 5 U.S.C. '706(2)(A)

(2006) ("The reviewing court shall hold unlawful and set aside agency [conclusions] not in

accordance with law . . . ."); Dickinson v. Zurko, 527 U.S. 150, 165 (1999) (the

Administrative Procedure Act applies to tribunals of the Patent and Trademark Office); Jet,

Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000) (reviewing de novo the

application of res judicata in a trademark cancellation proceeding).

         The term res judicata includes two related concepts: "claim preclusion" and "issue

preclusion." The Court has explained the difference between them:


05-1220                                       3
       Res judicata is often analyzed further to consist of two preclusion concepts:
       "issue preclusion" and "claim preclusion." Issue preclusion refers to the
       effect of a judgment in foreclosing relitigation of a matter that has been
       litigated and decided. This effect is also referred to as direct or collateral
       estoppel. Claim preclusion refers to the effect of a judgment in foreclosing
       litigation of a matter that never has been litigated, because of a determination
       that it should have been advanced in an earlier suit. Claim preclusion
       therefore encompasses the law of merger and bar.

Migra v. Warren City Sch. Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984) (internal citations

omitted). Since the merits of Sharp's opposition to the word-and-design mark were not

"litigated and decided," issue preclusion cannot apply. For claim preclusion based on a

judgment in which the claim was not litigated, there must be (1) an identity of parties or

their privies, (2) a final judgment on the merits of the prior claim, and (3) the second claim

must be based on the same transactional facts as the first and should have been litigated in

the prior case. Parklane Hosiery Co. v. Shore, 439 U.S. 322, 327 n.5 (1979); Jet, Inc., 223

F.3d at 1362. For res judicata to apply against ThinkSharp it must be on the premise that

the issue of likelihood of confusion as to the word mark should have been litigated in the

defaulted opposition to the word-and-design mark.

       A default judgment can operate as res judicata in appropriate circumstances. See

Morris v. Jones, 329 U.S. 545, 550-51 (1947) ("'A judgment of a court having jurisdiction of

the parties and of the subject matter operates as res judicata, in the absence of fraud or

collusion, even if obtained upon a default.'") (quoting Riehle v. Margolies, 279 U.S. 218,

225 (1929)). Sharp argues that the legal effect of the default judgment in the word-and-

design opposition is that the Board ruled in favor of Sharp as to the merits of all of Sharp's

pleadings in that opposition, and that Sharp's uncontested allegations therein must now be

taken as undisputed fact. Sharp states that this precludes the Board's decision in favor of



05-1220                                       4
ThinkSharp in the opposition to the word mark registration. Sharp states that in Board

proceedings, as in federal courts, claim preclusion is to be applied where the necessary

prerequisites are established.

       ThinkSharp argues that the Board was correct in holding that the circumstances

concerning the word-and-design mark do not operate as res judicata for the proposed

registration of the word mark. Sharp raises the issue of claim "preclusion," not to preclude

a claim asserted by ThinkSharp against Sharp, but rather to support its opposition. See 37

C.F.R. '2.116(c) ("The opposition or the petition for cancellation and the answer correspond

to the complaint and answer in a court proceeding"). The Supreme Court has cautioned

that the offensive use of res judicata should be examined carefully to determine whether it

would be unfair to the defendant. See Parklane, 439 U.S. at 330-32. ThinkSharp points

out that the marks are not the same, that the merits were not decided, that allegations in

pleadings are not proven facts, that precedent is contrary to Sharp's position, and that the

Board correctly applied the rules and procedures of trademark practice.

       The Board held that ThinkSharp was entitled to choose to pursue the registration of

only one of its marks, "rather than defending two oppositions," and distinguished the Board

precedent cited by Sharp, as follows:

       This case, however, differs from Miller Brewing Co. v. Coy International Corp.
       [230 USPQ 675, 678 (TTAB 1986)] in that this is not a situation where the
       applicant, after a judgment had been entered against it, adopted a second
       mark in an attempt to avoid the preclusive effect of a previous judgment. The
       applicant herein began using both its THINKSHARP (typed drawing form)
       and THINKSHARP and design marks at the same time and indeed both
       applications were pending at the time judgment was entered in Opposition
       No. 91123480. Applicant did not file its application to register the mark
       THINKSHARP in typed drawing form merely as an attempt to evade the
       preclusive effect of the judgment entered against it in the application to
       register THINKSHARP and design. Applicant was entitled to decide if it


05-1220                                      5
       wanted to pursue the registration of only one of its marks, rather than
       defending two oppositions.

2004 TTAB LEXIS 659, at *5-6. In Miller Brewing the Board held that it "does not wish to

encourage losing parties to insignificantly modify their marks after an adverse ruling and

thereby avoid the res judicata effect of the prior adjudication." 230 USPQ at 678. Here, the

Board gave weight to the undisputed fact that the separate applications were not filed in

order to evade a prior adverse judgment.

       It is highly relevant that the default judgment on the word-and-design mark was

entered without consideration of the merits. "Precedent cautions that res judicata is not

readily extended to claims that were not before the court, and precedent weighs heavily

against denying litigants a day in court unless there is a clear and persuasive basis for that

denial." Kearns v. Gen. Motors Corp., 94 F.3d 1553, 1557 (Fed. Cir. 1996); see Brown v.

Felsen, 442 U.S. 127, 132 (1979) (res judicata is "invoked only after careful inquiry"). In

Kearns this court cautioned that:

      When applying res judicata to bar causes of action that were not before the
      court in the prior action, due process of law and the interest of justice require
      cautious restraint. Restraint is particularly warranted when the prior action
      was dismissed on procedural grounds.
94 F.3d at 1556. In the present case, not only were the marks different and the prior

dismissal solely on default, but res judicata would deny ThinkSharp its day in court without

a "clear and persuasive basis for that denial," id. at 1557. The Court in Kremer v. Chemical

Construction Corporation, 456 U.S. 461, 485 n.26 (1982) stated that "so long as opposing

parties had an adequate opportunity to litigate disputed issues of fact, res judicata is

properly applied to decisions of an administrative agency acting in a 'judicial capacity.'" The

corollary is that when a party did not have an opportunity to litigate disputed issues, a



05-1220                                       6
decision to permit such litigation is favored. Sharp has not established that the issue of

likelihood of confusion as to the word mark should have been litigated in the defaulted

opposition to the word-and-design mark. "The public policy underlying the principles of

preclusion, whereby potentially meritorious claims may be barred from judicial scrutiny, has

led courts to hold that the circumstances for preclusion 'must be certain to every intent.'"

Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 1234 (Fed. Cir. 2005)

(quoting Russell v. Place, 94 U.S. 606, 610 (1877)).

       The purpose of res judicata is salutary, for it protects a party from being required to

relitigate the same issue against the same party in a separate action. Parklane, 439 U.S.

at 326. However, the imposition of claim preclusion in the present case would not further

this purpose, for not only are the marks not identical, but the issues of likelihood of

confusion and dilution were not litigated in the defaulted opposition. Precedent and sound

administrative policy support the Board's reasoning that a trademark owner is entitled to

choose which opposition to defend, when the proceedings are not an attempt to evade the

effect of a previous adverse judgment on the merits. See Institut National Des Appellations

d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998); Metromedia

Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205 (TTAB 1993). An administrative

tribunal has authority to establish procedures and interpretations that facilitate its statutory

assignment. See 18B Charles Alan Wright & Arthur R. Miller, Federal Practice and

Procedure '4475, at 473-74 (2d ed. 2002) ("a measure of additional flexibility is recognized

to defeat preclusion to accommodate the distinctive substantive and procedural policies

that may govern agency adjudication"); see also Mayer/Berkshire Corp., 424 F.3d at 1234

("Caution is warranted in the application of preclusion by the PTO").


05-1220                                        7
      We affirm the Board's holding that ThinkSharp's choice to contest only the word

mark opposition was not barred by the default judgment in the word-and-design opposition.

ThinkSharp was not required to litigate both oppositions in order to preserve the right to

litigate one. The Board's decision that res judicata does not apply is




                                       AFFIRMED.




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