Skippy, Inc.v.Hormel Foods, LLC

Trademark Trial and Appeal Board

Feb 26, 2016

No. 92061574 (T.T.A.B. Feb. 26, 2016)

al Mailed: February 26, 2016

Cancellation No. 92061574
Skippy, Inc.
v.
Hormel Foods, LLC

Before Cataldo, Mermelstein, and Lykos,
Administrative Trademark Judges.

By the Board:

Petitioner (proceeding pro se) seeks to cancel Respondent’s registration for
the mark SKIPPY1 for “peanut butter” in International Class 29. As grounds for
cancellation, Petitioner alleges fraud on the Office in the procurement of the subject
registration, claiming that Respondent’s predecessor-in-interest, Rosefield Packing
Co., Ltd., failed to inform the U.S. Patent and Trademark Office of the outcome of
Opposition No. 13,134 (discussed more fully infra) at the time it applied for the
registration in 1947, and later falsified the affidavit it filed under Section 15 of the
Trademark Act (15 U.S.C. § 1065) in support of the registration, in 1954.

1 Registration No. 504940, issued December 21, 1948 to Rosefield Packing Co., Ltd.;
affidavit Section 8 accepted; affidavit Section 15 received; renewed; record title in Hormel
Foods, LLC; assignment filed on February 15, 2013.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
This Order is Not a
Precedent of the TTAB
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In lieu of an answer, Respondent filed a motion to dismiss under Fed. R. Civ.
P. 12(b)(6) on July 7, 2015 which the Board has construed as a motion for summary
judgment on the ground of res judicata. See Board’s Order of October 29, 2015 (9
TTABVUE). The motion is fully briefed.
Respondent seeks summary judgment in its favor on the ground that
Petitioner is barred from bringing this action under the doctrine of res judicata
because the Board has twice before adjudicated the issue, namely, Opposition No.
65712 and Cancellation No. 92032070, involving the subject registration.
Respondent contends that in Opposition No. 65712, its predecessor-in-
interest, CPC International Inc. (CPC), filed oppositions in 1986 (which were
consolidated) against two trademark applications filed by Petitioner for the mark
SKIPPY for “promoting the sale of goods and/or services of others by rendering
assistance in devising advertising and merchandising programs”;2 that the
oppositions were based on Registration No. 504940; that Petitioner had moved for
leave to amend its answer to assert a counterclaim to cancel the registration during
the consolidated opposition proceeding, but that Petitioner’s motion was denied as
untimely; and that CPC’s consolidated oppositions were sustained.3 On the closing
date of CPC’s rebuttal testimony period in the consolidated oppositions (April 10,
1986), Petitioner filed (a) an “amended answer and counterclaim” and (b) a separate
petition to cancel two of CPC’s registrations (Registration No. 504940, which had

2 Opposition No. 65,712 to trademark application Serial No. 206,445; Opposition No. 65,713
to trademark application Serial No. 207,476.
3 The final decision sustaining the consolidated oppositions was published as CPC
International Inc. v. Skippy, Inc. 3 USPQ2d 1456 (TTAB 1987).
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been pleaded, and Registration No. 1248537 for “peanut butter,” which had not been
pleaded). The Board allowed Petitioner’s petition to cancel the non-pleaded
registration as a separate petition (which Petitioner subsequently withdrew), but
denied both its compulsory counterclaim and its separately-filed petition to cancel
Registration No. 504940. In doing so, the Board expressed its view that “A petition
for cancellation of opposer’s pleaded Registration No. 504,940 is a compulsory
counterclaim under Rule 2.114(b)(2)(i), and applicant is not free to file a separate
such cancellation petition.” Petitioner did not appeal the Board’s decision.
Respondent further asserts that in Cancellation No. 92032070, despite the
Board’s ruling dismissing Petitioner’s counterclaim and separate petition to cancel
Registration No. 504940 in the earlier opposition proceeding, Petitioner commenced
a new Board action seeking to cancel Registration No. 504940 based on the ground
of “fraudulent procurement and maintenance under 15 U.S.C. §1064(3).” CPC
moved to dismiss the petition pursuant to Fed. R. Civ. P. 12(b)(6) as barred by res
judicata. The Board granted the motion and in so doing held that Petitioner was
required to raise any invalidity claims it may have had against Registration No.
504940 in a timely manner in the consolidated opposition proceedings but failed to
do so. On appeal, the Fourth Circuit affirmed the dismissal.
Respondent, therefore, argues that Petitioner is barred under the doctrine of
res judicata from now seeking to cancel the same registration that it was unable to
cancel by way of the counterclaim in Opposition No. 65712 and by way of the
petition to cancel in Cancellation No. 92032070. Specifically, Respondent contends
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that “the Board and the courts have ruled on this issue. This latest effort to
resurrect the claim is based on the same transactional facts of which Skippy, Inc.
long has been aware.”
Petitioner responds to the motion by contending that it is the decision in
Opposition No. 131344 that governs the outcome in this case; that Respondent’s
predecessor-in-interest in this earlier proceeding had applied to register SKIPPY for
peanut butter in 1933, but was successfully opposed by Petitioner; and the
opposition was sustained. Petitioner argues that Respondent’s predecessor
committed fraud when it failed to reveal the decision in Opposition No.13134 to the
Office at the time it applied for the mark in 1947 and at the time it filed the Section
15 affidavit in 1954. Petitioner further asserts that Respondent was not a party to
the earlier Board proceedings so it lacks standing to argue that Petitioner failed to
assert compulsory counterclaims for cancellation in those earlier proceedings; that
“there is every reason to doubt the quality, extensiveness, and fairness of the prior
proceedings here, for Petitioner had a right to make arguments seeking cancellation
of the mark on the basis of fraud, but the authorities turned a blind eye to them”;
and that new evidence that was unavailable in the prior proceedings “relieves
Petitioner from any possible application of the compulsory counterclaim rule.”
Summary judgment is only appropriate when there is no genuine dispute as
to any material fact and the moving party is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56(a). The Board may not resolve issues of material fact; it

4 Skippy, Inc. v. Rosefield Packing Co., Ltd., Opposition No. 13134, filed September 6, 1933;
opposition sustained January 9, 1934. The opposition file for this proceeding was
apparently destroyed around 1965.
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may only ascertain whether a genuine dispute regarding a material fact exists. See
Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 766, 25 USPQ2d 2027, 2029
(Fed. Cir. 1993); Olde Tyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542. A factual
dispute is genuine if, on the evidence of record, a reasonable fact finder could
resolve the matter in favor of the non-moving party. Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992);
Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
Under the doctrine of res judicata or claim preclusion, the entry of a final
judgment "on the merits" of a claim (i.e., cause of action) in a proceeding serves to
preclude the relitigation of the same claim in a subsequent proceeding between the
parties or their privies. See Lawlor v. National Screen Service Corp., 349 U.S. 322
(1955); Chromalloy American Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222
USPQ 187 (Fed. Cir. 1984); Flowers Industries, Inc. v. Interstate Brands Corp., 5
USPQ2d 1580 (TTAB 1987).
The requirements which must be met for claim preclusion are: (1) identity of
the parties or their privies; (2) a final judgment on the merits of the prior claim; and
(3) the claim in the later-filed case must be based on the same transactional facts as
the first case. Parklane Hosiery Co. v. Shore, 439 U.S. 322, 327 n.5 (1979); Jet Inc. v.
Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
In this instance, it is clear that there is no genuine dispute as to any
pertinent facts and that the doctrine of res judicata applies as a matter of law.
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As to the first factor, despite Petitioner’s argument to the contrary, CPC and
Respondent in this proceeding are in privity. The subject registration was assigned
to Respondent through a series of assignments and the assignments were recorded
in the Office.5 With regard to the second factor of the res judicata analysis, the
dismissal of Opposition No. 65712 and the decision in Cancellation No. 92032070
were both a judgment on the merits.
Turning to factor three, there is no genuine issue of material fact that the
transactional facts which are the basis of Petitioner’s claims in this proceeding are
identical to those that formed the basis of the claims made by Petitioner in the two
previous Board proceedings. Petitioner alleges that Jerome Rosefield, Respondent’s
predecessor, falsely stated at the time he applied to register the SKIPPY mark for
peanut butter that “no other person, firm, or corporation” had the right to the
SKIPPY mark thereby “deliberately withholding” from the Office the outcome of
Opposition No. 13,134 which according to Petitioner acknowledged that Petitioner
had a right to the mark. Similarly, Petitioner alleges that after the mark registered,
Rosefield, on behalf of the registrant, falsely stated that “there ha[d] been no final
decision adverse to registrant’s claim of ownership” when by virtue of that decision
it knew otherwise. Petitioner further alleges that others have renewed the mark
concealing their imputed knowledge that Registration No. 504940 was void ab
initio. These are the same facts upon which Petitioner asserted its prior compulsory
counterclaim in Opposition No. 65712 and its petition to cancel in Cancellation No.
92032070. As this Board has pointed out in the previous proceedings, a defense

5 Reel/Frame Nos. 4964/0001.
Cancellation No. 92061574

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attacking the validity of a registration pleaded in an opposition is a compulsory
counterclaim if grounds for such counterclaim exist at the time when the answer is
filed. See Trademark Rule 2.106(b)(2)(i); TBMP Section 313.04 (2015). Petitioner
was required to raise any invalidity claims it may have had against the subject
registration in a timely manner in the first consolidated opposition proceedings.
Petitioner failed to do so. If any grounds existed for attacking the validity of the
Registration No. 504940, Petitioner’s opportunity to raise these grounds has passed.
Petitioner’s claim that new evidence is available that was not previously considered
is not well-taken. Such evidence is merely additional evidence of the same allegedly
fraudulent occurrences of which Petitioner was indisputably aware in the earlier
opposition proceeding. It is clear that these grounds were not newly discovered but,
on the contrary, were grounds which existed and were known to Petitioner at the
time it filed its answer in Opposition No. 65712. See S&L Acquisition Co. v. Helene
Arpels Inc., 9 USPQ2d 1221, 1224 (TTAB 1987) and Consolidated Foods Corp. v. Big
Red, Inc. 231 USPQ 744 (TTAB 1986). Rather, Petitioner appears to assert
Opposition No. 13134 as the basis for its present petition to cancel in an attempt to
circumvent our previous determinations regarding Registration No. 504940.
Hence, there is no genuine dispute of material fact that res judicata bars
Petitioner’s claim in this proceeding.
In view of the foregoing, we hereby grant Respondent’s motion for summary
judgment.
The petition for cancellation is dismissed with prejudice.