Trademark Applicants Are Not Required to Defend Against Multiple Oppositions in Order to Preserve the Right to Defend Against One

Case: Sharp Kabushiki Kaisha v. Thinksharp, Inc., No. 05-1220 (Fed Cir. 5/30/06)

The One Sentence Summary: Where ThinkSharp filed two trademark applications (for a word mark and a design mark), and Sharp opposed both, ThinkSharp was not required to litigate both oppositions in order to preserve the right to litigate one.


What They Were Fighting About: ThinkSharp filed an application to register the word mark THINKSHARP in February 1999 and filed a second application to register the word and design mark THINKSHARP in June 1999. Sharp filed notices of opposition as to both marks. ThinkSharp chose to defend only the word mark and did not file an answer in the word-and-design opposition. The Trademark Trial and Appeal Board (TTAB) entered default judgment in favor of Sharp as to the word-and-design mark application. Sharp then argued that this default judgment had res judicata effect on the word application opposition. The TTAB rejected Sharp's opposition and held that there was no res judicata effect or likelihood of confusion between ThinkSharp and Sharp. The Federal Circuit affirmed.

Federal Circuit Holdings:

• In this case the two mark registrations at issue were filed at the same time, so there was no attempt by ThinkSharp to register the word mark as an attempt to evade the findings of the word-and-design mark.
• "It is highly relevant that the default judgment on the word-and-design mark was entered without consideration of the merits" because precedent cautions against extending res judicata effect to claims that are not before the court.
• ThinkSharp should not be denied its day in court without a "clear and persuasive basis for that denial."
• When a party does not have an opportunity to litigate disputed issues (as was the case with the default judgment at issue for the word-and-design mark) a decision to permit such litigation is favored.
• The purpose of res judicata is to protect a party from being required to relitigate the same issue against the same party in a separate action.
• "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 TTAB'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.