In this opinion, the Board granted Respondent’s motion for summary judgment on the basis of claim preclusion based on the prior dismissal of an opposition involving the same parties due to Petitioner’s failure to prosecute.

In a prior proceeding, Petitioner opposed Respondent’s application for the mark at issue – UROCK (stylized), as shown below – alleging a likelihood of confusion with Petitioner’s THE UROCK NETWORK mark.


In the opposition, Respondent successfully moved for judgment for Petitioner’s failure to prosecute because Petitioner did not submit any evidence prior to the close of its testimony period.

Petitioner tried to take another bite at the apple by initiating a cancellation action of Respondent’s mark based, again, on a likelihood of confusion with its THE UROCK NETWORK mark. In lieu of filing an answer, Respondent filed a motion to dismiss, which was construed by the Board as a motion for summary judgment based on claim preclusion.

Claim preclusion bars a second action if:

  1. there was an earlier final judgment on the merits,
  2. involving the parties that are the same or their privies, and
  3. the second action is the same as the first.

First, Respondent argued that its successful motion for judgment based on Petitioner’s failure to prosecute was a final judgment on the merits. On the other hand, Petitioner took the position that it was not a final judgment on the merits, but merely a technicality.  The Board dismissed Petitioner’s position and held that “whether the judgment in the prior proceeding was the result of a dismissal with prejudice or even default, for claim preclusion purposes, it is a final judgment on the merits.”

Second, Petitioner conceded that it and the opposer in the dismissed opposition were the same party, and the applicant and Respondent were the same party.

Third, in examining whether the cancellation action was essentially the same cause of action as the opposition, the Board first looked at whether claim preclusion was used defensively or offensively. In offensive claim preclusion, the Board must assess “whether a party’s new mark makes the same commercial impression as its previously litigated mark and whether the goods and services are the same.”  However, in defensive claim preclusion, the Board only needs to determine “whether the proceedings arise from the same transactional facts and thus could have been brought in the previous proceeding.”

In seeking cancellation, Petitioner argued that it had prior rights in the THE UROCK NETWORK mark and that Respondent’s UROCK mark was likely to be confused with Petitioner’s mark. In the dismissed opposition, Petitioner alleged common law rights in the UROCK mark and THE UROCK NETWORK mark.  The Board concluded that there was no doubt that the cancellation and opposition were essentially the same action where the marks in dispute were the same.

The Board granted Respondent’s motion for summary judgment and dismissed the cancellation with prejudice.

Take away:  Dismissal of a proceeding due to the claimant’s failure to prosecute is a final judgment on the merits when assessing offensive claim preclusion.