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A default judgment in an opposition proceeding does not have res judicata effect on a petition to cancel a trademark registration, the Federal Circuit ruled July 27 ( International Nutrition Co. v. Horphag Research Ltd., No. 99-1385, Fed. Cir.). The court vacated an order by the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office dismissing a petition by International Nutrition Co. (INC) to cancel a registration held by Horphag Research Ltd. Horphag became the registered owner of the trademark “Pycnogenol” in the United States after a French organization, SCERPA, which owns the French registration for the mark “Pycnogenols” (with an “s”), abandoned its opposition to Horphag’s application in October 1992. The mark is used to identify a source of specific complexes of bioflavonoids, called proanthocyanidins, which are found in extracts of pine bark and other plants. In March 1994, SCERPA assigned the French registration for the mark “Pycnogenols” to INC; INC was already the owner of the French registration for the mark without an “s.” INC then began selling proanthocyanidins in the United States. In August 1997, INC filed a petition to cancel Horphag’s registration of the Pycnogenol mark, alleging that Horphag or its predecessor falsely claimed to be the owner of the mark, to have manufactured goods bearing the mark and to have first used the mark in July 1987. RES JUDICATA CLAIM Horphag moved for summary judgment, asserting res judicata as a result of the default judgment entered against SCERPA after its opposition was abandoned. INC moved for further discovery. The TTAB granted Horphag’s motion, finding that INC was a successor-in-interest to SCERPA and therefore barred by res judicata from pursuing cancellation as a matter of law. Vacating that ruling and remanding, the Federal Circuit held that the TTAB erred in finding that INC and SCERPA are in privity. “In finding that INC and SCERPA are in privity, the Board focused on the 1994 assignment of the French trademark for Pycnogenols from SCERPA to INC,” the panel said. “The opposition and cancellation proceedings, however, do not in any way involve, INC’s rights in the French trademark. The French trademark for Pycnogenols was not the subject of SCERPA’s opposition to the United States registration of Pycnogenol, and it is not the subject of the instant cancellation proceeding. “Nor did INC base its right to seek cancellation of Horphag’s trademark for Pycnogenol on INC’s rights in the related French mark. Instead INC based its challenge to the registration on its interest in using the mark in the future to market its products. Because the cancellation proceeding does not derive from or involve an adjudication of INC’s rights in the French trademark for Pycnogenols, the transfer of the rights in that trademark did not render INC in privity with SCERPA for purposes of the opposition and cancellation proceedings at issue in this case.” INC is represented by Norman H. Zivin and Donna A. Tobin of Cooper & Dunham in New York. Horphag is represented by Marvin S. Gittes and Michael A. Adler of Cobrin & Gittes in New York. � Copyright 2000 Mealey Publications, Inc.

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