New Era Cap Co., Inc. v. Lamar Jackson

This Opinion is Not a
Precedent of the TTAB
Mailed: August 27, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
New Era Cap, LLC
v.
Lamar Jackson
_____
Opposition No. 91264801
_____
Michael J. Berchou, Harter, Secrest & Emery LLP,
for New Era Cap, LLC.
Andrea H. Evans, The Law Firm of Andrea Hence Evans, LLC,
for Lamar Jackson.
_____
Before Pologeorgis, Lebow, and O’Connor,
Administrative Trademark Judges.
Opinion by O’Connor, Administrative Trademark Judge:
Lamar Jackson (“Applicant”) seeks registration on the Principal Register of the
mark ERA 8 BY LAMAR JACKSON, in standard characters, for:
athletic bags; backpacks; duffel bags; sport bags; carry-on
bags; travelling bags, in International Class 18 and

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bottoms as clothing; footwear; headwear; tops as clothing;
undergarments, in International Class 25.1
By way of its Second Amended Notice of Opposition,2 New Era Cap, LLC
(“Opposer”) opposes registration of Applicant’s mark on the following grounds: (1)
priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), based on a number of registrations and a pending application for
NEW ERA in standard character and stylized form and other ERA formative marks,
(2) estoppel, res judicata and issue and/or claim preclusion based on the Board’s entry
of a final default judgment in a prior opposition involving the same parties or their
privies and the identical mark, (3) non-ownership of the mark that is the subject of
the application, and, although not asserted in a separate count, (4) nonuse of the
mark with the Class 18 goods at the time the Application was filed.3 Applicant’s
1 Application Serial No. 88835266 was filed on March 16, 2020, based on Applicant’s claimed
first use of the mark anywhere and in commerce at least as early as October 1, 2018 (the
“Application”).
2 The original Notice of Opposition was filed by New Era Cap Co., Inc., but in an amended
pleading filed on November 10, 2022, the Board was informed that the company had merged
into New Era Cap, LLC, as reflected in Reel/Frame No. 7520/0208 of the USPTO’s assignment
division. See 30 TTABVUE 2; 42 TTABVUE 25-349. Thus, New Era Cap, LLC is hereby
substituted as plaintiff in this proceeding and the caption is amended accordingly. See, e.g.,
NutraSweet Co. v. K & S Foods Inc., No. 91067903, 1987 TTAB LEXIS 19, at *1 n.2 (although
no request to substitute was filed, where name change was recorded and there was no dispute
as to facts surrounding name change, opposer under new name was substituted as plaintiff);
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 512.02 (2026).
3 Opposer’s First Amended Notice of Opposition added a factual allegation of nonuse, which
was repeated in the Second Amended Notice of Opposition. See 13 TTABVUE 6, ¶ 29 (“Upon
information and belief, Applicant was not using Applicant’s Mark on all of the goods
identified in the Opposed Application at the time the Opposed Application was filed.”); 30
TTABVUE 6, ¶ 29 (same). Although Opposer did not plead a separate claim that the
Application is void ab initio for nonuse, this factual allegation put Applicant on notice that
use of the mark at the time Applicant filed the Application was at issue. See ShutEmDown
Sports, Inc. v. Lacy, No. 92049692, 2012 TTAB LEXIS 44, at *35-36 (although there was no
separate claim, allegations in petition for cancellation put respondent on notice of alleged
nonuse; “separate pleading of a nonuse claim, while preferable, is not, however, critical, and

Opposition No. 91264801
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Answer denies certain salient allegations and admits others, as discussed below.4
The opposition is fully briefed. As plaintiff, Opposer bears the burden of
establishing its entitlement to a statutory cause of action and its substantive claims
by a preponderance of the evidence. See Hangzhou Mengku Tech. Co. v. Shanghai
Zhenglang Tech. Co., No. 91272143, 2024 TTAB LEXIS 575, at *5; U.S. Shoe Corp. v.
J. Riggs West, Inc., No. 91066132, 1984 TTAB LEXIS 203, at *5-6 (burden is on
plaintiff to establish nonuse by a preponderance of the evidence); accord Hoover Co.
v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1360 (Fed. Cir. 2001) (“[I]n opposition
proceedings, the opposer bears the burden of establishing that the applicant does not
have the right to register its mark.”).
We find that the elements of claim preclusion have been satisfied with respect to
the goods in the current Application that are identical to those identified in
Applicant’s earlier application, namely, “athletic bags; backpacks; duffel bags; sport
bags” in Class 18 and “bottoms as clothing; footwear; headwear; tops as clothing;
undergarments” in Class 25 and, therefore, the Application is barred with respect to
the Board has found applications to be void ab initio even when nonuse was not pleaded as a
separate claim or issue”).
In addition, the parties briefed the issue of nonuse in Class 18 on the merits. See 90
TTABVUE 3, 24 (Opposer’s main brief); 91 TTABVUE 32-34 (Applicant’s brief); 92
TTABVUE 25 (Opposer’s reply). Accordingly, the claim that the Application is void ab initio
in Class 18 for nonuse has been tried by implied consent of the parties and we treat it as if
raised in the pleadings. See Fed. R. Civ. P. 15(b)(2); TBMP § 507.03(b) and cases cited therein.
4 Applicant asserted one affirmative defense, that “Opposer lacks standing to file this Second
Amended Notice of Opposition.” 37 TTABVUE 6. “Lack of standing, now referred to as
entitlement to a statutory cause of action [is] not a true affirmative defense because [t]he
facts regarding standing ... are part of [a plaintiff’s] case and must be affirmatively
proved.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., No. 92025859, 2022 TTAB LEXIS
454, at *6 n.14 (cleaned up; citation omitted). As discussed below, Opposer has shown its
entitlement and we do not give this purported defense any further consideration.

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those goods. We find that claim preclusion does not apply to “carry-on bags” and
“travelling bags,” which were not identified in the prior application. We also find that
Opposer has shown that the mark was not in use with any of the Class 18 goods
identified in the Application at the time the Application was filed. Thus, we sustain
the opposition on grounds of claim preclusion and nonuse, and do not reach the claims
based on likelihood of confusion or non-ownership. See Tequila Cuadra S. de RL de
CV v. Manufacturera de Botas Cuadra, S.A. de C.V., No. 91282327, 2025 TTAB
LEXIS 207, at *2 (citing Yazhong Inv. Ltd. v. Multi-Media Tech Ventures, Ltd., No.
92056548, 2018 TTAB LEXIS 168, at *44).
I. The Record and Evidentiary Issues
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the files of Applicant’s involved Application. In
addition, Opposer introduced the declaration of Tony DeSimone, its Vice President,
Licensed Sports, with exhibits (40 TTABVUE (confidential) and 41 TTABVUE (public
redacted version)) and notices of reliance (38, 39 (confidential) and 42 TTABVUE )).5
Applicant introduced the declarations of Lamar Jackson (77 TTABVUE 51-53) and
Felicia Jones (77 TTABVUE 49-50) and a notice of reliance with exhibits (71-77 (74
confidential) TTABVUE).6
5 Both parties submitted materials designated as confidential. When referencing these
materials, we indicate where the confidential and redacted, publicly available versions are
docketed. Unless otherwise noted, all citations are to the publicly available documents.
6 Certain pages within Applicant’s Notice of Reliance are not legible even when enlarged. See,
e.g., 72 TTABVUE 5, 23. We do not consider the illegible portions. See Alcatraz Media, Inc.
v. Chesapeake Marine Tours, Inc., No. 92050879, 2013 TTAB LEXIS 347, at *25 n.16 (“Board

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Opposer submitted a rebuttal notice of reliance with exhibits (82, 85 TTABVUE
(amended version adding further explanation of relevance)).
Pursuant to TBMP § 705, the parties filed a stipulation regarding the authenticity
and/or admissibility of discovery materials in this proceeding, subject to objections
based on accuracy, completeness, relevance, materiality, weight and competence.7
The Board commends the parties for utilizing this time- and cost-saving mechanism.
Before reaching the merits, we address certain objections lodged by Applicant.
Applicant objects to and moves to strike paragraphs 4-9, 12-13, 17, 22 and 30-31 of
the DeSimone declaration, which include testimony about the history of Opposer, its
marketing, advertising, sales, and asserted fame and consumer perception of the
NEW ERA brand, on grounds of lack of personal knowledge, lack of probative value,
improper lay opinion and lack of foundation. (See 91 TTABVUE 48-49 (Schedule A to
Applicant’s brief setting forth objections)). Further to its previous motion to strike,
Applicant also objects to Exhibits R-4 through R-98 to Opposer’s amended rebuttal
notice of reliance, which consist of certain screenshots of Applicant’s website, Google
search results, and other internet materials submitted in relation to Opposer’s claims
of likelihood of confusion and non-ownership, on grounds of improper rebuttal,
can only review evidence that is clear and unobstructed so we have considered this evidence
to the extent it is legible”), aff’d mem. 565 F. App’x 900 (Fed. Cir. 2014).
7 21 TTABVUE 2-3.
8 Applicant also objects to four images shown in Opposer’s brief (Exs. R-6 to R-9) as not
included in its notice of reliance. 91 TTABVUE 56. Inasmuch as Opposer has withdrawn
those images, 92 TTABVUE 30, this objection is moot.

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insufficient indication of relevance, lack of relevance, hearsay and/or lack of
foundation. (Id. at 50-56; see 86 TTABVUE.)
The Board does not ordinarily strike testimony taken in accordance with the
applicable rules based on substantive objections which, like substantive objections to
documentary evidence, are typically considered by the Board when evaluating the
probative value of the evidence at trial. See Tao Licensing, LLC v. Bender Consulting
Ltd., No. 92057132, 2017 TTAB LEXIS 437, at *5; see also, e.g., U.S. Playing Card
Co. v. Harbro, LLC, No. 91162078, 2006 TTAB LEXIS 484, at *9 (“[B]ecause an
opposition is akin to a bench trial, the Board is capable of assessing the proper
evidentiary weight to be accorded the testimony and evidence, taking into account
the imperfections surrounding the admissibility of such testimony and evidence.”).
Here, apart from undisputed background information, the subject testimony and
exhibits relate to Opposer’s likelihood of confusion and non-ownership claims, and
have no bearing on our decision, which is based on claim preclusion and nonuse of
the mark at the time of filing. Because such evidence, whether considered or not,
would play no part in our determination of this matter, we decline to decide
Applicant’s objections. Top Tobacco, L.P. v. N. Atl. Operating Co., No. 91157248, 2011
TTAB LEXIS 367, at *12; see also Mars Generation, Inc. v. Carson, No. 91224726,
2021 TTAB LEXIS 386, at *6 (“Opposer lodged some evidentiary objections that
mostly relate to Applicant’s testimony and other evidence attempting to establish
priority of use. … However, given the limited scope of our decision that the opposed

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applications are void ab initio based on nonuse at the time of filing, we need not reach
the priority issue and such evidentiary objections are moot.”).
II. Background
Opposer was founded in 1920, and in the 1930s began building its relationship
with professional sports when its cap became the on-field cap for the Cleveland
Indians.9 Opposer’s relationship with professional baseball grew over the years until
Opposer’s caps became the official cap of every Major League Baseball team in 1993.10
Since 2012, Opposer’s caps have been the official sideline caps of the National
Football League (NFL).11
Lamar Jackson is a quarterback for the Baltimore Ravens NFL team whose
uniform number is 8.12 Mr. Jackson’s business efforts are managed by his mother,
Felicia Jones, and he has given her permission to act on his behalf regarding brand
promotion and forming any companies needed for these efforts.13
In February 2019, Lamar Jackson applied to register ERA 8 BY LAMAR
JACKSON, which was assigned Serial No. 88301276 (the “Prior Application”).14 The
Prior Application was based on use in commerce and identified the following goods:
• “athletic bags; backpacks; duffel bags; sport bags,” in Class 18 and
9 41 TTABVUE 5, DeSimone Decl. ¶¶ 4-5.
10 Id. ¶ 5.
11 Id.
12 77 TTABVUE 51, Jackson Decl. ¶ 2.
13 Id. at 51-52, Jackson Decl. ¶ 8.
14 See id. at 52, Jackson Decl. ¶ 10; see 42 TTABVUE 641-68 (copy of TSDR record).

Opposition No. 91264801
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• “bottoms as clothing; footwear; headwear; jackets; shirts; tops as clothing;
undergarments,” in Class 25.15
New Era Cap Co., Inc., the predecessor of New Era Cap, LLC, opposed the Prior
Application in Opposition No. 91248985 (the “Prior Opposition”).16 The Prior
Opposition was based on priority and likelihood of confusion under Trademark Act
Section 2(d) based on a number of registrations for NEW ERA in standard character
and stylized form and other ERA formative marks.17 The proceeding was instituted
and notice of institution was issued, addressed to Applicant’s Attorney of Record in
the Prior Application.18 Applicant failed to file an answer, and a notice of default was
issued, allowing Applicant thirty days to show cause why judgment by default should
not be entered against Applicant in accordance with Fed. R. Civ. P. 55(b)(2).19 No
response was filed to the notice of default, and on September 18, 2019, default
judgment was entered against Applicant, sustaining the opposition and refusing
registration.20
Thereafter, on March 16, 2020, Applicant filed the current Application for the
identical mark ERA 8 BY LAMAR JACKSON.
15 See 42 TTABVUE 642.
16 Id. at 669-703.
17 Id. at 676-95.
18 Id. at 696-701.
19 Id. at 702; see also id. at 675 (TTABVUE proceeding record reflecting that no answer was
filed).
20 Id. at 703 (citing Fed. R. Civ. P. 55(b) and Trademark Rule 2.106(a)). See also id. at 642-43
(TSDR record reflecting abandonment of the Prior Application after inter partes proceeding).

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III. Opposer’s Entitlement
Entitlement to a statutory cause of action is a requirement that must be proven
by the plaintiff in every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d
1298, 1303 (Fed. Cir. 2020); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,
LLC, 965 F.3d 1370, 1373 (Fed. Cir. 2020). To establish entitlement to a statutory
cause of action, Opposer must demonstrate that it has: (1) an interest falling within
the zone of interests protected by the statute and (2) a reasonable belief in damage
proximately caused by registration of the mark. Curtin v. United Trademark
Holdings, Inc., 137 F.4th 1359, 1367 (Fed. Cir. 2025) (citing Lexmark Int’l, Inc. v.
Static Control Components, Inc., 572 U.S. 118, 129-134 (2014)), cert denied, __ U.S.
__, 224 L. Ed. 2d 497 (April 20, 2026) (No. 25-435), 2026 U.S. LEXIS 1831; Corcamore,
978 F.3d at 1304-07; see also Made in Nature, LLC v. Pharmavite LLC, No. 91223352,
2022 TTAB LEXIS 228, at *18.
Opposer has pleaded use and ownership of the mark NEW ERA and other ERA
formative marks and multiple registrations for those marks, which it properly made
of record by notice of reliance.21 These include U.S. Reg. Nos. 2017209, 2031348,
2434957, 2584973 and 3759352 for NEW ERA in stylized form and/or standard
characters for goods including luggage, handbags, backpacks and wallets in Class 18
21 See 30 TTABVUE 2-3, ¶¶ 3-7; 42 TTABVUE 25-349. See also Trademark Rule 2.122(d)(2),
37 C.F.R. § 2.122(d)(2) (one way for a party to make a registration it owns of record is through
a notice of reliance attaching a copy prepared by the USPTO showing or accompanied by
information reflecting the registration’s current status and title).

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and t-shirts, sweatshirts, baseball jackets and athletic caps in Class 25.22 By virtue
of its registrations, Opposer has shown a commercial interest in this proceeding and
satisfied the zone-of-interests requirement. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 945 (Fed. Cir. 2000) (pleaded registrations “suffice to establish ... direct
commercial interest”; a belief in likely damage can be shown by establishing a direct
commercial interest). Opposer has also shown a plausible claim of likelihood of
confusion and a reasonable belief in likely damage from registration of Applicant’s
mark. Opposer has therefore established, by a preponderance of the evidence, its
entitlement to a statutory cause of action to oppose the Application. See Corcamore,
978 F.3d at 1306-07; Look Cycle Int’l v. Kunshan Qiyue Outdoor Sports Goods Co.,
No. 92079409, 2024 TTAB LEXIS 289, at *7-8.
Once a plaintiff has shown entitlement on one ground, it has the right to assert
any other relevant ground in an opposition proceeding. See, e.g., Tequila Cuadra,
2025 TTAB LEXIS 207, at *11 (“[O]nce an opposer meets the requirements for
[statutory entitlement], it can rely on any of the statutory grounds for opposition set
forth in ... [the Trademark Act].”) (citing Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 1377 (Fed. Cir. 2012)).
22 See 30 TTABVUE 3, ¶ 7; 42 TTABVUE 25-56, 69-78, 89-99; see also 41 TTABVUE 14,
DeSimone Decl. ¶ 36.

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IV. Analysis
A. Res Judicata - Claim Preclusion
Under the doctrine of claim preclusion (or res judicata), “‘a judgment on the merits
in a prior suit bars a second suit involving the same parties or their privies based on
the same cause of action.’” Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed.
Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322) (other citations
omitted). For claim preclusion to apply, there must be:
(1) identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional
facts as the first claim.
Id. (citing Parklane Hosiery, 439 U.S. at 326 n.5) (other citation omitted). Accord
Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 1371 (Fed. Cir. 2006).
1. Identity of the Parties
Applicant has admitted that the parties in the Prior Opposition and the current
opposition are identical.23 Opposer submitted evidence that the named opposer in the
Prior Opposition and this proceeding, New Era Cap Co., Inc., changed its entity type
and name due to a merger into the surviving entity New Era Cap, LLC, which is being
substituted as the plaintiff in this proceeding. Applicant does not argue that New Era
Cap, LLC is not the same party as the opposer in the Prior Opposition, or its privy,
23 See 30 TTABVUE 7, ¶ 41; 37 TTABVUE 5, ¶ 41; see also 77 TTABVUE 52 (Jackson Decl.
¶ 11).

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for purposes of claim preclusion. We find that the parties are identical or privies for
purposes of claim preclusion.
2. Earlier Final Judgment on the Merits
Opposer made of record the Board’s entry of judgment by default against
Applicant in the Prior Opposition24 and Applicant admitted that the Prior Opposition
resulted in a default judgment and that the Board ruled in favor of Opposer in the
Prior Opposition.25 “[W]hether 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.” Urock Network, LLC v. Sulpasso, No. 92058974, 2015 TTAB
LEXIS 293, at *9-10 (citations omitted); see also Sharp, 448 F.3d at 1371 (citation
omitted) (“A default judgment can operate as res judicata in appropriate
circumstances.”); Flowers Indus. v. Interstate Brands Corp., No. 91070572, 1987
TTAB LEXIS 2, at *7 (“Under the doctrine of claim preclusion (or res judicata), the
entry of a final judgment ‘on the merits’ of a claim (or cause of action) in a proceeding
serves to preclude the relitigation of the same claim in a subsequent proceeding
involving the same parties or their privies, even when the prior judgment resulted
from default, consent, or dismissal with prejudice.”). Applicant states that the prior
default judgment “produced no merits determination,” but offers no authority to
counter this settled principle.26 See Orouba Agrifoods Processing Co. v. United Food
Imp., No. 92050739, 2010 TTAB LEXIS 441, at *9 (“[E]ven default judgments for
24 42 TTABVUE 703.
25 37 TTABVUE 5, ¶¶ 45, 47.
26 91 TTABVUE 9.

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failure to answer, or dismissals for failure to prosecute, where there has been no
decision ‘on the merits,’ can act as a bar under the doctrine of claim preclusion.”). We
find that the default judgment in the Prior Opposition was a final judgment on the
merits for purposes of claim preclusion.
3. Second Claim Based on Same Set of Transactional Facts as
the First Claim
We turn now to whether Opposer’s claims in this proceeding are based on the same
set of transactional facts as the Prior Opposition. Specifically, we must consider
whether Opposer’s claims comprise the same “core [or nucleus] of operative facts” or
are “based on the same, or nearly the same, factual allegations” as those asserted in
the prior proceeding. Jet, Inc., 223 F.3d at 1363.
As noted above, both the Prior Opposition and this proceeding are based on the
ground of priority and likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). In both the Prior Opposition and this proceeding, Opposer
pleaded approximately twenty-five overlapping registrations (and one pending
application) for NEW ERA other ERA formative marks. These include U.S. Reg. Nos.
2017209, 2031348, 2434957, 2584973 and 3759352 for NEW ERA in stylized form
and/or standard characters for goods including luggage, handbags, backpacks and
wallets in Class 18 and t-shirts, sweatshirts, baseball jackets and athletic caps in
Class 25.
To determine if separate opposition proceedings against two applications involve
claims with the same set of transactional facts for purposes of claim preclusion, we
consider:

Opposition No. 91264801
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1) Whether the mark involved in the first proceeding is the
same mark, in terms of commercial impression, as the
mark involved in the second proceeding; and
2) Whether the evidence of likelihood of confusion between
the opposer’s mark and the applicant’s first mark would be
identical to the evidence of likelihood of confusion between
the opposer’s mark and the applicant’s second mark.
Be Sport, Inc. v. Al-Jazeera Satellite Channel, No. 91213743, 2015 TTAB LEXIS 259,
at *9 (citation omitted).
It is undisputed that the Prior Opposition and this case involve the identical mark
ERA 8 BY LAMAR JACKSON.
In considering whether the evidence of likelihood of confusion would be the same,
we also consider the goods identified in the two applications. Applicant argues that
the evidence of likelihood of confusion would not be the same because the goods
identified in this Application are not the same as those identified in the Prior
Application.27 Specifically, Applicant states that “[t]he current application adds
carry-on bags and travelling bags in Class 18, and undergarments in Class 25 —
goods absent from the prior application.”28 As pointed out by Opposer, Applicant’s
statement with respect to Class 25 is incorrect. The Prior Application listed all of the
Class 25 goods identified in the Application, including “undergarments.”29 Thus, the
27 91 TTABVUE 37-38.
28 Id. at 38.
29 See 92 TTABVUE 9; 42 TTABVUE 642-68 (copy of TSDR record for Prior Application
identifying goods in Class 25 as “Bottoms as clothing; Footwear; Headwear; Jackets; Shirts;
Tops as clothing; Undergarments”).

Opposition No. 91264801
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evidence going to likelihood of confusion for the goods in Class 25 would be the same
in both proceedings.
With respect to Class 18, “carry-on bags and travelling bags” were absent from the
Prior Application, which covered “athletic bags, backpacks, duffel bags, and sport
bags.” Applicant argues that “[t]hese are not merely different items within a common
category, they are fundamentally different goods serving different consumer
purposes,”30 which would involve different likelihood of confusion analyses. Applicant
concludes, “[t]he prior default addressed sport bags and backpacks. It did not and
could not address carry-on bags and travelling bags. Whatever preclusive effect that
default carries, it cannot reach goods that were never before the Board and that
require their own independent analysis.”31
Opposer responds that all of the Class 18 goods are similar in kind because they
are bags to carry items and Applicant has not produced evidence that the addition of
“carry-on bags” and “travelling bags” requires a new analysis.32 According to Opposer,
“the case law is clear that when the mark is identical and the goods remain
substantially overlapping, the likelihood-of-confusion evidence overlaps to such an
extent that the second opposition is based on the same nucleus of operative facts, and
preclusion applies.”33 Further, Opposer argues, “Applicant’s cited authorities do not
establish that a minor change in an identification defeats preclusion; to the contrary,
30 91 TTABVUE 38.
31 Id. at 39.
32 92 TTABVUE 10.
33 Id.

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Opposer’s cited TTAB cases show that res judicata can apply even where there is a
change in the mark and narrowing of goods—much less the situation here, with an
identical mark and nearly identical goods.”34
Opposer cites two cases in support of its argument, but in those cases the goods
identified in the second application were either identical to or encompassed by the
goods in the first application. See Miller Brewing Co. v. Coy Int’l Corp., No. 91068606,
1986 TTAB LEXIS 159, at *3 (opposed application and previous application were both
for beer); Calavo Growers, Inc. v. Luis Calvo Sanz, S.A., No. 91170990, 2007 TTAB
LEXIS 182, *1-3, 8-9 (non-precedential) (“fish and canned fish” identified in opposed
application were fully encompassed in “meat, fish, poultry and game … canned
preserved meat and fish” identified in previous application; “Applicant cannot avoid
the estoppel effect of a prior decision by filing a second application that contains a
narrower definition of the goods that were ‘fully encompassed’ in the previous
application.”).
Opposer’s argument that “carry-on bags” and “travelling bags” are substantially
similar for likelihood of confusion purposes to “athletic bags, backpacks, duffel bags,
and sport bags” has some surface appeal. But Opposer has not fully developed its
argument that the evidence of likelihood of confusion between Opposer’s marks for
the identified goods and Applicant’s mark for the newly added “carry-on bags” and
“travelling bags” would be the same. And Opposer cites no cases applying claim
preclusion to goods in a subsequent application that were not encompassed by the
34 Id. at 11.

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goods identified in the prior application. We are mindful that “[w]hen 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.”
Sharp, 448 F.3d at 1372 (citing Parklane Hosiery, 439 U.S. at 330-32). “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.” Id. (citing Kearns v. Gen. Motors
Corp., 94 F.3d 1553, 1557 (Fed. Cir. 1996)).
Applicant also argues that his professional achievements since the default
judgment was entered in the Prior Opposition represent a material change in
circumstances, such that Opposer has not shown that this proceeding arises from the
same set of transactional facts.35 Applicant argues that trademark rights are not
static, and likelihood of confusion must be determined based on the facts as they exist
today, taking account of intervening developments that bear “directly on the strength
of the ERA 8 BY LAMAR JACKSON mark,” which “[p]reclusion cannot reach.”36
These include retirement of Mr. Jackson’s No. 8 jersey at the University of Louisville
(an honor only awarded to one other player), his five-year, $260 million contract
extension signed in April 2023 (the highest annual value in NFL history at the time)
35 91 TTABVUE 42-46.
36 Id. at 43-44.

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and his unanimous league MVP award.37 Since the prior default, Mr. Jackson has
also achieved high ranking sales of his No. 8 jersey, reached 3.2 million social media
followers and registered his word and design mark featuring a wild dog design and
the words 2018 ERA 8 BY LAMAR JACKSON 2018.38 Applicant contends that these
“are objectively verifiable events that transformed the commercial landscape, not
recycled arguments.”39
Prior decisions of the Federal Circuit and the Board have recognized that a
material change in circumstances may cause the transactional facts to differ from
those involved in an earlier case. Mayer/Berkshire Corp. v. Berkshire Fashions, Inc.,
424 F.3d 1229, 1233 (Fed. Cir. 2005) (“A change in trademark usage can constitute a
change in transactional facts that avoids preclusion based on the earlier non-
infringement decision.”); Flame & Wax, Inc. v. Laguna Candles, LLC, No. 92072343,
37 Id. (citing exhibits to Applicant’s Notice of Reliance). Many of the exhibits are printouts of
articles from the internet, which may be made of record by notice of reliance alone under
Trademark Rule 2.122(e)(2), 37 C.F.R. 2.122(e)(2), for what is shown on their face. See, e.g.,
WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., No. 91221553, 2018 TTAB
LEXIS 72, at *10-11, 18-19 (TTAB 2018) (printouts from websites downloaded from the
internet are admissible under notice of reliance for what they show on their face, but absent
testimony from a competent witness, the matters asserted therein are hearsay and thus not
probative of the truth of what has been printed); see also TBMP § 704.08(b) and cases cited
therein.
Applicant did not offer testimony of Mr. Jackson regarding the majority of these
achievements, relying instead on the printouts. See 91 TTABVUE 42-46. Opposer did not
object or dispute the truth of the content of the articles regarding Mr. Jackson’s
achievements, see 92 TTABVUE 16, and there is no reason for us to doubt their veracity in
this regard. Moreover, even without testimony about the underlying facts, we consider the
articles as showing that Mr. Jackson was recognized in the various articles for having
attained those achievements, even if Applicant did not properly submit evidence of the
achievements themselves.
38 See 91 TTABVUE 45.
39 Id. at 42.

Opposition No. 91264801
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2022 TTAB LEXIS 272, at *54 (declining to apply claim preclusion based on prior
Board decision finding same mark geographically descriptive without a showing of
acquired distinctiveness where evidence including increased sales since the earlier
trial established a recognizable change of circumstances); Flowers Indus., 1987 TTAB
LEXIS 2, at *12-13 (facts relating to the applicant’s right to registration under
Trademark Act Section 2(f) were not substantially the same where forty years had
passed since prior application, and the applicant now claimed use for more than fifty
years, as opposed to approximately ten years in the prior application).
This is most often applied in ex parte cases where intervening events may have
affected the distinctiveness of the involved mark. For example, in In re Honeywell
Inc., No. 73597917, 1988 TTAB LEXIS 38, at *9, the Board found that the applicant
was not precluded by an earlier functionality refusal from attempting again to
register its product design mark for a thermostat cover, where 17 years had passed
since the original application, there was new marketplace evidence regarding
competitors’ need to use the design, and the applicant no longer claimed a
transparent window as part of the mark.
The cases make clear that for a change in circumstances to counsel against claim
preclusion the change must be material. In In re Bose Corp., 476 F.3d 1331 (Fed. Cir.
2007), the Federal Circuit affirmed the Board’s decision that claim preclusion applied
despite the applicant’s argument of changed circumstances. The Board distinguished
Honeywell because, inter alia, absence of a feature that was previously claimed as
part of the mark represented a significant factual difference, whereas the marks in

Opposition No. 91264801
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Bose were substantially identical. See id. at 1333-34; In re Bose Corp., No. 74734496,
2005 TTAB LEXIS 293, at *14, 20. Similarly, in In re SolarWindow Techs., Inc., No.
87819480, 2021 TTAB LEXIS 69, at *10-11, the Board applied claim preclusion
despite Applicant’s assertion of additional facts to traverse the mere descriptiveness
refusal:
The Prior Decision issued less than 20 months before
Applicant filed the Present Application for the same mark
and for the same goods. Applicant argued to the Examining
Attorney that there are now “additional facts” that prevent
res judicata. But pointing to additional facts or even
making a more persuasive argument based on those facts
does not avoid preclusion from an earlier decision. Cf.
SynQor, Inc. v. Vicor Corp., [988 F.3d 1341, 1355 (Fed. Cir.
2021)] (“A losing party does not get a second bite at the
apple simply because they can find [] new and arguably
more persuasive” evidence to present in the second
proceeding.). Rather, the losing party must
demonstrate a material change in the relevant
conditions or circumstances, and we are not persuaded
that there have been any such changes since the Prior
Decision.
Here, we do not find a material change in the facts relevant to the claim of
likelihood of confusion. As detailed above, except for the newly added goods (which
we conclude are not subject to claim preclusion), the Prior Opposition involved the
same parties (or their privies), the same mark, and the same goods, and resulted in
a judgment by default, which operates as a judgment on the merits. This Application
was filed approximately six months after default judgment was entered in the Prior

Opposition No. 91264801
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Opposition. Evidence in the record indicates that Mr. Jackson’s upward trajectory
was well in motion in September 2019 when the default judgment was entered.40
Applicant argues that his post-default developments are “nationally reported
milestones that directly affect mark strength as a du Pont factor.”41 Opposer does not
dispute Lamar Jackson’s personal fame,42 and for good reason, as the record evidence
supporting his renown is plentiful.43 But DuPont refers to “the fame of the prior
mark (sales, advertising, length of use)” as a factor in the likelihood of confusion
analysis, not the strength of Applicant’s mark. DuPont, 476 F.2d at 1361. Applicant
does not cite authority for the strength of his own mark being relevant under any
DuPont factors.
Applicant also argues that his composite mark featuring a wild dog design and
the words 2018 ERA 8 BY LAMAR JACKSON 2018 registered on January 16, 2024,
which he states supports his position that “the absence of actual consumer confusion
40 See, e.g., 77 TTABVUE at 51, Jackson Decl. ¶ 5 (Mr. Jackson changed his Instagram handle
from LJ_Truth to @new_era8 in 2015); 42 TTABVUE 388 (Jackson Dep. testimony that he
entered the NFL in 2018); 71 TTABVUE 7-9 (February 1, 2020 article on nfl.com stating that
Jackson was unanimously named the 2019 NFL MVP), 33-40, 35 (November 11, 2021 blog
post on espn.com describing Jackson’s history of success starting from youth football to taking
“the NCAA and NFL by storm”), 60-61 (February 20, 2020 article on si.com describing
Jackson’s winning of both the Heisman trophy and NFL MVP as well as his performance over
the past season and records set “last season”). His trademark registration for LAMAR
JACKSON for goods in Classes 18 and 25 issued in April 2019. See id. at 21.
41 91 TTABVUE 43 (citing In re E.I. duPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973));
45 (discussing Mr. Jackson’s top selling No. 8 NFL jersey, consumer association of the
number 8 with Applicant and increased awareness of Lamar Jackson himself as supporting
strength of his mark).
42 92 TTABVUE 16.
43 See, e.g., 71 TTABVUE, 7-20, 33-86 (news articles about Mr. Jackson); 72 TTABVUE 2-4,
6-22 (same).

Opposition No. 91264801
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during concurrent use can weigh against a finding of likelihood of confusion,”44
apparently referencing the eighth DuPont factor. See DuPont, 476 F.2d at 1361
(factors include the “length of time during and conditions under which there has been
concurrent use without evidence of actual confusion”). But Applicant offers no
explanation of how this shows concurrent use of the mark involved in this case and
Opposer’s marks or how it would change the likelihood of confusion analysis.
We find that Applicant has not shown a material change in circumstances that
would alter the likelihood of confusion analysis in this proceeding from the Prior
Opposition.
4. Applicant’s Lack of Notice of Prior Opposition
Finally, we address Applicant’s argument that it had no opportunity to litigate
the Prior Opposition because it was not informed of the proceeding by its prior
counsel. According to Applicant,
The prior default was not the product of a considered
decision by Applicant. It was the product of prior counsel’s
failure to notify Applicant that the opposition existed, that
a response was required, or that default had been entered.
The factual predicate is uncontroverted. Lamar Jackson
declared under oath that neither he nor his business
manager ‘were ever made aware that this application had
been terminated.’ Declaration of Lamar Jackson ¶¶11, 15.
Felicia Jones confirmed, “Mr. Jackson and I were never
advised of this (previous) opposition by counsel and were
not notified that default had been entered.” Declaration of
Felicia Jones ¶7. New Era has offered no testimony, no
44 91 TTABVUE 45.

Opposition No. 91264801
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correspondence, and no document suggesting that Jackson
or Jones knew the prior opposition existed.45
However, any lack of notice of the Prior Opposition does not avoid claim preclusion
based on a proceeding to which Applicant was indisputably a party. Applicant’s
argument goes to the fourth element of issue preclusion, which requires that “the
party defending against preclusion had a full and fair opportunity to litigate the issue
in the prior proceeding.” Mayer/Berkshire Corp., 424 F.3d at 1232 (even if claim
preclusion does not apply, “the related principle of collateral estoppel or issue
preclusion can also bar relitigation of the same issue in a second action,” provided
that, in the prior proceeding, (1) there was identity of an issue, (2) the identical issue
was actually litigated, (3) determination of the issue was necessary to the judgment,
and (4) the party defending against preclusion had a full and fair opportunity to
litigate the issue). This proceeding specifically deals with claim preclusion, not issue
preclusion, so this legal argument is inapposite.
As noted by Opposer, Applicant cites no authority suggesting that any failure by
prior counsel to provide notice of the Prior Opposition or default judgment avoids the
application of claim preclusion. The Trademark Rules state that applicants are
responsible for monitoring the status of their applications. See Trademark Rule
2.23(d)(1), 37 C.F.R. § 2.23(d)(1) (“Applicants and registrants are responsible for
monitoring the status of their applications and registrations in the USPTO’s
45 91 TTABVUE 41-42. Opposer disputes the factual predicate for this argument, pointing to
deposition testimony. 92 TTABVUE 14 (citing F. Jones Dep. 40:9-42:9 (Applicant’s NOR Ex.
AN, 42 TTABVUE 444-46)).

Opposition No. 91264801
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electronic systems … [a]t least every six months between the filing date of the
application and issuance of a registration”). And litigants generally have a duty to
remain diligent and engaged in legal proceedings to which they are parties, whether
represented or acting pro se. Cf. CTRL Sys. Inc. v. Ultraphonics of N. Am. Inc., No.
91096623, 1999 TTAB LEXIS 468, at *7 (“Moreover, it is well settled that the client
and the attorney share a duty to remain diligent in prosecuting or defending the
client’s case; that communication between the client and attorney is a two-way affair;
and that action, inaction or even neglect by the client’s chosen attorney will not excuse
the inattention of the client so as to yield the client another day in court.”); Pumpkin
Ltd. v. The Seed Corps, No. 91099224, 1997 TTAB LEXIS 24, at *12 (“[U]nder our
system of representative litigation, a party must be held accountable for the acts and
omissions of its chosen counsel....”). As such, Applicant cannot rely on a lack of
communication by prior counsel as grounds to avoid the preclusive effect of the
judgment against it in the Prior Opposition. While such circumstances may be
relevant to a request for relief under Fed. R. Civ. P. 60(b) in the Prior Opposition,
they do not negate the finality of the earlier judgment for purposes of claim preclusion
here.46
46 This Application was filed on March 16, 2020, indicating that Applicant was aware of the
default judgment in the Prior Opposition approximately six months after it entered. Yet there
is no indication that Applicant moved to set aside the default judgment even though he was
within the time to do so. See Fed. R. Civ. P. 60(b) (providing that a party may move for relief
from a final judgment for mistake, inadvertence, surprise, or excusable neglect within a
reasonable time but no more than a year after entry of the judgment).

Opposition No. 91264801
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5. Conclusion on Claim Preclusion
We find that the Prior Opposition and this proceeding involve the same set of
transactional facts as to the goods identified in both applications, namely, “athletic
bags; backpacks; duffel bags; sport bags” in Class 18 and “bottoms as clothing;
footwear; headwear; tops as clothing; undergarments” in Class 25. The Application is
therefore barred by claim preclusion as to those goods. However, we do not find that
the Prior Opposition and this proceeding involve the same set of transactional facts
as to “carry-on bags” and “travelling bags” in Class 18, which were not identified in
the Prior Application, and claim preclusion does not apply to those goods.47
B. Claim of Nonuse
We now turn to the claim based on nonuse of Applicant’s mark with the Class 18
goods at the time the Application was filed.
1. Legal Standard
Under Section 1(a) of the Trademark Act, a mark may not be registered unless it
is “used in commerce” as of the application filing date. 15 U.S.C. § 1051(a). See, e.g.,
Barbara’s Bakery, Inc. v. Landesman, No. 91157982, 2007 TTAB LEXIS 9, at *19 (“an
opposition will be sustained as to any of the identified goods as to which it is shown
that no use had been made as of the application filing date”). “The term ‘use in
commerce’ means the bona fide use of a mark in the ordinary course of trade, and not
made merely to reserve a right in a mark.” 15 U.S.C. § 1127. For goods, the “use in
47 Although we find that claim preclusion only applies to some of the goods in Class 18, as
stated below the entire class nevertheless fails on the nonuse ground.

Opposition No. 91264801
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commerce” requirement is met when the mark is placed on the goods or their
containers or the displays associated therewith or on the tags or labels affixed thereto
and the goods are sold or transported in commerce. Id.; see also Aycock Eng’g, Inc. v.
Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009). An applicant “may not claim a
Section 1(a) filing basis unless the mark was in use in commerce on or in connection
with all the goods or services covered by the Section 1(a) basis as of the application
filing date.” Hachette Filipacchi Presse v. Elle Belle LLC, No. 92042991, 2007 TTAB
LEXIS 53, at *13 (emphasis omitted).
“An application based on use of the mark in commerce under Section 1(a), as in
this case, is void ab initio if the mark was not in use in commerce in connection with
the goods identified in the application at the time the application was filed.” Fender
Musical Instruments Corp. v. Win-D-Fender, LLC, No. 91272326, 2022 TTAB LEXIS
482, at *11-12. Cf. Aycock Eng’g, 560 F.3d at 1357 (“The registration of a mark that
does not meet the use requirement is void ab initio.”).
2. Application to the Facts
In support of this claim, Opposer points first to Applicant’s answers to paragraphs
29 and 30 of Opposer’s Second Amended Notice of Opposition:
29. Upon information and belief, Applicant was not using
Applicant’s Mark on all of the goods identified in the
Opposed Application at the time the Opposed Application
was filed.
29. Admit.
30. Upon information and belief, Applicant is not currently
using Applicant’s Mark on all of the goods identified in the
Opposed Application.

Opposition No. 91264801
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30. Admit.48
Opposer also points to the following deposition testimony of Ms. Jones:
Q: Well, so has the mark ever been used on athletic bags,
backpacks, duffle bags, sport bags, carry-on bags or
traveling on [sic] bags?
A: Not currently, no.
Q: It wasn’t used on those goods in the past?
A: No.49
In response, Applicant argues that Opposer has failed to meet its burden of
proving nonuse based on this “isolated testimony taken in a deposition setting and
without full context.”50 However, Applicant does not point to any other testimony that
contradicts it. Instead, Applicant states,
First, the record evidence contradicts Opposer’s
characterization. Applicant submitted a specimen for Class
18 goods with the application, demonstrating use of the
ERA 8 BY LAMAR JACKSON mark in connection with
backpacks. Deposition of Felicia Jones, 58:4-11. This alone
defeats any categorical claim that the mark was not in use
for Class 18 goods.51
Applicant’s Class 18 specimen appears below:
48 90 TTABVUE 24; 92 TTABVUE 25 (citing 30 TTABVUE 6, ¶¶ 29, 30 (Second Amended
Notice of Opposition); 37 TTABVUE 4, ¶¶ 29, 30 (Answer to Second Amended Notice of
Opposition)).
49 90 TTABVUE 24; 92 TTABVUE 25; 42 TTABVUE 452-53, Felicia Jones Dep. at 48:18-
49:1.
50 91 TTABVUE 32.
51 Id. at 33.

Opposition No. 91264801
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The testimony cited by Applicant reads:
Q: Can you tell us what this is a picture of?
A: That’s the -- I believe in 2018 when we had the
backpacks.
Q: What does the label say on the backpack?
A: Era 8 Apparel by Lamar Jackson.
Q: I want to Zoom in so you can read it closer.
A: Era 8 by Lamar Jackson.52
We acknowledge that this testimony could be read to say that Applicant had
backpacks bearing the mark in 2018. However, Ms. Jones did not testify that the
mark was being used on backpacks, or any other goods in Class 18, in 2020 when the
Application was filed. And a specimen submitted with an application is not evidence
of use on behalf of the applicant. See Trademark Rule 2.122(b)(2), 37 C.F.R. §
2.122(b)(2) (“The allegation in an application for registration ... of a date of use is not
52 42 TTABVUE 462, Felicia Jones Dep. at 58:4-11 (discussing Ex. 18, 74 TTABVUE 147-56
(Class 18 specimen found at 154)).

Opposition No. 91264801
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evidence on behalf of the applicant or registrant; a date of use of a mark must be
established by competent evidence. Specimens in the file of an application for
registration ... are not evidence on behalf of the applicant or registrant unless
identified and introduced in evidence as exhibits during the period for the taking of
testimony.”). Tellingly, Applicant submitted the declarations of both Mr. Jackson and
Ms. Jones but neither says anything about use of the mark with the Class 18 goods.53
Applicant further argues that
Ms. Jones also testified that the mark appears on hang tags
or labels affixed to bags. Deposition of Felicia Jones, 50:9-
20. Hang tags are a recognized and accepted form of
specimen demonstrating use of a mark in commerce for
goods. TMEP § 904.07(a).54
The cited testimony reads:
Q: Are there any hang tags or any labels?
A: Yes. We have sometime but right now we changed it, so
no. So at this time it’s just on the bags.
Q: I’m sorry. At some point you had hang tags?
A: Yes.
Q: And what was on those hang tags?
A: We had the symbol with the Lamar Jackson Era 8, by
Lamar Jackson. We also had it CD County, the wild dog.
They all had different tags on the clothing at the time.55
The deposition testimony made of record does not contain any testimony about the
type of “bags” that Ms. Jones was referring to. However, in Applicant’s response to
53 See 77 TTABVUE 49-50 (Felicia Jones Declaration); 51-53 (Lamar Jackson Declaration).
54 91 TTABVUE 33.
55 42 TTABVUE 454.

Opposition No. 91264801
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Opposer’s interrogatory asking about use of the mark, the only type of bag mentioned
was “packaging bags.”
Interrogatory No. 6: Describe the manner in which
Applicant uses Applicant’s Mark on Applicant’s goods.
Response: Applicant objects to this Interrogatory as
requiring a legal conclusion requiring the trademark
definition of “use”. Notwithstanding the above objection,
Applicant’s mark is used on clothing apparel and
accessories as images on these garments, the sleeves,
printed on pants legs, phone cases, hats, boxers, lanyards,
keychains, pop sockets, beer coasters, socks, neck-tags,
packaging bags, and on websites and social media
platforms.56
The interrogatory response does not mention any of the bags identified in Class
18 of the Application, namely, “athletic bags; backpacks; duffel bags; sport bags;
carry-on bags; travelling bags.” The only bags it mentions are “packaging bags,”
which is consistent with Ms. Jones’ testimony indicating that hang tags were used on
the clothing at one time but then the mark was used on “the bags.”
The foregoing evidence supports a finding that Applicant was not using the ERA
8 BY LAMAR JACKSON mark with any of the Class 18 goods at the time the
Application was filed. Nonuse is also supported by Applicant’s failure to proffer any
affirmative testimony or documentary evidence, such as purchase orders or invoices,
showing that it sold or shipped any athletic bags, backpacks, duffel bags, sport bags,
carry-on bags or travelling bags under the mark as of the filing date. Cf.
ShutEmDown Sports, 2012 TTAB LEXIS 44, at *34-35 (prima facie showing of
56 Id. at 564.

Opposition No. 91264801
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abandonment based on nonuse made based on admissions by defendant and
“interrogatory responses coupled with [defendant’s] acknowledgment of the lack of
documents such as sales records, bank records, tax returns, sales receipts, invoices,
bills of service, advertising and promotional materials”); Commodore Elec. Ltd. v.
CBM K.K., No. 91086336, 1993 TTAB LEXIS 6, at *13 (“[A]bsent other facts which
adequately explain or outweigh the failure of an applicant to have any documents
supportive of or bearing upon its claimed intent to use its mark in commerce, the
absence of any documentary evidence on the part of an applicant regarding such
intent is sufficient to prove that the applicant lacks a bona fide intention to use its
mark in commerce as required by Section 1(b).”).
Accordingly, the Application to register as to Class 18 is void ab initio based on
nonuse at the time the Application was filed. See ShutEmDown Sports, 2012 TTAB
LEXIS 44, at *37; Barbara’s Bakery, 2007 TTAB LEXIS 9, at *19 (“In a use-based
application filed under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), registration
is allowed only as to goods upon which the mark is being used as of the application
filing date, and an opposition will be sustained as to any of the identified goods as to
which it is shown that no use had been made as of the application filing date.”).57
57 To the extent Applicant suggests it may “cure” nonuse by amending the filing basis to
Section 1(b) (intent to use), 91 TTABVUE 33, at no time did Applicant move to amend its
filing basis under Trademark Rule 2.133(a), 37 C.F.R. § 2.133(a). Any request to amend now
would be untimely. See, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Serv., No. 91211014, 2016
TTAB LEXIS 98, at *5 (denying the applicant’s motion to amend to Supplemental Register
raised “for the first time in its brief on the case” where issue was neither raised prior to or
during trial nor tried by implied consent); see also TBMP § 514.03 (“An unconsented motion
to amend that is not made prior to trial, and which, if granted, would affect the issues
involved in the proceeding, normally will be denied by the Board unless the matter is tried
by express or implied consent of the parties pursuant to Fed. R. Civ. P. 15(b).”).

Opposition No. 91264801
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V. Conclusion
Claim preclusion bars registration of Applicant’s mark as to the following goods,
which are identical to goods identified in Applicant’s Prior Application: “athletic bags;
backpacks; duffel bags; sport bags” in Class 18 and all of the goods in Class 25,
namely, “bottoms as clothing; footwear; headwear; tops as clothing; undergarments.”
In addition, the Application is void ab initio as to all of the goods in Class 18, namely,
“athletic bags; backpacks; duffel bags; sport bags; carry-on bags; travelling bags,”
because the mark was not in use in commerce on those goods as of the filing date of
the Application as required by Trademark Act Section 1(a), 15 U.S.C. § 1051(a).
Decision:
The opposition is sustained.