Mars, Incorporated v. Pags Inc.

This Opinion is Not a
Precedent of the TTAB
Mailed: September 16, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Mars, Incorporated
v.
PAGS Inc.
_____
Opposition No. 91263504
_____
John J. Dabney, Mary D. Hallerman, and Morgan R. Povinelli of Snell & Wilmer
L.L.P. for Mars, Incorporated.
Todd Deveau of Thomas Horstemeyer, LLP for Pags Inc.
_____
Before Lykos, Lavache and Brock,
Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:
PAGS Inc., d/b/a Pet-Agree Grooming Supplies, (“Applicant”) seeks to register on
the Principal Register the standard character mark PET-AGREE GROOMING
SUPPLIES for
wholesale supply store services for pet grooming supplies
in the business to business market directed to pet
professionals and commercial pet groomers, expressly
excluding pet food, pet treats and products fed to pets and
animals and excluding bowls, cups and containers for pet

Opposition No. 91263504
- 2 -
food, pet treats and products fed to pets and animals” in
International Class 35.1
During prosecution, Applicant complied with the Trademark Examining Attorney’s
requirement to disclaim GROOMING SUPPLIES apart from the mark as shown.2
Mars, Incorporated (“Opposer”) opposes registration on the grounds that
Applicant’s mark (1) so resembles Opposer’s previously used and registered marks
that it is likely to cause confusion, mistake, or deceive prospective consumers under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); (2) is likely to dilute the
distinctive quality of Opposer’s marks under Trademark Act Section 43(c), 15 U.S.C.
§ 1125(c); and (3) that the registration of Applicant’s mark is barred by the doctrines
of res judicata and collateral estoppel based on the Board’s final decision in a prior
proceeding involving the parties sustaining Opposer’s Section 2(d) claim against
1 Application Serial No. 88767940, filed January 21, 2020 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
Citations to the record throughout the decision include references to TTABVUE, the Board’s
online docketing system. The number preceding “TTABVUE” corresponds to the docket entry
number; the number(s) following “TTABVUE” refer to the page number(s) of that particular
docket entry. See, e.g., Turdin v. Trilobite, Ltd., No. 94002505, 2014 TTAB LEXIS 17, at *6
n.6. Citations to the prosecution file of the opposed application refer to the USPTO’s
Trademark Status & Document Retrieval (“TSDR”) system.
This opinion cites decisions of the U.S. Court of Appeals for the Federal Circuit and the U.S.
Court of Customs and Patent Appeals by the pages on which they appear in the Federal
Reporter (e.g., F.2d, F.3d, or F.4th). For Board decisions, this opinion uses citations to the
Lexis® legal database, as well as the TTABVUE proceeding number, where available. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 101.03(a)(2)
(2026).
2 February 20, 2021 Office Action (making the disclaimer requirement) and Applicant’s
October 25, 2021 Response to Office Action (complying with the disclaimer requirement).

Opposition No. 91263504
- 3 -
Applicant. See Mars, Inc. v. PAGS Inc., No. 91221462, 2019 TTAB LEXIS 505 (non-
precedential) (“Prior Opposition”).3
In the Notice of Opposition, Opposer pleaded prior common law rights in the mark
PEDIGREE in connection with “the advertising, promotion, distribution, and sale of
dog food, dog treats, and dog-related goods and services”4 as well as ownership of the
following registrations:5
Reg. Nos. 13869836 and 4268435 for, respectively, the typed and standard
character marks PEDIGREE for “pet food” in International Class 31 and
“cups and bowls not of precious metal or coated therewith; porcelain mugs
and earthenware mugs, all of the foregoing used to promote the sale of pet
food,” in International Class 21;
Reg. No. 284342 for the mark for “canned dog food” in
International Class 31;
Reg. Nos. 1631808 and 1679350 for the composite mark for
“pet food” in International Class 31 and “periodically published journal
pertaining to health care of pets,” in International Class 16; and
Reg. No. 1834853 for the composite mark for “pet food,” in
International Class 31.7
3 Notice of Opposition, 1 TTABVUE.
4 Id. at ¶ 6; id. at 8.
5 Id. at ¶ 8; id. at 9.
6 A typed drawing is the legal equivalent of a standard character drawing. TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (May 2026).
7 Each of these registrations have been properly made of record via TSDR printouts showing
status and title. See Opposer’s Notice of Reliance at 58 TTABVUE. We further note that
Opposer submitted additional registrations under notice of reliance not pleaded in its Notice
of Opposition. Although Applicant did not object, we nonetheless confine our analysis to those
registrations pleaded in Opposer’s Notice of Opposition.
Opposer also pleaded ownership of Registration No. 4343941 which, according to Office
records was cancelled on December 8, 2023, for failure to file maintenance documents under

Opposition No. 91263504
- 4 -
In its Answer, Applicant made several admissions regarding the Prior Opposition,
namely that, “on about March 28, 2014, it filed application 86/235,357 (‘the ‘357
application’) for the mark PET-AGREE” for, as amended, “‘wholesale and retail
supply store services featuring pet grooming supplies; online wholesale and retail
supply store services featuring pet grooming supplies’”; that Opposer opposed
registration of the application in Opposition No. 91221462; that during the Prior
Opposition the parties exchanged discovery, submitted trial briefs, and participated
in an oral hearing “on or about February 12, 2019”; that the Board issued a final
decision sustaining the opposition “on or about July 15, 2019”; and that Applicant
petitioned for review to the U.S. Court of Appeals for the Federal Circuit (“Federal
Circuit”), but later voluntarily moved to dismiss the appeal, which the Federal Circuit
granted.8 Applicant otherwise denied the salient allegations in the Notice of
Opposition.
Applicant also asserted various putative “affirmative defenses” which were
deemed in the Board’s February 1, 2021 order as mere amplifications of its denials to
the Notice of Opposition.9 The Board also indicated in that same order that Applicant
failed to sufficiently plead an affirmative defense under Trademark Act Section 18,
Trademark Act Sections 8 and 9. See 15 U.S.C. § § 1058(a)(1), (a)(3) and 15 U.S.C. § 1059(a).
We have therefore given this registration no consideration. See Action Temporary Servs Inc.
v. Labor Force Inc., 870 F.2d 1563, 1566 (Fed. Cir. 1989) (“a canceled registration does not
provide constructive notice of anything”).
In addition, Opposer pleaded ownership of Registration No. 4236428 for “pet food,” in
International Class 31 which involves a mark for trade dress in the form of product
packaging.
8 Answer, ¶¶ 13-16, 20-22; 4 TTABVUE 4-5.
9 Id. at 5-6; February 1, 2021 Board Order, 11 TTABVUE 2.

Opposition No. 91263504
- 5 -
15 U.S.C. § 1068, to restrict its application to avoid a likelihood of confusion.10
However, Applicant did file on December 1, 2023 an unconsented motion to amend
its identification of services during the interlocutory phase of this case, the
determination of which was deferred until trial.11
The case is fully briefed.12 Opposer, as plaintiff in this proceeding, bears the
burden of establishing its entitlement to a statutory cause of action and substantive
claims by a preponderance of the evidence. See Jansen Enters. Inc. v. Rind, No.
92042871, 2007 TTAB LEXIS 47, at *7. In reaching our decision, we have not
considered any statements made by the parties in their briefs that are unsupported
by evidence properly in the record. See, e.g., Saul Zaentz Co. v. Bumb, No. 91156518,
2010 TTAB LEXIS 236, at *6 n.6 (Board gave no consideration to applicant’s
declaration submitted on summary judgment referred to in its brief because the
declaration was not made of record during trial). We also have not addressed the
parties’ arguments based on non-precedential Board final decisions or orders because
such opinions are not binding upon the Board. See TBMP § 101.03 and cases cited
therein.
10 February 1, 2021 Board Order, 11 TTABVUE 2, n.3.
11 March 11, 2024 Board Order, 52 TTABVUE 6. See also Applicant’s Motion to Amend at 48
TTABVUE, and Opposer’s Opposition to Applicant’s Motion to Amend at 50 TTABVUE.
12 Opposer’s publicly redacted main trial brief and confidential version may be found at 104
and 105 TTABVUE; Applicant’s main trial brief is at 107 TTABVUE and Opposer’s reply
brief is at 109 TTABVUE. Applicant interposed, and Opposer responded to, evidentiary
objections in separate submissions at 108 and 110 TTABVUE. See Alcatraz Media, Inc. v.
Chesapeake Marine Tours Inc., No. 92050879, 2013 TTAB LEXIS 347, *8 n.7 (appropriate
evidentiary objections may be raised in appendix or separate submission rather than in text
of brief), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).

Opposition No. 91263504
- 6 -
For the reasons explained below, the Board:
● denies Applicant’s motion to amend its identification of services; and
● sustains Opposer’s res judicata claim.
In view of the disposition of Opposer’s res judicata claim, we decline to consider
Opposer’s likelihood of confusion, collateral estoppel, and dilution by blurring claims.
See Yazhong Inv. Ltd. v. Multi-Media Tech Ventures, Ltd., No. 92056548, 2018 TTAB
LEXIS 168, at *44 (Board has discretion “to decide only those claims necessary to
enter judgment and dispose of the case”).
I. The Record and Evidentiary Objections
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b)(1),
37 C.F.R. § 2.122(b)(1), the opposed application.
The trial record is voluminous,13 and includes various types of evidence, notably
the testimony, discovery materials, final decision and appeal from the Prior
Opposition.14 The same corporate witness who testified on Opposer’s behalf in the
Prior Opposition, Melodie (Bolin) Nye,15 was the only corporate witness to testify in
this proceeding for Opposer.16
13 See TTABVUE entry nos. 55-69; 78-83; and 100.
14 60-63 TTABVUE.
15 55-56 TTABVUE (publicly available Nye Testimony Declaration with exhibits); 69
TTABVUE (confidential version).
16 Since April 2023, Nye has served as Opposer’s as the Chief Growth Officer, Pet Nutrition
Europe. Previously, she was the Brand Manager for the PEDIGREE brand at Mars Petcare
US, Inc., a subsidiary of Mars, Incorporated from September 2014 through April 2017 where
she oversaw advertising, marketing, and promotion for the PEDIGREE brand in the United
States. She later served as the Marketing Director for the PEDIGREE brand in the United
States from May 2017 through April 2019 and then as the Senior Marketing Director for all

Opposition No. 91263504
- 7 -
Applicant’s only admissible testimony consists of the testimony declaration of
Robert Rhoades and testimony declaration and oral cross examination deposition
transcript of Keili Somerlot17 in connection with the parties’ Prior Opposition.18 At
that time in 2017, Rhoades had been Applicant’s President for nearly six years.19
Somerlot was a sales representative with Applicant from 2003 to 2011 and then
served as sales manager until July 2017 when she left the company.20
Applicant’s other evidence submitted under notice of reliance during its assigned
trial period consists of the following:21
● Opposer’s responses to Applicant’s First Set of Interrogatories from the
Prior Opposition; Opposer’s Responses to Applicant’s discovery requests
from the current opposition;
● TSDR printouts of Opposer’s abandoned applications and cancelled
registrations for the mark PEDIGREE;
● TSDR printouts of third-party Registration Nos. 1648728, 2193583, and
2395039 for the mark PET-AGREE;
● WHOIS.net printout dated September 29, 2017 showing the search
results for the domain name “petagree.net”;
● a printout dated October 9, 2011 from the Georgia Secretary of State
showing Applicant’s business name history;
of Opposer’s dry dog food brands, including PEDIGREE, from April 2019 through November
2022. Nye Testimony Decl. ¶ 2; 55 TTABVUE 2.
17 60 TTABVUE 113-119 (October 2, 2017 Somerlot Testimony Declaration); 60 TTABVUE
10-112 (May 9, 2018 oral cross examination testimony of Somerlot); 61 TTABVUE (October
2, 2017 Rhoades Testimony Declaration with exhibits).
18 By Board order dated August 25, 2025, Applicant’s testimony declarations of Robert
Rhoades and Sam Harper, and exhibits were stricken from the record. See 80, 83 and 99-102
TTABVUE.
19 Rhoades Testimony Decl. ¶ 1; 61 TTABVUE 4.
20 Somerlot Testimony Decl. ¶ 1; 60 TTABVUE 113.
21 78 and 79 TTABVUE.

Opposition No. 91263504
- 8 -
● a copy of Applicant’s Georgia state “Corporation Annual Registration”
dated 2009; and
● Applicant’s certificate of incorporation in the state of Georgia.
Although we did not list all of the remaining individual pieces of Opposer’s trial
evidence, the entire record deemed admissible has been carefully considered, and
relevant evidence is discussed throughout this opinion. See Quiktrip W., Inc. v. Weigel
Stores, Inc., 984 F.3d 1031, 1036 (Fed. Cir. 2021) (Board not obliged to expressly
discuss every piece of evidence); In re Miracle Tuesday LLC, 695 F.3d 1339, 1348
(Fed. Cir. 2012) (“[T]he mere fact that the Board did not recite all of the evidence it
considered does not mean the evidence was not, in fact, reviewed.”). Portions of the
record have been designated confidential pursuant to the Board’s standard protective
order and have been treated as such. See Trademark Rule 2.116(g), 37 C.F.R.
§ 2.116(g). We will discuss only in general terms the relevant evidence designated as
confidential where necessary and appropriate in our opinion. Citations to the record
and the parties’ briefs refer to the redacted, publicly available versions.
Given the contentious nature of this case, it is no surprise that the parties
interposed a plethora of evidentiary objections during both the interlocutory phase
and at trial. We exercise our discretion to make specific rulings only on those
objections which are potentially outcome determinative. See, e.g., Int’l Dairy Foods
Ass’n v. Interprofession du Gruyère, No. 91232427, 2020 TTAB LEXIS 268, at *22
(Board declined to rule on all evidentiary objections, instead ruling on only a selected
few), aff’d, 575 F. Supp. 3d 627 (E.D. Va. 2021), aff’d, 61 F.4th 407 (4th Cir. 2023).

Opposition No. 91263504
- 9 -
Since we are not considering Opposer’s likelihood of confusion and dilution claims, it
is unnecessary for us to consider Applicant’s motion to strike the testimony of
Opposer’s expert witness, Dr. Thomas Maronick, Emeritus Professor of Marketing in
the College of Business and Economics at Towson University in Towson, Maryland,
and the related issue concerning Applicant’s subpoena of Dr. Maronick to produce
documents associated with the survey he devised to measure consumer recognition of
Opposer’s PEDIGREE mark.22 For the same reason, it is also unnecessary to rule on
Applicant’s hearsay objections to certain exhibits attached to the Nye Testimony
Declaration.23
II. Entitlement to a Statutory Cause of Action
Applicant does not challenge Opposer’s statutory entitlement to bring the instant
opposition. Even so, statutory entitlement is part of every plaintiff’s case-in-chief and
must be affirmatively proved. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d
1024, 1028 (CCPA 1982); see, e.g., Int’l Dairy Foods Ass’n, 2020 TTAB LEXIS 268, at
*28 (although neither the opposers nor applicants addressed the issue of opposers’
standing in their briefs, Board reviewed the record to determine whether each
opposer had established its standing).
Section 13 of the Trademark Act, 15 U.S.C. § 1063(a), states in relevant part that
“[a]ny person who believes that he would be damaged by the registration of a mark
upon the principal register, … may, upon payment of the prescribed fee, file an
22 57 TTABVUE.
23 See 108 TTABVUE.

Opposition No. 91263504
- 10 -
opposition in the Patent and Trademark Office, stating the grounds therefor …” To
establish entitlement to a statutory cause of action under Section 13 of the
Trademark Act, Opposer must demonstrate (1) that one of its claims falls within the
zone of interests protected by the statute (i.e., has a “real interest” in the outcome of
the proceeding); and (2) damage proximately caused by the proposed registration of
Applicant’s mark (i.e., a reasonable basis for his belief in damage). See Meenaxi
Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1070-71 (Fed. Cir. 2022) (citing Lexmark
Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129, 132 (2014)). As
mentioned above, Opposer has asserted three separate claims. Once Opposer has
proven statutory entitlement to at least one of these claims, it will have established
statutory entitlement for the others. See Luxco, Inc. v. Consejo Regulador del Tequila,
A.C., No. 91190827, 2017 TTAB LEXIS 6, at *13. For sake of simplicity, we focus on
whether Opposer has proved that it is statutorily entitled to bring its pleaded Section
2(d) claim.
It is well established that a plaintiff in an inter partes proceeding can establish
its statutory entitlement to bring a Section 2(d) claim by proving ownership of a valid
and subsisting trademark registration where, on its face, the mark and goods present
a plausible likelihood of confusion claim. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 945 (Fed. Cir. 2000) and Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d
1024, 1029 (CCPA 1982). Opposer submitted TSDR printouts of each of its pleaded
registrations noted above for the mark PEDIGREE and variations thereof, showing
that Opposer owns each registration, and that the registrations are valid and

Opposition No. 91263504
- 11 -
subsisting.24 Based on this evidence, Opposer has demonstrated a plausible
Trademark Act Section 2(d) claim against the involved application for the standard
character mark PET-AGREE for the identified services. By demonstrating statutory
entitlement to this one claim, Opposer has also established its entitlement to bring
res judicata, collateral estoppel and dilution by blurring claims.
III. Applicant’s Deferred Motion to Amend the Identification of
Services
At the outset we address Applicant’s deferred unconsented motion to amend its
identification of services.25 See, e.g., Heil Co. v. Tripleye GmbH, No. 91277359, 2024
TTAB LEXIS 494, at *38 (unconsented motion to amend identification of goods and
services deferred until trial). As noted above, the Board determined during the
interlocutory phase of this proceeding that Applicant’s Trademark Act Section 18, 15
U.S.C. § 1068, affirmative defense set forth below in Applicant’s Answer was
insufficiently pleaded:26
Applicant is at least entitled to a registration with restrictions that
would obviate any likelihood of confusion, for example a restriction
relating to its business to business market and channels for its
wholesale supply services for the advertising, promotion, distribution
and sale of pet grooming supplies directed to the professional pet
grooming market or trade, in particular to pet professionals and
commercial pet groomers, the wholesale supply services excluding the
advertising, promotion, distribution and sale of pet food, pet treats and
products fed to pets and animals, bowls, cups and containers for pet food,
and goods used to promote the sale of pet food, pet treats and products
fed to pets and animals.
24 Opposer’s Notice of Reliance, 58 TTABVUE 2-136.
25 March 11, 2024 Board Order, 52 TTABVUE 6.
26 February 1, 2021 Board Order, 11 TTABVUE 2, n.3.

Opposition No. 91263504
- 12 -
The Board’s determination, however, did not preclude Applicant from later
seeking to restrict its identification of services under Trademark Act 18, by motion
under Trademark Rule 2.133, 37 C.F.R. § 2.133. See TBMP § 514.03. Section 18 of the
Trademark Act gives the Board the equitable power to “restrict the goods or services
identified in an application or registration.” 15 U.S.C. § 1068. The primary purpose
of a Section 18 amendment is to avoid a likelihood of confusion by narrowing a broad
identification to the specific type of goods or services for which the mark is actually
used, or by restricting the channels of trade to those in which the goods or services
actually travel. See generally Eurostar v. “Euro-Star” Reitmoden GmbH & Co. KG,
No. 21589, 1994 TTAB LEXIS 29, at *18-21 (Section 18 defense restricting goods or
services may be raised to avoid likelihood of confusion).
On the eve of Opposer’s main trial period, on December 21, 2023, Applicant filed
an unconsented motion to amend the recitation of services (proposed additions in
bold; proposed deletions in strike-through):
FROM: wholesale supply store services for pet grooming supplies in the
business to business market directed to pet professionals and
commercial pet groomers, expressly excluding pet food, pet treats and
products fed to pets and animals and excluding bowls, cups and
containers for pet food, pet treats and products fed to pets and animals;
TO: wholesale supply store services for providing pet grooming
supplies made by third parties and carrying the third party’s
brand name in the business to business market to pet professionals
and commercial pet groomers, expressly excluding pet food, pet treats
and products fed to pets and animals and excluding bowls, cups and
containers for pet food, pet treats and products fed to pets and animals.27
27 48 TTABVUE 2-3.

Opposition No. 91263504
- 13 -
Opposer objected to the amendment arguing that Applicant failed to make a prima
facie showing that the proposed amendment changes the nature and character of the
services or restricts their trade channels and customers so as to introduce a
substantially different issue for trial.28 The Board deferred consideration of the
motion.29
In its trial brief, Applicant renews its motion and requests that in the event that
the Board sustains the opposition, the Board approve the proposed amendment.”30
That request is procedurally improper because once the Board has entered final
judgment sustaining an opposition, it lacks the authority to amend an applicant’s
identification of services to avoid the effect of that judgment.31 Such amendments
must be considered before, or concurrent with, the Board’s final decision, not after
the fact.
We now consider Applicant’s proposed amendment. An acceptable amendment to
the identification of goods or services may be permitted, even where an opposer
objects, if:
(1) the proposed amendment serves to limit the broader identification of
goods or services; and
(2) the applicant consents to the entry of judgment with respect to the
broader identification of goods or services present at publication.
28 50 TTABVUE 5.
29 March 11, 2024 Board Order, 52 TTABVUE 6.
30 51 TTABVUE 60-61.
31 The only action the Board can take after issuance of a final decision in an inter partes
proceeding is to remand an application back to the examining attorney for reexamination if
facts are disclosed which appear to render the mark unregistrable. See Trademark Rule
2.131, 37 C.F.R. § 2.131.

Opposition No. 91263504
- 14 -
See Johnson & Johnson v. Stryker Corp., No. 91209134, 2013 TTAB LEXIS 607, at
*4-5. In addition, if the applicant wishes to avoid the possibility of a res judicata effect
by the entry of judgment on the original identification, the applicant must make a
prima facie showing that the proposed amendment serves to change the nature and
character of the goods or services or restrict their channels of trade and customers so
as to introduce a substantially different issue for trial.32 Id.; see also Drive Trademark
Holdings LP v. Inofin & Mark Walsh, 2007 TTAB LEXIS 37, at *6.
Based on our review of the parties’ submissions and the record, we find that the
first condition has been satisfied because Applicant’s proposed amendment is limiting
within the meaning of Trademark Rule 2.71, 37 C.F.R. § 2.71. The newly proposed
language narrows the scope of Applicant’s wholesale services to pet grooming supplies
manufactured by third parties and sold under the third party’s brand name, thereby
excluding any items made by Applicant or sold under Applicant’s own trademark.
However, the second requirement has not been satisfied because Applicant has not
consented to judgment as to the broader identification. At the time Applicant filed its
amendment, it stated that “should its amendment not be immediately accepted then
32 For an application filed under Section 1(a), any specimen of record must support the goods
or services remaining after the amendment is entered, and the applicant must introduce
evidence during its testimony period to prove use of its mark on those remaining goods or
services prior to the relevant date as determined by the basis of the application. Because the
subject application was filed based on an intent-to-use basis pursuant to Trademark Act
Section 1(b), this requirement is inapplicable. See Stryker, 2013 TTAB LEXIS 607, at *5 n.4.

Opposition No. 91263504
- 15 -
Applicant should have the right to be heard at trial on both its broader identification
and its proposed narrowed version.”33
But even assuming arguendo that the second condition has been met, to the extent
Applicant seeks to avoid res judicata, Applicant has failed to make a prima facie
showing that the proposed amendment serves to change the nature and character of
the goods or services or restrict their channels of trade and customers so as to
introduce a substantially different issue for trial. See, e.g., Heil Co., 2024 TTAB
LEXIS 494, at *38. Applicant appears to believe that adding the qualifying language
“made by third parties and carrying the third party’s brand name” would “change the
nature and character of the goods or services or restrict their channels of trade and
customers” as those of Opposer’s PEDIGREE-branded goods. As Applicant
contends:34
One cannot reasonably argue that a pet professional or a commercial pet
groomer would be confused as to the source of, for example, a WAHL
cordless clipper or a SHERNBAO trimmer provided by Applicant PAGS
under the service mark PET-AGREE GROOMING SUPPLIES. One
cannot reasonably argue that such pet professional or a commercial pet
groomer would consider that Applicant PAGS’ wholesale supply services
providing, for example, such WAHL cordless clipper or a SHERNBAO
trimmer in the business to business market to the pet professional or
commercial pet groomer are somehow related to, sponsored by, or
affiliated with the source of Mars’ PEDIGREE dog food.
The term “third party,” as used in an identification, refers to a party other than
the applicant, not to a party other than the opposer in an inter partes proceeding. Cf.
TMEP § 808.02 (“it is inappropriate to use a registered mark in a description, because
33 51 TTABVUE 7.
34 48 TTABVUE 7-8.

Opposition No. 91263504
- 16 -
the mark indicates origin in only one party and cannot be used to describe a mark
used in connection with goods or services that originate in a party other than the
registrant.”); see also TMEP § 1402.04 (discussing the USPTO’s Acceptable
Identification of Goods and Services Manual (ID Manual)). Applicant’s proposed
amendment simply signals that Applicant offers for wholesale purchase grooming
supplies manufactured by entities other than Applicant and sold under those entities’
brand names. This could of course include Opposer’s PEDIGREE branded products
listed in its pleaded registrations. That is, with respect to Applicant and its proposed
identification of services, Opposer itself is a third party.
In view of our determination, we proceed with evaluating Opposer’s claims based
on Applicant’s identification of services as it currently stands.
IV. The Prior Opposition
The present opposition proceeding represents the continuation of a long-standing
trademark dispute between the parties.
On March 28, 2014, Applicant filed an application to register the standard
character mark PET-AGREE for services ultimately identified as “wholesale and
retail supply store services featuring pet grooming supplies; online wholesale and
retail supply store services featuring pet grooming supplies” in International Class
35. Following publication of the mark in the Trademark Official Gazette, Opposer
opposed registration, asserting claims of likelihood of confusion under Trademark Act
Section 2(d) and likelihood of dilution by blurring under Trademark Act Section 43(c)
of its previously used and registered marks containing, or consisting of, the word

Opposition No. 91263504
- 17 -
PEDIGREE in connection with pet food, pet treats, cups, bowls, and other items used
to promote the sale of pet food, and other products and services for and relating to
pets. Opposer pleaded ownership of and made of record numerous valid and
subsisting registrations, including the same registrations of record in this current
proceeding.
In a non-precedential final decision issued on July 15, 2019, the Board sustained
Opposer’s Section 2(d) claim and did not reach the merits of Opposer’s dilution by
blurring claim. See Mars, Inc. v. PAGS Inc., No. 91221462, 2019 TTAB LEXIS 505.
The Board found that priority was not at issue in view of the fact that Opposer made
of record its pleaded registrations showing title and status. Id. at 27. As to the
likelihood of confusion factors enunciated in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357 (CCPA 1973) (“DuPont”), the Board made the following findings:
● First DuPont Factor: The Board compared thirteen of Opposer’s registered
standard character and composite marks consisting of or containing the dominant
component PEDIGREE to Applicant’s standard character mark PET-AGREE, and
found the marks similar in sound, appearance, connotation and commercial
impression. It reasoned that the terms were “practically phonetic equivalents”
because consumers would not pronounce the hyphen in Applicant’s mark. Id. at *32.
The Board also relied on Opposer’s dictionary evidence showing that the difference
between the pronunciation of the letters “T” and “D” was slight. Id. at *33. This
DuPont factor favored a likelihood of confusion.
● Second DuPont Factor: The Board compared Applicant’s “wholesale and retail

Opposition No. 91263504
- 18 -
supply store services featuring pet grooming supplies; online wholesale and retail
services featuring pet grooming supplies” in International Class 35 with items listed
in Opposer’s registrations, including “pet food” in International Class 31. The Board
found that Applicant’s services were related to pet food based on third-party use-
based registrations and websites offering for sale grooming supplies and pet food
under the same mark. Id. at 40-41. This included evidence from not only big-box
retailers such as Walmart and Target but also pet specialty retailers such as
PetSmart and Petco as well as independently owned pet supply stores. Id. at 42. This
factor also favored a likelihood of confusion.
● Third DuPont Factor: Because Applicant’s identification of services was
unrestricted as to channels of trade and classes of consumers, the Board was
unpersuaded by Applicant’s testimony that its retail and wholesale services were
intended for grooming professionals. The Board therefore weighed the third DuPont
factor in favor of finding a likelihood of confusion. Id. at 48.
● Fourth DuPont Factor: The Board found unpersuasive Applicant’s arguments
that its “services are rendered to pet grooming professionals--sophisticated
purchasers who can ‘readily distinguish the ‘pet grooming supplies’ they are selling
from pet food and would not confuse the two” and that “since most of [Applicant’s]
sales are through a catalogue or online, there is no ability to impulse purchase a low
value item.” Id. at 49. The Board applied the standard of care of the least
sophisticated purchaser and deemed this factor neutral. Id. at 50.

Opposition No. 91263504
- 19 -
● Fifth DuPont Factor: The Board found “that Opposer’s PEDIGREE marks are
commercially strong for pet food and are entitled to a commensurately broad scope of
legal protection.” Id. at 59.
● Sixth DuPont Factor: The Board determined that Applicant’s introduction of
three cancelled third-party registrations, Registration Nos. 1648728, 2193583, and
2395039 for the mark PET-AGREE (two of which were owned by the same registrant)
failed to demonstrate commercial or conceptual weakness of Opposer’s mark. This
factor was neutral. Id. at 60.
● Seventh and Eighth DuPont Factors: Based on Applicant’s testimony of no
known instances of actual confusion despite fifteen years of concurrent use, the Board
found that the seventh and eighth DuPont factors weighed “in Applicant’s favor,
although, given the gaps in the evidence, they carry little weight and are outweighed
by the other factors.” Id. at 67.
● Ninth DuPont Factor: The Board weighed this factor in favor of a likelihood of
confusion based on Ms. Bolin’s testimony of collateral merchandise sales in the
United States under the PEDIGREE FOUNDATION service mark of a wide range of
products such as pajamas, yoga pants, scarves, hats, dog leashes, dog collars, dog
bowls, picture frames, Christmas ornaments and calendars. The Board also deemed
persuasive her testimony about other types of promotional PEDIGREE products,
such as T-shirts, umbrellas, lunch boxes, cell phone covers, pens, notebooks,
bandannas for dogs, collars, leashes, and posters, Opposer has distributed at shelters
to promote the adoption of dogs, among other venues. Id. at 69-70.

Opposition No. 91263504
- 20 -
On September 16, 2019, Applicant timely appealed the Board’s final decision with
the U.S. Court of Appeals for the Federal Circuit. Before the Federal Circuit issued a
ruling, on January 21, 2020, Applicant voluntarily moved to dismiss the appeal which
was granted by the Court on January 27, 2020. Also on January 21, 2020, Applicant
filed the application which is the subject of the present opposition proceeding.
V. Res Judicata
We begin with Opposer’s res judicata claim. 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 relitigating 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 (Fed. Cir. 1984). The doctrine serves “the dual purpose of
protecting litigants from the burden of relitigating an identical issue with the same
party or [that party’s] privy and of promoting judicial economy by preventing needless
litigation.” Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979); see also Sharp
KK v. Thinksharp, Inc., 448 F.3d 1368, 1372 (Fed. Cir. 2006) (“The purpose of res
judicata is salutary, for it protects a party from being required to relitigate the same
issue against the same party in a separate action.”). “[S]o long as opposing parties
had an adequate opportunity to litigate disputed issues of fact, res judicata is properly
applied to decisions of an administrative agency acting in a ‘judicial capacity.’”
Kremer v. Chem. Constr. Corp., 456 U.S. 461, 485 n.26 (1982).

Opposition No. 91263504
- 21 -
Opposer’s claim involves the doctrine of offensive res judicata. This is because it
is Opposer as plaintiff asserting that Applicant is not entitled registration of its mark
because the Prior Opposition resulted in a final judgment in Opposer’s favor on its
Section 2(d) claim. See Flame & Wax, Inc. v. Laguna Candles, LLC, No. 92072343,
2022 TTAB LEXIS 272, at *43 (“This case involves offensive, not defensive, claim
preclusion - it is the plaintiff in the proceeding that is asserting claim preclusion.”);
see also Sharp KK , 448 F.3d at 1371 (discussion of doctrine of offensive res judicata).
A second suit is barred by res judicata or claim preclusion if
(1) the parties (or their privies) are identical;
(2) there has been an earlier final judgment on the merits of a claim; and
(3) the second claim is based on the same set of transactional facts as the
claim in the first proceeding.
Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1363 (Fed. Cir. 2000).
The first two prongs have been satisfied. The record shows, and Applicant admits
in its Answer, that the present opposition involves the same parties as the Prior
Opposition; that the Board rendered a final judgment on the merits of Opposer’s
Section 2(d) claim; and that Applicant withdrew its appeal of the final decision to the
Federal Circuit.35
Thus, Opposer’s res judicata claim hinges on whether the current Section 2(d)
claim is based on the same set of transactional facts as in the Prior Opposition; in
35 Because the Board declined to reach the merits of Opposer’s dilution claim in the Prior
Proceeding, res judicata does not bar registration of Applicant’s mark based on Opposer’s
dilution claim presently before us.

Opposition No. 91263504
- 22 -
other words, 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 Opposition. Jet, Inc., 223 F.3d at 1363 (finding petitioner’s
trademark infringement claim in federal district court was not based on the same set
of factual allegations as its petition to cancel defendant’s federally registered mark).
The Federal Circuit has emphasized that “a common set of transactional facts is to
be identified ‘pragmatically.’” Id. (citing Restatement (Second) of Judgments § 24(2)
(1982)). To make that determination, we consider:
(1) whether the marks involved in the prior proceeding are the same
marks, in terms of commercial impression, as the marks involved in
this proceeding; and
(2) whether the evidence of likelihood of confusion between the marks
in the prior proceeding would be identical to the evidence of
likelihood of confusion in this proceeding.
See Institut Nat’l Des Appellations d’Origine v. Brown-Forman Corp., No. 91097417,
1998 TTAB LEXIS 122, at *67) (Board denied opposer’s motion to amend to add a res
judicata claim as futile); see also Be Sport, Inc. v. Al-Jazeera Satellite Channel, No.
91213743, 2015 TTAB LEXIS 259, at *9 (Board denied applicant’s motion for leave to
file an amended answer to assert an affirmative defense of res judicata as futile).
Because the Prior Opposition involved a Section 2(d) claim, in this case, the first
prong implicates the first DuPont factor. As to the second prong, because we are
deciding Opposer’s claim after trial as opposed to on motion to amend a complaint or
answer, summary judgment or Accelerated Case Resolution based on summary

Opposition No. 91263504
- 23 -
judgment briefs, we may also compare the actual trial records from the previous and
current oppositions to determine whether they are largely the same.
Are Opposer’s and Applicant’s marks from the Prior Opposition the same
in terms of commercial impression?
Opposer’s marks from the Prior Opposition are the same as its marks at issue
here. In the Prior Opposition, the Board entered judgment in Opposer’s favor with
respect to thirteen of Opposer’s registrations consisting of or comprised of the term
PEDIGREE, six of which Opposer pleaded and properly made of record in this case.36
Thus, the issue before us is whether Applicant’s present mark, PET-AGREE
GROOMING SUPPLIES, has the same commercial impression as the mark PET-
AGREE that was at issue in the Prior Opposition.
“[T]he proper test for determining whether two marks have the same commercial
impression, for purposes of the claim preclusion doctrine, is the test used in tacking
situations, i.e., whether the marks are legal equivalents.” Brown-Forman, 1998 TTAB
LEXIS 122, at *70. The previous mark must be indistinguishable from the mark in
question; the consumer should consider both as the same mark; and they must create
“the same, continuing commercial impression.” Hana Fin., Inc. v. Hana Bank, 574
U.S. 418, 420 (2015); see also Brown-Forman, 1998 TTAB LEXIS 122, at *70 (“[T]here
is no reason why the fact that a party’s two marks might be confusingly similar to
each other under a likelihood of confusion analysis should be held to be a sufficient
basis for finding that the applications to register the two marks should be deemed to
36 58 TTABVUE.

Opposition No. 91263504
- 24 -
be a single ‘claim,’ for claim preclusion purposes.”). “[T]wo marks create substantially
the same commercial impression” if “the minor alterations [in the subsequent mark]
do not rise to the level of a new mark.” Miller Brewing Co. v. Coy Int’l Corp., No.
68606, 1986 TTAB LEXIS 159, at *12 (sustaining opposition based on res judicata
because the mark in the current proceeding and the mark in the prior proceeding
differed by “insignificant” additions of disclaimed language and design elements).
Opposer argues that PET-AGREE and PET-AGREE GROOMING SUPPLIES
have the same commercial impression because both commence with PET-AGREE and
both are standard character marks. Opposer further contends that the addition of the
disclaimed wording “GROOMING SUPPLIES” which is generic for services of
“wholesale supply store services for pet grooming supplies …” does not change the
commercial impression of the marks.
Applicant counters that PET-AGREE and PET-AGREE GROOMING SUPPLIES
are not legal equivalents because they do not have the same or substantially the same
appearance, sound, or connotation or commercial impression. Applicant invokes the
principle that marks must be compared in their entireties to argue that Opposer’s
position improperly minimizes the additional wording GROOMING SUPPLIES
which Applicant characterizes as “significant, if not dominant.”37
Miller Brewing, supra, is instructive here because it addresses the question of
whether added disclaimed wording to a new mark creates “the same, continuing
37 107 TTABVUE 49.

Opposition No. 91263504
- 25 -
commercial impression” within the context of offensive res judicata.38 In Miller
Brewing, the Board found that the applicant’s composite mark which added the
disclaimed wording “CASK NO. 32” for goods identified as “beer” was a “minor
alteration” that created “the same commercial impression” as the prior mark. See
Miller Brewing Co. v. Coy Int’l Corp., No. 68606, 1986 TTAB LEXIS 159, at *12 (“In
our view, the two marks create substantially the same commercial impression and
the minor alterations do not rise to the level of a new mark sufficient, under the
circumstances, to allow applicant to seek registration herein).
Likewise, we find that Applicant’s present mark, PET-AGREE GROOMING
SUPPLIES, creates the same, continuing commercial impression as its earlier mark
PET-AGREE. PET-AGREE is the entirety of Applicant’s former and the only source-
indicating element in its current mark. The newly added wording GROOMING
SUPPLIES is generic by virtue of the inclusion the term “grooming supplies” in the
application’s identification of goods. Cf. Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
640 (Fed. Cir. 1991) (the genus of the services may be defined by an applicant’s
identification of services). The record evidence showing third-party competitor use of
the phrase “grooming supplies” to advertise the sale of such goods corroborates this
finding. See printouts from PetEdge.com, 60 TTABVUE 140; PetSmart, 60 TTABVUE
576; and WalMart, 60 TTABVUE 595. As a result, the addition of the generic terms
38 Be Sport, supra, is distinguishable from the present case because it implicated the doctrine
of defensive res judicata, not offensive. In Be Sport, the Board denied applicant’s motion to
amend its answer under Fed. R. Civ. P. 15(a) finding the proposed res judicata defense futile
because the applicant’s prior mark BEIN and current mark BEIN SPORT create different
commercial impressions, and the evidence for likelihood of confusion would not necessarily
be the same in both cases. 2015 TTAB LEXIS 259, at *13.

Opposition No. 91263504
- 26 -
GROOMING SUPPLIES constitutes a “minor alteration” and does not create a “safe
distance” from Applicant’s prior mark PET-AGREE. See id. We also consider the
admonishment from Miller Brewing, that “[t]he Board does not wish to encourage
losing parties to insignificantly modify their marks after an adverse ruling and
thereby avoid the res judicata effect of the prior adjudication.” Id. at 13. A party
should not be able to avoid res judicata by later applying for the exact same mark by
adding generic wording.
Whether the evidence of likelihood of confusion in the Prior Opposition
and current proceeding would be the same?
Res judicata requires us to make a prospective determination whether the
evidence of likelihood of confusion in the Prior Opposition and the evidence in this
proceeding “would be identical.” See Jet, Inc., 223 F.3d at 1363. This inquiry is a
pragmatic tool for determining whether Opposer’s likelihood of confusion claim from
the Prior Opposition and current proceeding arise from the same set of transactional
facts as opposed to a rigid requirement that the trial records must be identical. In
assessing whether the evidence is likely to be the same, the Board has previously
explained that the analysis depends in large part on the services identified in
Applicant’s current application, especially when deciding this issue prior to trial on
motions to amend to add a claim or affirmative defense, summary judgment or ACR
summary judgment briefs. See, e.g., Brown Forman, supra. Here, we have an unusual
circumstance where we may actually compare the trial record in both the Prior
Opposition and the current proceeding to find that the evidence, with a few

Opposition No. 91263504
- 27 -
exceptions, is in fact largely the same.39 Opposer pleaded ownership of and made of
record in this proceeding the same registrations for its PEDIGREE marks as in the
Prior Opposition for “pet food,” “canned dog food,” “periodically published journal
pertaining to health care of pets,” and “cups and bowls not of precious metal or coated
therewith; porcelain mugs and earthenware mugs, all of the foregoing used to
promote the sale of pet food.” Applicant’s introduction in this proceeding of the TSDR
printouts of Opposer’s abandoned applications and cancelled registrations for the
mark PEDIGREE does nothing to alter this core fact. We further note that the same
corporate witness who testified on Opposer’s behalf in the Prior Opposition, Melodie
(Bolin) Nye, was the only corporate witness to testify in this proceeding for Opposer.
For Applicant’s part, much of the evidence from the Prior Opposition is of record
here, and with a few minor exceptions, Applicant has introduced little new evidence
to defend against Opposer’s Section 2(d) claim. Indeed, Applicant’s only admissible
testimony from Robert Rhoades and Keili Somerlot is exactly the same as submitted
in the Prior Opposition in 2017 and 2018. Applicant also submitted in this case the
same cancelled third-party registrations for the mark PET-AGREE as in the Prior
Opposition. Opposer’s responses to Applicant’s First Set of Interrogatories from the
Prior Opposition, the WHOIS.net printout dated September 29, 2017, as well as
Applicant’s certificate of incorporation, Georgia state Corporation Annual
Registration from 2009 business name history from 2011 offer nothing new. And
39 Opposer emphasizes this point in its brief. 104 TTABVUE 25-26. Curiously, Applicant
offers no response to this argument in its brief.

Opposition No. 91263504
- 28 -
Applicant’s submission of Opposer’s responses to Applicant’s discovery requests does
little to change the evidentiary calculus. The substantially identical nature of the
trial records points towards the same transactional facts.
In addition, it is well established that res judicata bars a later application for
goods or services that were encompassed by the description of goods or services of a
prior application for the same or legally equivalent mark. When we compare the
services identified in the earlier and later filed applications, we find that this line of
precedent is highly persuasive here.
For ease of reference, we repeat below Applicant’s identification of services:
Prior Opposition: “wholesale and retail supply store services featuring
pet grooming supplies; online wholesale and retail supply store services
featuring pet grooming supplies” in International Class 35.
Current Opposition: “wholesale supply store services for pet grooming
supplies in the business to business market directed to pet professionals
and commercial pet groomers, expressly excluding pet food, pet treats
and products fed to pets and animals and excluding bowls, cups and
containers for pet food, pet treats and products fed to pets and animals”
in International Class 35.
Applicant argues that the differences in the identification of services between the
prior and current application implicates a new set of transactional facts under the
second, third and fourth likelihood of confusion DuPont factors that were not litigated
in the Prior Opposition. More specifically, Applicant argues that the current
identification of services adds material limitations on (1) market, by shifting from
general consumer to business-to-business; (2) trade channels, by deleting “retail” to
distinguish Opposer’s “big box” retail outlets; and (3) purchasers, by specifying that
its wholesale services are directed to pet professionals and commercial pet groomers.

Opposition No. 91263504
- 29 -
The new identification also expressly excludes Opposer’s goods of pet food, pet treats,
and related goods. Applicant maintains that these changes create a new set of
transactional facts because under the prior identification, the services were
unrestricted and therefore presumed to travel in all channels of trade to all
purchasers of varying levels of sophistication.
Opposer’s position is that the current identification of services merely narrows the
earlier, unrestricted description by adding limitations concerning the business-to-
business market, the intended purchasers, and exclusions for pet food, pet treats, and
related goods. Opposer argues that these changes do not create a new transactional
nucleus of facts but instead reflect insignificant word changes to the identification of
services previously adjudicated. Opposer maintains that Applicant cannot avoid the
preclusive effect of the prior judgment by filing a second application directed to
services that were already encompassed by the earlier application.
For several reasons, we find that Applicant’s current identification of services does
not present a new set of transactional facts for res judicata purposes. The services
identified in the Prior Opposition and those in the present application are in part
legally identical. This is because the amended identification merely narrows, rather
than changes, the prior services by removing the retail services and by adding
language directed to the business-to-business market, pet professionals and
commercial pet groomers. This new language restates, in more specific terms,
services that were already encompassed by the broader prior identification. The
Board’s judgment against Applicant in the Prior Opposition was based on a broader

Opposition No. 91263504
- 30 -
identification of services, and that judgment necessarily extends to any and all
identified services under that broader identification. See J.I. Case Co. v. F.L. Indus.,
No. 70765, 1986 TTAB LEXIS 112, at *9-11. “Applicant may not avoid the preclusive
effect of this prior judgment by merely providing a narrower, or ‘more focused,’
identification of services, if those services remain encompassed by the broader
identification of services and are therefore essentially legally identical.”
Furthermore, the additional language expressly excluding Opposer’s goods of “pet
food, pet treats and products fed to pets and animals and excluding bowls, cups and
containers for pet food, pet treats and products fed to pets and animals,” does nothing
to change the core nucleus of facts. The Board expressly recognized in the Prior
Opposition that grooming supplies and pet food were not identical. For this reason,
Applicant’s restriction to its identification of services to expressly now exclude
Opposer’s goods does nothing to alter the fundamental inquiry of whether Applicant’s
services are nevertheless related to Opposer’s goods. As a result, we find that contrary
to Applicant’s assertions, this issue was previously adjudicated on the same
transactional facts.
In addition, while the application before us now contains limitations on the
channels of trade and classes of purchasers, none of Opposer’s registrations have now
been restricted. We therefore continue to apply the well-established principle that
Opposer’s goods presumptively move in all normal trade channels and to consumers
that purchase such goods. See Levi Strauss & Co. v. Abercrombie & Fitch Trading
Co., 719 F.3d 1367, 1373 (Fed. Cir. 2013).

Opposition No. 91263504
- 31 -
Another flaw with Applicant contention that Applicant’s amendment limiting its
purchasers to presumably those who are more knowledgeable and sophisticated
changes the transactional facts is that Opposer’s registrations also remain
unrestricted as to purchasers and price. While some “pet professionals and
commercial pet groomers” might be highly sophisticated, knowledgeable and
discriminating about purchases, others may not. Where the purchasers consist of
both professionals and the public, the standard of care that applies is that of “the
least sophisticated potential purchasers. See Stone Lion Cap. Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 1325 (Fed. Cir. 2014).
Finally, we emphasize the point made earlier that the substantial duplication of
the testimonial and documentary evidence in the two proceedings further confirms
that Opposer’s likelihood of confusion claims rest on the same operative facts.
For all of the foregoing reasons, the evidence of relatedness, trade channels and
conditions of purchase would be the same.
Timing
Finally, we address the timing of the filing of Applicant’s current application and
whether it reflects an attempt to evade the preclusive effect of the adverse judgment
from the Prior Opposition. See, e.g., Brown-Forman Corp., 1998 TTAB LEXIS 122 at
*69 (“Furthermore, it is clear that applicant did not file its application to register
CANADIAN MIST AND COGNAC merely as an attempt to evade the preclusive
effect of the judgment entered against it in the MIST AND COGNAC case. As was

Opposition No. 91263504
- 32 -
the case in Metromedia Steakhouses, supra, both of applicant’s applications had been
filed long before the MIST AND COGNAC opposition was instituted.”).
As noted above, on January 21, 2020, Applicant filed a voluntary dismissal of its
appeal of the Board’s Prior Decision to the Federal Circuit and, on that exact same
day, filed the present application. Opposer argues that Applicant’s withdrawal of the
appeal before the Federal Circuit rendered an opinion demonstrates a transparent
attempt to circumvent the preclusive effect of the Board’s final judgment.
Applicant disputes Opposer’s characterization of its actions. Applicant contends
that during the oral hearing in the Prior Opposition, the Board inquired whether
Applicant would be willing to amend its identification of services to reflect the market
and channel limitations it was arguing at trial. Applicant asserts that it agreed to do
so, but that Opposer objected. Applicant argues that as a consequence it filed the
present application merely to include the limitations it was prevented from entering
in the Prior Opposition.
What transpired during the oral hearing from the Prior Opposition is not of record.
TBMP § 802.06 (“[T]he oral hearing is not part of the evidentiary record in a
proceeding before the Board.”). For this reason, we give no consideration to
Applicant’s explanation. But even assuming for argument’s sake this did occur,
Applicant could have filed an unconsented motion to amend its identification of
services after the oral hearing in the Prior Opposition for the Board’s consideration.
See Trademark Rule 2.133(a) (“an application subject to an opposition may not be
amended in substance … except with the consent of the other party or parties and

Opposition No. 91263504
- 33 -
the approval of the Trademark Trial and Appeal Board, or upon motion granted
by the Board.”) (emphasis added).
In any event, the record shows that Applicant filed its current application on the
same day it withdrew its appeal. While this is noteworthy, without more it does not
establish an intent to evade the prior judgment. Nor is a finding regarding Applicant’s
intent necessary to our determination.
Decision: Opposer’s res judicata claim is sustained. In view thereof, the Board
declines to consider Opposer’s likelihood of confusion, collateral estoppel, and dilution
by blurring claims.