Menwiththepot Ltd. v. Long Zhang

kds Mailed: October 13, 2026
Cancellation No. 92088301
Menwiththepot Ltd.
v.
Long Zhang
Before Greenbaum, Stanley, and Lavache,
Administrative Trademark Judges.
By the Board:
This proceeding comes before the Board for consideration of Long Zhang’s
(“Zhang”) construed combined motion for summary judgment on res judicata (or claim
preclusion)1 and, in the alternative, motion to dismiss Menwiththepot Ltd.’s
(“Menwiththepot”) fraud claim for failure to state a claim pursuant to Fed. R. Civ. P.
12(b)(6) (“Construed Combined Motion”).2 5, 18 TTABVUE.
1 “The judicial doctrine now generally known as claim preclusion was earlier known as res
judicata.” Urock Network, LLC v. Sulpasso, No. 92058974, 2015 WL 4658976, at *1 n.4 (TTAB
2015).
2 Zhang’s Construed Combined Motion was filed June 16, 2025. 5 TTABVUE. On January 28,
2026, the Board suspended the instant proceeding pending final determination of a civil
action pending in the United States District Court for the District of Rhode Island, captioned
Menwiththepot LTD v. Zhang, Case No. 1:24-CV-00384 (the “Civil Action”). 15 TTABVUE. In
the suspension order that issued, the Board denied without prejudice all pending motions,
including Zhang’s Construed Combined Motion, and advised the parties as follows:
After final disposition of the Civil Action, if a party believes its motion denied
by this order was not resolved or made moot, the party may renew the motion
by written request to the Board, citing the motion’s title, date of filing, and
docket entry in the Board’s electronic proceeding file. Any motion renewed
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB

Cancellation No. 92088301
2
Because the summary judgment portion of Zhang’s Construed Combined Motion
may be dispositive of this proceeding, we turn to it first.3
I. Background
A. The Prior Proceeding
On June 21, 2022, Menwiththepot4 filed a notice of opposition in Opposition No.
91276956 (the “Prior Proceeding”) against Zhang’s application Serial No. 97003900
for the standard-character mark MEN WITH THE POT for “bayonets; bread knives;
butcher knives; carving knives; ceramic knives; filleting knives; folding knives; knife
must be accompanied by a signed statement that the motion has been reviewed
in its entirety and concerns matters still disputed between the parties.
Id. at 3. On March 12, 2026, Menwiththepot filed a submission stating that the District Court
issued a stay of the Civil Action pending resolution of the instant Board proceeding. 16
TTABVUE 2-3, 8. Accordingly, the Board resumed this proceeding on March 18, 2026. 17
TTABVUE. Shortly thereafter, on April 1, 2026, Zhang filed a request to renew the Construed
Combined Motion. 18 TTABVUE. We now take up Zhang’s renewed Construed Combined
Motion.
Citations to the record are to TTABVUE, the Board’s online docketing system. The number
preceding “TTABVUE” corresponds to the docket entry number, and any number following
“TTABVUE” identifies the relevant page number(s) of that docket entry, if applicable.
3 We have carefully considered the parties’ briefs and evidence, address the record only to the
extent necessary to set forth our analysis and findings, and do not repeat or address all of the
parties’ arguments. See Guess? IP Holder LP v. Knowluxe LLC, No. 92060707, 2015 WL
9702438, at *1 (TTAB 2015).
4 Although the case caption in the Prior Proceeding identifies the plaintiff as “The Cooking
Guild LTD” (see, e.g., 5 TTABVUE 26), the ESTTA coversheet to the complaint sets forth the
plaintiff as “Menwiththepot LTD f/k/a The Cooking Guild LTD,” and notes that plaintiff’s
counsel “erred as to the name of the entity” in whose name the extension of time to oppose
was filed (see id. at 11). As discussed infra, Menwiththepot concedes that it and the plaintiff
in the Prior Proceeding are the same entity. See 7 TTABVUE 3. Accordingly, for clarity and
ease of reference, we refer to the plaintiff in the Prior Proceeding as “Menwiththepot.” Cf.
Trademark Rule 2.102(b), 37 C.F.R. § 2.102(b) (“A request to extend the time for filing an
opposition must identify the potential opposer with reasonable certainty. Any opposition filed
during an extension of time must be in the name of the person to whom the extension was
granted, except that an opposition may be accepted if the person in whose name the extension
was requested was misidentified through mistake or if the opposition is filed in the name of
a person in privity with the person who requested and was granted the extension of time.”).

Cancellation No. 92088301
3
handles; knife steels; machetes; penknives; scalpels for hobby use; shear blades;
shears; table knives” in International Class 8.5 See 5 TTABVUE 11-24.
Menwiththepot pleaded ownership of application Serial No. 97278409 for the
standard-character mark MENWITHTHEPOT for, inter alia, “knives” in
International Class 8 and “retail services, online retail services and mail order
services . . . in relation to . . . knives” in International Class 35,6 and identified the
following as grounds for opposition on the ESTTA coversheet to the complaint:
(1) likelihood of confusion; (2) non-ownership; (3) deceptiveness; and (4) fraud. See id.
at 12-13.
Zhang filed an answer denying the salient allegations of the notice of opposition
and asserting three purported affirmative defenses. See id. at 28.
Menwiththepot did not submit any evidence during its trial period, and, in July
2023, Zhang filed a motion for involuntary dismissal under Trademark Rule 2.132(a),
37 C.F.R. § 2.132(a). See id. The Board denied Zhang’s motion and reset
Menwiththepot’s trial period, thereby giving Menwiththepot another opportunity to
submit trial evidence. See id.
5 Filed August 31, 2021 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a); matured into
the involved registration in this proceeding—Registration No. 7734699, issued March 25,
2025.
6 Filed February 22, 2022 under Trademark Act Sections 1(a) and 44(d), 15 U.S.C. §§ 1051(a)
and 1126(d), with a claimed priority date of January 25, 2022. See 5 TTABVUE 12. But see
id. at 15 (alleging “Sept. 11, 2020” as the “[d]ate of [f]irst use in [i]nterstate [c]ommerce” in
the body of the complaint in the Prior Proceeding). As discussed infra, this application was
later divided, and “child” application Serial No. 97979965 was created therefrom. Cf. 1
TTABVUE 2-3; TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1110 (2026).

Cancellation No. 92088301
4
Menwiththepot again failed to submit any evidence during its reset trial period,
after which Zhang filed a renewed motion for involuntary dismissal in November
2023. See id.
In an order issued February 15, 2024, the Board granted Zhang’s renewed motion,
entered judgment against Menwiththepot, and dismissed the opposition with
prejudice. See id. at 34.
On March 25, 2025, Zhang’s application Serial No. 97003900 matured to
Registration No. 7734699.7
B. The Instant Proceeding
On May 7, 2025, approximately six weeks after Registration No. 7734699 issued,
Menwiththepot filed a petition to cancel Zhang’s registration (the “Instant
Proceeding”). 1 TTABVUE. In its complaint, Menwiththepot pleads ownership of
application Serial No. 97278409 (i.e., the application pleaded in the Prior Proceeding),
and application Serial No. 97979965 (i.e., the divisional “child” application created
therefrom).8 See id. at 2-3.
As grounds for cancellation, Menwiththepot identifies the following claims on the
ESTTA coversheet to the petition to cancel: (1) likelihood of confusion; (2) non-
ownership; (3) misrepresentation of source; and (4) fraud. Id. at 1-2.
On June 16, 2025, in lieu of filing an answer, Zhang filed a “motion to dismiss,”
which the Board construed as a combined motion for, inter alia, summary judgment
7 See supra note 5.
8 See supra note 6.

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5
based on claim preclusion. 5, 6 TTABVUE. Because the basis for Zhang’s motion is
claim preclusion, the motion is timely under Trademark Rule 2.127(e)(1), 37 C.F.R.
§ 2.127(e)(1).
II. Legal Standard
Summary judgment is appropriate only where there are no genuine disputes as to
any material facts, thus allowing the case to be resolved as a matter of law. See Fed.
R. Civ. P. 56(a). The party seeking summary judgment bears the burden of
demonstrating the absence of any genuine dispute of material fact, and that it is
entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986). A factual dispute is genuine if, on the evidence of
record, a reasonable factfinder could resolve the matter in favor of the non-movant.
Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 850 (Fed. Cir. 1992);
Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202 (Fed. Cir. 1992). All
evidence must be viewed in a light favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s,
Inc., 987 F.2d 766, 767 (Fed. Cir. 1993); Opryland USA Inc., 970 F.2d at 850. In
deciding a summary judgment motion, the Board may not resolve disputes of material
fact; it may only ascertain whether such disputes exist. Lloyd’s Food Prods., Inc., 987
F.2d at 767; Opryland USA Inc., 970 F.2d at 849; Olde Tyme Foods, Inc., 961 F.2d at
202.
Here, Zhang, as the party moving for summary judgment on claim preclusion, has
the initial burden of demonstrating the absence of a genuine dispute of material fact

Cancellation No. 92088301
6
for trial and that he is entitled to judgment as a matter of law on the undisputed
facts.9
III. The Parties’ Arguments and Evidence
A. Zhang’s Arguments and Evidence
In support of his construed motion for summary judgment, Zhang submits:
(1) The notice of opposition filed in the Prior Proceeding (5 TTABVUE 11-
24);
(2) The Board’s February 15, 2024 order entering judgment in the Prior
Proceeding (id. at 26-34); and
(3) USPTO file records for Zhang’s underlying trademark application (id. at
36-49).10
Zhang argues that he is entitled to summary judgment on the basis of claim
preclusion because the parties to the Instant Proceeding and the Prior Proceeding are
the same, a final judgment was entered in the Prior Proceeding, and both the Prior
and Instant Proceedings are based on the same set of transactional facts. Id. at 4.
Zhang contends that “[n]o real question can be raised” concerning the facts giving rise
to Menwiththepot’s claims of likelihood of confusion and non-ownership, as those
9 Claim preclusion is an affirmative defense, as to which a defendant bears the burden of
proof. See, e.g., Taylor v. Sturgell, 553 U.S. 880, 907 (2008) (“Claim preclusion . . . is an
affirmative defense.”); Arizona v. California, 530 U.S. 392, 410 (2000) (“[R]es judicata [is] an
affirmative defense ordinarily lost if not timely raised.”); Fed. R. Civ. P. 8(c)(1) (listing “res
judicata” as an affirmative defense). While a party generally may not obtain summary
judgment on a claim or defense that has not been pleaded, inasmuch as the instant motion
was filed before Zhang’s answer and because Menwiththepot has opposed Zhang’s motion on
its merits, we consider the defense of claim preclusion solely for purposes of summary
judgment. See Hollywood Casinos, LLC v. Zarco Hotels Inc., No. 91282993, 2024 WL 2796275,
at *2 (TTAB 2024).
10 This submission was unnecessary, as the file history for the subject registration, including
the underlying application file, is automatically of record by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1).

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7
claims “are identical” in both proceedings. See id. With respect to the remaining two
grounds in the Instant Proceeding, Zhang asserts that: (1) the misrepresentation of
source claim “is based on substantially similar facts and legal theories as those
advanced in the Prior . . . Proceeding” (id. at 4-5); and (2) inasmuch as the fraud claim
is based on allegations concerning the validity of the physical address that Zhang
provided in his underlying trademark application, the claim “was both capable of
being raised and could have been resolved” in the Prior Proceeding (id. at 5-6).
B. Menwiththepot’s Arguments and Evidence
In response, Menwiththepot submits:
(1) A specimen of use filed in connection with the registration and
underlying trademark application involved herein (7 TTABVUE 13);11
(2) A specimen of use filed in connection with the prosecution of another
application owned by Zhang that was not the subject of the Prior
Proceeding and is not the subject of the Instant Proceeding (id. at 15);
(3) Internet evidence of Zhang’s use of the subject mark (id. at 17); and
(4) Internet evidence, including evidence from an internet archiving
website, of Menwiththepot’s use of its pleaded marks (id. at 19-25).
Menwiththepot does not dispute that the parties to the two proceedings are
identical or that a final judgment on the merits was entered in the Prior Proceeding.
See id. at 3. Instead, Menwiththepot asserts that Zhang has failed to establish an
absence of a genuine dispute of material fact with respect to whether the Instant
Proceeding is based on the same set of transactional facts as those in the Prior
Proceeding. See id. Specifically, Menwiththepot argues, inter alia, that: (1) Zhang
11 For the reasons discussed in note 10, supra, this submission was unnecessary.

Cancellation No. 92088301
8
“continues to alter its [sic] goods sold and the looks of the goods to look more like
[Menwiththepot’s] goods,” which constitutes a “material operative fact[] which
occurred after the [Prior] Proceeding” (id. at 5); and (2) Zhang’s “false representation
of its [sic] physical address is . . . an additional new fact” inasmuch as Menwiththepot
learned of the alleged falsity of the address when, after the conclusion of the Prior
Proceeding, it unsuccessfully attempted service of a civil lawsuit on Zhang at the
address provided (id. at 5-6). Menwiththepot contends that, because the Instant
Proceeding is based on “new facts which occurred after the [Prior] Proceeding,”
Zhang’s construed motion for summary judgment should be denied. Id. at 6.
C. Zhang’s Reply Arguments
In reply, Zhang argues, inter alia, that: (1) “[n]o transactional facts involved in
this . . . [p]roceeding were absent from the Prior . . . Proceeding” (8 TTABVUE 4);
(2) “[t]he existence of new evidence . . . does not alter the res judicata analysis” (id.);
and (3) with respect to the fraud claim, “any activities . . . that [Menwiththepot]
contends constituted a ‘fraud’ would necessarily have occurred during the application
process” and, therefore, could have been adjudicated in the Prior Proceeding (id. at
5).
IV. Analysis
Under the doctrine of claim preclusion, “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, 326 n.5 (1979)). A valid and

Cancellation No. 92088301
9
final judgment rendered in favor of the defendant bars another action by the plaintiff
on the same claim and encompasses claims that were raised or could have been raised
in the earlier action. Urock Network, LLC, 2015 WL 4658976, at *4. However, “[i]f
the claim did not exist at the time of the earlier action, it could not have been asserted
in that action and is not barred by res judicata.” Aspex Eyewear, Inc. v. Marchon
Eyewear Inc., 672 F.3d 1335, 1342 (Fed. Cir. 2012).
In view of the foregoing, “a second suit will be barred by claim preclusion if: (1)
there is identity of parties (or their privies); (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 first.” Jet, Inc., 223 F.3d at 1362.
A. First Factor: Identity of Parties
Menwiththepot concedes that the parties to the Prior Proceeding and the Instant
Proceeding are identical.12 See 7 TTABVUE 3 (“We agree with [Zhang] that the
parties to this Cancellation Proceeding and prior Opposition Proceeding are
identical.”). Accordingly, no genuine dispute of material fact exists regarding the first
factor of the claim preclusion analysis.
B. Second Factor: An Earlier Final Judgment on the Merits of a
Claim
Menwiththepot concedes that the Board entered a final judgment on the merits in
the Prior Proceeding. See id. (“[W]e agree that there was an earlier final judgment on
the merits of the claim.”). Cf. Orouba Agrifoods Processing Co. v. United Food Import,
12 See supra note 4.

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10
No. 92050739, 2010 WL 5574283, at *4 (TTAB 2010) (for purposes of claim preclusion,
a default judgment may be considered a final judgment on the merits). Accordingly,
there is no genuine dispute of material fact that there has been an earlier final
judgment on the merits of a claim.
C. Third Factor: Same Set of Transactional Facts
Zhang’s construed motion for summary judgment implicates the defensive
doctrine of “bar,” wherein the Board must analyze whether a plaintiff can bring a
subsequent action against a defendant. See Jet, Inc., 223 F.3d at 1362. As noted
above, “[t]his bar extends to relitigation of ‘claims that were raised or could have
been raised’ in an earlier action.” Urock Network, LLC, 2015 WL 4658976, at *4
(quoting Allen v. McCurry, 449 U.S. 90, 94 (1980)) (emphasis provided in italics in
Urock). “Thus, under claim preclusion, a plaintiff is barred from a ‘subsequent
assertion of the same transactional facts in the form of a different cause of action or
theory of relief.’” Id. (quoting Vitaline Corp. v. General Mills, Inc., 891 F.2d 273, 275
(Fed. Cir. 1989)).
In determining whether the second claim is based on the same transactional facts
as the first, we are guided by the Restatement (Second) of Judgments. See Urock
Network, LLC, 2015 WL 4658976, at *5. Section 25 of the Restatement provides that
claim preclusion applies even where the plaintiff may present evidence, grounds, or
theories not presented in the first proceeding or seek remedies or relief not sought in
the first proceeding. Id.
To assess whether the claims are based on the same set of transactional
facts, comment b to Section 24 of the Restatement considers whether

Cancellation No. 92088301
11
there is a common nucleus of operative facts. . . . [R]elevant factors
include whether the facts are so woven together as to constitute a single
claim in their relatedness in time, space, origin, or motivation, and
whether, taken together, they form a convenient unit for trial purposes.
Id. “Courts have defined ‘transaction’ in terms of a ‘core of operative facts,’ the ‘same
operative facts,’ or the ‘same nucleus of operative facts,’ and ‘based on the same, or
nearly the same, factual allegations.’” Id. at *6 (quoting Jet, Inc., 223 F.3d at 1363).
We now apply this analysis to Menwiththepot’s claims in the Instant Proceeding
to determine whether they are based on the same set of transactional facts as those
in the Prior Proceeding.13
1. Likelihood of Confusion and Non-Ownership
In both the Prior and the Instant Proceedings, Menwiththepot identifies
likelihood of confusion as a ground for relief on each of the ESTTA coversheets to the
respective complaints, and alleges that Zhang’s mark (i.e., the mark in the application
at issue in the Prior Proceeding that matured into the registration involved herein)
is likely to cause confusion with Menwiththepot’s MENWITHTHEPOT mark(s).14 See
5 TTABVUE 12; id. at 16, ¶ 5; 1 TTABVUE 1; id. at 12, ¶ 34.
In addition, the ESTTA coversheets in both proceedings identify claims of non-
ownership against Zhang with respect to the subject mark. See 5 TTABVUE 12; 1
TTABVUE 1. In the Instant Proceeding, Menwiththepot alleges that “[Zhang] is not
the rightful owner of the registered mark.” 1 TTABVUE 13, ¶ 39. While the complaint
13 In deciding the instant motion, we need not consider the legal sufficiency of
Menwiththepot’s pleaded claims.
14 See supra pp. 2-4.

Cancellation No. 92088301
12
in the Prior Proceeding is devoid of allegations in support of Menwiththepot’s non-
ownership claim, there is no dispute that the Prior Proceeding involved the same
mark at issue herein, and that the non-ownership claim identified in the Prior
Proceeding pertained thereto.
Accordingly, we find that there is no genuine dispute of material fact that
Menwiththepot’s likelihood of confusion and non-ownership claims are based on the
same set of transactional facts as the corresponding claims in the Prior Proceeding.
2. Misrepresentation of Source
In support of its misrepresentation of source claim in the Instant Proceeding,
Menwiththepot pleads, inter alia, that, “[b]ased on . . . the wide breadth of notice and
coverage provided by [Menwiththepot] . . . , [Zhang] filed for the [involved
registration] to misrepresent the source of its [sic] goods” (1 TTABVUE 15, ¶ 58), and
“has used its [sic] mark so as to misrepresent the source of its [sic] goods or services”
(id. at 14, ¶ 53). In the Prior Proceeding, Menwiththepot alleged that consumers are
“likely to be . . . misled into believing that [Zhang’s] goods emanate from . . . or are in
some way . . . associated with, approved by, or sponsored by [Menwiththepot]”. 5
TTABVUE 16-17, ¶ 6. Like the allegations in the Prior Proceeding, the claim in the
Instant Proceeding is premised on the assertion that Zhang’s use of his mark
misleads consumers into believing that his goods originate from Menwiththepot.
The fact that Menwiththepot did not specifically identify or clearly assert a claim
of misrepresentation of source in the Prior Proceeding does not change the fact that
the claim is based on the same set of transactional facts. Under the doctrine of claim

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13
preclusion, a plaintiff is barred from a “subsequent assertion of the same
transactional facts in the form of a different cause of action or theory of relief.” See
Young Eng’rs, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1314 (Fed. Cir. 1983).
See also Urock Network, LLC, 2015 WL 4658976, at *4.
While Menwiththepot provides examples of Zhang’s alleged uses of his mark that
postdate the institution of the Prior Proceeding to support its argument that Zhang
“continues to alter its [sic] goods . . . and the looks of the goods to look more like
[Menwiththepot’s] goods” (7 TTABVUE 5, 15-17), the doctrine of claim preclusion
applies to claims based on the same set of transactional facts as those in a prior
proceeding, “regardless of what additional or different evidence or legal theories
might be advanced.” Zoba Int’l Corp. v. DVD Format/LOGO Licensing Corp., No.
92051714, 2011 WL 1060726, at *7 (TTAB 2011) (quoting Fink v. Golenbock, 680 A.2d
1243 (Conn. 1996)). See Orouba Agrifoods Processing Co., 2010 WL 5574283, at *4
(“Petitioner cannot avoid the application of claim preclusion by merely bringing
additional claims in this proceeding based on the same transactional facts as the prior
opposition. . . . [W]hile the grounds for the prior opposition did not include . . .
misrepresentation of source, [the claim is] based on the same facts alleged in the
opposition, perhaps with slightly more detail.”); id. at *5 n.3 (“After prevailing in the
first proceeding, respondent was entitled to move forward with use and development
of its mark, without fear that petitioner could obtain a second bite at the apple based
on immaterially changed transactional facts.”).

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14
In view of the foregoing, we find that there is no genuine dispute of material fact
that Menwiththepot’s misrepresentation of source claim is based on the same set of
transactional facts as those in the Prior Proceeding.
3. Fraud
In the Instant Proceeding, Menwiththepot identifies fraud on the ESTTA
coversheet to the complaint (1 TTABVUE 2) and pleads, inter alia, the following
allegations in support thereof:
60. [Menwiththepot] alleges that [Zhang] committed fraud in the
procurement of its [sic] registration or during prosecution of its [sic]
application for registration.
61. [Zhang] applied for the [involved] [r]egistration on August 31, 2021,
based on a physical address of No. 35, Group 3, Fanzhuang Village,
Nanmachang Township, ETDZ, Huaian City, Jiangsu CHINA 223000.
62. [Zhang] still claims the same physical address as [that provided in
the underlying] [a]pplication even after registration of the [involved]
[r]egistration.
. . .
65. [Menwiththepot] attempted to serve process via the Hague
Convention Treaty based on the claimed, declared, and represented to
the US Patent and Trademark Office [sic] based on the best of the
“signatory’s knowledge and belief.”
66. The Supreme People’s Court of China was unable to locate [Zhang]
at the address represented to the US Patent and Trademark Office, as
the building was demolished or [Zhang] is not located at that address,
and the village had no forwarding address for [Zhang].
67. Based on [Zhang’s] false representation of its [sic] physical address,
the [involved] [r]egistration should be cancelled as [Menwiththepot] is
and will continue to be damaged by [Zhang’s] registration.
Id. at 15-16.

Cancellation No. 92088301
15
In the Prior Proceeding, Menwiththepot likewise identified a claim of fraud on the
ESTTA coversheet to the complaint (see 5 TTABVUE 12), but pleaded no allegations
in support thereof. Nonetheless, inasmuch as the instant claim is based on an alleged
fraudulent statement made during the prosecution of the application that formed the
subject of the Prior Proceeding, we find that there is no genuine dispute of material
fact that the claim arises from the same set of transactional facts. Cf. Chutter, Inc. v.
Great Concepts, LLC, No. 92061951, 2016 WL 6819243, at *7 (TTAB 2016) (finding
third claim preclusion factor not met where fraud claim in prior proceeding “involved
statements made in prosecution of the underlying application” while fraud claim in
the latter proceeding involved “statements made in maintenance of the registration”
and “[t]he events and statements giving rise to the prior and current claims [were]
separated by more than six years”).
Menwiththepot’s argument that it had “no reason to suspect false representation
of the physical address” during the Prior Proceeding (7 TTABVUE 5) is unavailing.
In general, “the doctrine of claim preclusion protects defendants from repetitive
lawsuits based on the same conduct . . . and . . . there is a practical need to require
plaintiffs ‘to litigate their claims in an economical and parsimonious fashion.’”
Marrese v. Am. Acad. of Orthopaedic Surgeons, 470 U.S. 373, 385 (1985) (quoting
Marrese v. Am. Acad. of Orthopaedic Surgeons, 726 F.2d 1150, 1153 (7th Cir. 1984)).
Menwiththepot had an opportunity to take discovery in the Prior Proceeding and, if
it deemed appropriate, could have sought leave to plead allegations in support of a

Cancellation No. 92088301
16
fraud claim premised on Zhang’s provision of an allegedly false address.15
Menwiththepot had an opportunity to be heard on the merits in the Prior Proceeding
and simply allowed judgment to be entered against it by failing to prosecute its case.
See 5 TTABVUE 34. Applying claim preclusion under these circumstances furthers
the purpose of the doctrine by protecting Zhang from a repetitive lawsuit based on
the same set of transactional facts and conserving judicial resources.16
In short, we find no genuine dispute of material fact that the claims in the Instant
Proceeding are based on the same set of transactional facts as those in the Prior
Proceeding. Accordingly, the third factor of claim preclusion is satisfied.
V. Decision
In view of the foregoing, there is no genuine dispute of material fact that the
requisite elements of claim preclusion have been met with respect to all of
Menwiththepot’s claims. Accordingly, Zhang’s construed motion for summary
15 We need not and do not make a determination as to whether such a claim would have been
futile in the Prior Proceeding or whether it is sufficiently pleaded herein. See supra note 13.
16 To the extent that Menwiththepot’s fraud claim is premised on the assertion that Zhang
knew that Menwiththepot had superior rights in a confusingly similar mark at the time he
filed the declaration in support of the underlying trademark application and that, by failing
to disclose these facts to the USPTO, Zhang intended to procure a registration to which he
was not entitled, such a claim is likewise based on an allegedly fraudulent statement made
during the prosecution of the underlying application at issue in the Prior Proceeding.
Accordingly, there is no genuine dispute of material fact that it is based on the same set of
transactional facts as the Prior Proceeding. Cf. Int’l Nutrition Co. v. Horphag Rsch., Ltd., 220
F.3d 1325, 1329 (Fed. Cir. 2000) (“To the extent that the cancellation petition expands on the
false declaration allegations made in the opposition, the differences between the two
pleadings are not sufficient to differentiate the claims for res judicata purposes, particularly
since there was nothing in the cancellation petition that could not have been alleged in the
opposition.”).

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17
judgment on claim preclusion is granted, and the petition to cancel is denied with
prejudice.17
17 In view thereof, Zhang’s alternative motion to dismiss Menwiththepot’s fraud claim for
failure to state a claim upon which relief may be granted (5 TTABVUE) is moot.