Automated Summary
Key Facts
Little Caesar Enterprises, Inc. filed applications to register the designations "SINGLE", "DOUBLE", and "TRIPLE" for pizza for consumption on or off the premises, claiming use since August 3, 1977. Domino's Pizza, Inc. opposed on the ground that these terms are merely descriptive as applied to pizza. The terms describe pizza with one ingredient (cheese), two ingredients (cheese and pepperoni), and three ingredients (cheese, pepperoni, and mushrooms), respectively. A prior civil action between the parties resulted in a court finding that "DOUBLE" was descriptive and unenforceable. The Trademark Trial and Appeal Board sustained the oppositions, finding by preponderance of the evidence that the terms are merely descriptive of applicant's goods and have not become distinctive thereof.
Issues
- Whether the terms SINGLE, DOUBLE, and TRIPLE are merely descriptive of applicant's pizza goods and have not become distinctive thereof
- Whether the prior civil action decision finding DOUBLE descriptive is entitled to preclusive effect in this trademark opposition proceeding
- Whether applicant has proven that the terms have acquired distinctiveness through use in commerce
Holdings
The Trademark Trial and Appeal Board sustained the oppositions and refused registration to applicant (Little Caesar Enterprises, Inc.) in all three instances. The Board concluded that the terms 'SINGLE', 'DOUBLE', and 'TRIPLE' are merely descriptive of applicant's pizza goods and have not become distinctive thereof. The decision in a prior civil action between the parties, where the term 'DOUBLE' was found to be descriptive and unenforceable, is entitled to preclusive effect on the issues of descriptiveness and acquired distinctiveness. The Board found that these terms describe the number of toppings on pizzas (one topping for 'SINGLE', two toppings for 'DOUBLE', three toppings for 'TRIPLE'), and this significance would be readily apparent to purchasers.
Legal Principles
- The doctrine of res judicata (claim preclusion) precludes relitigation of the same claim between the same parties or their privies after a final judgment on the merits in a prior proceeding. The court found that the prior civil action where applicant's mark 'DOUBLE' was found descriptive and unenforceable entitled preclusive effect on the issues of descriptiveness and acquired distinctiveness.
- Collateral estoppel (issue preclusion) prevents relitigation of issues actually litigated and necessarily determined in a prior proceeding, even if the prior proceeding involved a different claim. The court applied this doctrine to bar applicant from asserting that 'DOUBLE' is inherently distinctive or has acquired secondary meaning, as these issues were litigated in the prior civil action.
- Under the doctrine of res judicata, the entry of a final judgment on the merits of a claim serves to preclude relitigation of the same claim in a subsequent proceeding between the parties or their privies. The prior court's finding that 'DOUBLE' was descriptive and applicant failed to prove secondary meaning was necessary to the decision and is entitled to preclusive effect.
Precedent Name
- Jewelers Vigilance Committee, Inc. v. Ullenberg Corp.
- Toro Co. v. Hardigg Industries, Inc.
- Flowers Industries, Inc. v. Interstate Brands Corp.
- Binney & Smith Inc. v. Magic Marker Industries, Inc.
- Lipton Industries, Inc. v. Ralston Purina Co.
- American Meat Institute v. Horace W. Longacre, Inc.
- Fort Howard Paper Co. v. Marcal Paper Mills, Inc.
- In re Scholastic Testing Service, Inc.
- Chromalloy American Corp. v. Kenneth Gordon, Ltd.
- Lawlor v. National Screen Service Corp.
Cited Statute
Trademark Act of 1946
Judge Name
- Seeherman
- Rice
- Rooney
Passage Text
- The court found that 'the claim in the civil action, wherein applicant sought to enjoin opposer's assertedly infringing use of the term DOUBLES, manifestly was not the same as the claim now presented in this case, wherein opposer has opposed applicant's application to register the term DOUBLE.' However, the court applied collateral estoppel: 'the issue of the descriptiveness of applicant's designation DOUBLE for pizza having cheese and pepperoni was actually litigated, and necessarily determined by the court, in the prior proceeding, with the determination being adverse to applicant.'
- The evidence shows that 'the term SINGLE is used by applicant to designate pizza having a single topping, namely, cheese; DOUBLE, to designate pizza having two toppings, namely, pepperoni and cheese; and TRIPLE, to designate pizza having three toppings, namely, cheese, pepperoni, and mushrooms.' The designations serve to describe the number of toppings on the pizzas sold thereunder.
- The Court found that applicant's asserted mark 'DOUBLE' was descriptive and unenforceable, stating: 'the designations 'SINGLE' and 'TRIPLE' are likewise merely descriptive, and have not become distinctive, of applicant's goods.'