Staub Design, LLC, v. David John Carnivale (Fed. Cir. 2015)

Written By: David Youngkin

Staub Design, LLC, v. David John Carnivale (Fed. Cir. 2015)

Mr. Carnivale owned the registered trademark “THE AFFORDABLE HOUSE” and registered domain name www.affordablehouse.com in 1998.  Mr. Staub, in 2004, registered the domain name “www.theaffordablehouse.com”.  The question for the court was not of trademark infringement, but of validity. Also, questions of collateral estoppel and issue preclusion were included in further proceedings by the courts.

In March 2007 Mr. Carnivale sent Mr. Staub cease and desist letters.  On May 16, 2007, in a petition for cancellation Mr. Staub alleged that Mr. Carnival’s “mark was obtained fraudulently and is generic”.  Slip Op. at 2.

Mr. Carnivale filed a civil action and notified the Trademark Office of the pending civil action.  The Trademark Trial and Appeal Board (“Board”) suspended the cancellation proceeding pending the outcome of the civil action.  Mr. Carnival’s mark was upheld, he notified the Board the mark was upheld, and filed a motion to dismiss the proceedings before the Board.  Mr. Staub proposed to amend the petition for cancellation, where he maintained the claim of genericness.  The Board granted the motion to amend, but at the same time the Board granted Mr. Carnivale’s motion to dismiss.  The Board based its decision on the prior civil action and that under the doctrine of collateral estoppel the issue of distinctiveness was already decided.  Nothing in Mr. Staub’s petition indicated the issues differed and as a result of prior civil litigation, involving the same parties and same mark, Mr. Staub’s claim of descriptiveness and genericness were barred by collateral estoppel/issue preclusion.

Following the Board’s decision Mr. Staub appealed to the Federal Circuit.  The issue before the Federal Circuit was whether the Board correctly found that Mr. Staub was precluded from re-litigating the issue.  Mr. Staub argued, before the Federal Circuit, that the petition should be allowed because “the distinctiveness issue in the civil action was limited to whether Mr. Carnivale’s mark was distinctive at the time of registration.” Slip Op at 4.  Mr. Staub, without offering any evidence, argued that the 2008 housing and foreclosure crises made it “especially likely” that the term was no longer distinctive and therefore the issues of the case were different than those decided in the prior civil action.  Id. at 5.

The Federal Circuit found that the record did not contain any evidence relevant to Mr. Staub’s argument.  Because Mr. Staub offered no evidence to support his position the Federal Circuit affirmed the Board’s dismissal of Mr. Staub’s petition for cancellation.
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