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
General Email: [email protected]
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August 1, 2019

Opposition No. 91244796

Sheila Lyons DVM

v.

American College of Veterinary Sports
Medicine and Rehabilitation, Inc.

Before Kuhlke, Pologeorgis, and Hudis,
Administrative Trademark Judges.

By the Board:

American College of Veterinary Sports Medicine and Rehabilitation, Inc.

(“ACVSMR”) seeks to register the mark AMERICAN COLLEGE OF VETERINARY

SPORTS MEDICINE AND REHABILITATION1 on the Principal Register under

Section 2(f) of the Trademark Act for the following services:

“Association services, namely, promoting public awareness of the
benefits of working with certified specialists in veterinary medicine” in
International Class 35;

“Educational services, namely, establishing and conducting continuing
education seminars, conferences, programs, trainings, classes and

1Application No. 86218298, filed March 11, 2014, alleging June 17, 2011 as the date of first
use and first use in commerce for the services in International Class 35, alleging July 2012
as the date of first use and first use in commerce for the services in International Class 41,
and alleging May 2012 as the date of first use and first use in commerce for the services in
International Class 42.
Opposition No. 91244796

discussions in the field of veterinary medicine” in International Class
41; and

“Testing, analysis and evaluation of the knowledge, skills and abilities
of others for the purpose of certification and re-certification in the field
of veterinary medicine” in International Class 42.

Sheila Lyons DVM (“Lyons”) opposes registration of the subject mark on the

ground that she is the true owner of the subject mark. In her notice of opposition,

Lyons pleads prior common law rights in the subject mark.

ACVSMR seeks summary judgment in its favor on the ground that the issue of

ownership of the subject mark was already decided in ACVSMR’s favor by the U.S.

Court of Appeals for the Federal Circuit in Lyons v. Am. College of Veterinary Sports

Med. & Rehab, 859 F.3d 1023 (Fed. Cir. 2017) (affirming Am. College of Veterinary

Sports Med. & Rehab v. Lyons, 2016 TTAB Lexis 113 (TTAB Mar. 17, 2016)

(Cancellation No. 92053934), cert. denied, 138 S.Ct. 366. ACVSMR asserts that the

doctrine of collateral estoppel applies because this prior matter involved the same

parties, the same legal issues, and the same factual allegations as the present

matter.

I. Prior Proceedings

The prior dispute between the parties, like the present proceeding, involved a

trademark ownership dispute between Lyons, a former organizing committee

member, and ACVSMR, the veterinary specialty organization she helped found.

Specifically, the prior proceeding involved Lyons’ Registration No. 3088963 issued

on the Supplemental Register for the service mark THE AMERICAN COLLEGE OF

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Opposition No. 91244796

VETERINARY SPORTS MEDICINE AND REHABILITATION. On April 25, 2011,

ACVSMR petitioned to cancel this registration on the grounds of priority of use,

likelihood of confusion, misrepresentation of source, and fraud.2 This Board

proceeding was suspended for nearly three years during the pendency of a civil

action filed by Lyons in the United District Court of the District of Massachusetts.

Lyons et al. v. Gillette, et al., Civil Action No. 1:11-CV-12192-WGY (D. Mass. 2011).

Upon resumption of the cancellation proceeding by the Board, ACVSMR filed an

amended petition to cancel Registration No. 3088963 claiming, in pertinent part,

that it had superior rights in the subject mark; that Lyons was not the rightful

owner of the mark at the time she filed the underlying application of her subject

registration; that ACVSMR was the first entity to use the mark in commerce; that

Lyons only began using the mark in commerce as a result of her association with

ACVSMR; and that Lyons’ use of the mark would likely cause confusion in violation

of Section 2(d) of the Trademark Act. On March 17, 2016, the Board concluded that

Lyons was not the owner of the mark and her registration on the Supplemental

Register is void ab initio.

Thereafter, Lyons appealed the Board’s decision in the cancellation proceeding

regarding her Supplemental Registration No. 3088963 to the U.S. Court of Appeal

for the Federal Circuit. In a June 8, 2017 decision, the Federal Circuit court

affirmed the Board. Lyons v. Am. College of Veterinary Sports Med. & Rehab., 859

2 Cancellation Proceeding No. 92053934. In a related proceeding, Opposition No. 91206077,
ASVSMR filed a notice of opposition to Lyons’ application for the same mark on the
Principal Register for services in International Class 41. Such application was ultimately
refused registration by the Board.

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Opposition No. 91244796

F.3d at 1032. On October 16, 2017, the Supreme Court of the United States denied

certiorari. Lyons v. Am. Coll. Of Veterinary Sports Med. & Rehab., 138 S. Ct. 366

(2017). On November 9, 2017, the USPTO canceled Lyons’ Registration No. 3088963

issued on the Supplemental Register.

II. Motion for Summary Judgment

In support of its motion for summary judgment, ACVSMR asserts that Lyons is

estopped from opposing the subject application and relitigating the same issue in

this proceeding as was addressed in the prior proceeding. ACVSMR argues that the

parties were the same; the issue of ownership was the same; the issue was fully

litigated; and Lyons was represented by counsel during all phases of the prior

proceeding.3

In response, Lyons argues that the issues in the prior proceeding and this

proceeding are different; that the parties are different because in the prior

proceeding ACVSMR was “an unincorporated, unidentified group of individual

veterinarians prior to the incorporation of the corporate [ACVSMR]”4; and that

Lyons’ common law rights in the subject mark prohibit registration of the mark by

ACVSMR.5

In reply, ASVSMR argues that Lyons’ response brief further demonstrates that

she is merely seeking to relitigate prior matters because she “asks the Board to

recognize her as the true owner of the mark, by virtue of alleged priority of use, a

3 4 TTABVUE 5.
4 6 TTABVUE 10.
5 6 TTABVUE 10.

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Opposition No. 91244796

claim that was already decided….”6 ACVSMR further argues that Lyons’ assertion

that ACVSMR is not the same party as in the prior proceeding is erroneous.

ACVSMR states that this issue too was already litigated by the Board in the prior

cancellation proceeding. ACVSMR points out that “the Board found that Applicant

at one time consisted of an unincorporated association of veterinarians until 2011,

when it incorporated upon being official [sic] recognized as a veterinary specialty

organization by the American Veterinary Medical Association.”7 ACVSMR explains

that the Board “expressly held that [ACVSMR] was the ‘successor in interest to the

former unincorporated association,” and therefore ‘substituted the corporation as

the party plaintiff.’”8

Summary judgment is appropriate only when there is no genuine dispute as to

any material fact and the moving party is entitled to judgment as a matter of law.

See Fed. R. Civ. P. 56(a). The Board may not resolve issues of material fact; it may

only ascertain whether a genuine dispute regarding a material fact exists. See

Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.

1993); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.

Cir. 1992). A factual dispute is genuine if, on the evidence of record, a reasonable

fact finder could resolve the matter in favor of the non-moving party. Opryland USA

Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir.

1992); Olde Tyme Foods, Inc., 22 USPQ2d at 1544. The non-moving party may not

6 7 TTABVUE 2.
7 7 TTABVUE 3.
8 Id. quoting Am. College of Veterinary Sports Med. & Rehab. v. Lyons, 2016 TTAB LEXIS

113 at *1 n.1.

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Opposition No. 91244796

rest on the mere allegations of its pleadings and assertions of counsel, but must

designate specific portions of the record or produce additional evidence showing the

existence of a genuine dispute of material fact for trial. In general, to establish the

existence of disputed facts requiring trial, the non-moving party “must point to an

evidentiary conflict created on the record at least by a counterstatement of facts set

forth in detail in an affidavit by a knowledgeable affiant.” Octocom Systems Inc. v.

Houston Comp. Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990)

(citing Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831,

221 USPQ 561, 564 (Fed. Cir. 1984)).

The doctrine of collateral estoppel or issue preclusion may bar relitigation of the

same issue between the parties in a second action. See B&B Hardware, Inc. v.

Hargis Industries, Inc., 135 S.Ct. 1293, 191 L.Ed. 2d 222, 113 USPQ2d 2045 (2015);

Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d

1310, 1314 (Fed. Cir. 2005). Collateral estoppel normally will bar the relitigation of

an issue of law or fact that was raised, litigated, and actually decided in a prior

proceeding between the parties, if the determination of that issue was essential to

the judgment, regardless of whether or not the two proceedings are based on the

same claim. NLRB v. United Tech. Corp., 706 F.2d 1254, 1260 (2d Cir. 1983).

The application of issue preclusion requires: (1) identity of an issue in the

current and a prior proceeding; (2) actual litigation of that issue in the prior

proceeding; (3) necessity of a determination of the issue in entering judgment in the

prior proceeding; and (4) a full and fair opportunity existed, for the party with the

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Opposition No. 91244796

burden of proof on that issue in the second proceeding, to have litigated the issue in

the prior proceeding. See Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 76

USPQ2d at 1313.

Upon careful consideration of the arguments presented by the parties, we find

that the doctrine of collateral estoppel applies.

We find that there is no genuine dispute that the first collateral estoppel

element is met to the extent that the issue of ownership of the subject mark is

identical in both the prior cancellation proceeding and in our determination

regarding the pleaded claim in this opposition.9 With regard to Lyons’ assertion that

ACVSMR is not the same party as in the prior proceeding, we find that ACVSMR is

correct that the Board expressly held that Applicant was the successor in interest to

the former unincorporated association of veterinarians and, hence, the same parties

have litigated the issue of ownership.10 We further find that there is no genuine

dispute of material fact that the second collateral estoppel element concerning

actual litigation of this issue in the prior Board proceeding is clearly met as

evidenced by the Board’s decision in that case that issued on March 17, 201611 and

by the Federal Circuit’s decision that issued on June 8, 2017.12 Similarly, we find

that there is no genuine dispute that there was the necessity of a determination of

the issue of ownership, as shown by the entry of judgment by the Federal Circuit.13

Additionally, we find that there is no genuine dispute that a full and fair

9 Am. College of Veterinary Sports Med. & Rehab v. Lyons, 2016 TTAB Lexis 113 at *1 n.1.
10 Id. at *64.
11 Id.
12 Lyons v. Am. College of Veterinary Sports Med. & Rehab, 859 F.3d at 1032.
13 Id.

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Opposition No. 91244796

opportunity existed for Lyons to have litigated the issue of ownership in the prior

cancellation proceeding. Therefore, there are no genuine disputes of material fact

that all the elements of collateral estoppel have been met. In view thereof, it is

established under the doctrine of collateral estoppel that Lyons’ is not the owner of

the mark.

Because there is no dispute that the doctrine of collateral estoppel is applicable

in this proceeding, and it is established that Lyon’s is not the owner of the mark,

Lyons’ claim of ownership fails and ACVSMR’s motion for summary judgment is

granted. The opposition is therefore dismissed with prejudice.

* * *

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