Big-O Puts Its Foot In Opposition and Comes Out Shoeless

In a decision that is not citable, the Trademark Trial and Appeal Board (“TTAB”) ruled that Big O Tires was contractually estopped from opposing a Bigfoot 4X4, Inc. application to register the mark BIGFOOT for monster truck videos.

In reviewing the record, the TTAB noted that the two parties had been in litigation before, the result of which was a settlement agreement allowing Bigfoot to register the mark BIGFOOT for audio/video materials related to monster trucks. The TTAB found that Bigfoot’s application fell squarely within the terms of the settlement agreement, and it dismissed the case based upon contractual estoppel.

In fact, the terms of the settlement agreement were silent as to whether Bigfoot could register federally the trademark BIGFOOT. The TTAB reasoned, however, that since Bigfoot had the exclusive right to use the mark in commerce, it had the right to seek registration.

Practice Pointer: Both parties sought to dismiss the case on a theory of Res Judicata and Collateral Estoppel. The TTAB denied the motions. Collateral Estoppel cannot apply if the parties never litigated the issues. Res Judicata cannot apply when there is no entry of final judgment in the case.

Click here to review the complete decision.



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