On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a cautionary tale, for counsel and applicants alike, of the potential future ramifications of allowing an application to go abandoned following a TTAB decision if the applicant intends to continue using the mark and may consider filing a future trademark application for the mark in connection with the same goods or services.

In 2014, SolarWindow filed an application to register the POWERCOATINGS mark in connection with the same goods at issue in the current proceeding (the “Prior Application”). In 2016, the TTAB affirmed the examining attorney’s refusal to register the subject mark on grounds of descriptiveness. SolarWindow failed to appeal the TTAB’s decision and the TTAB deemed the Prior Application abandoned (the “Prior Decision”).

Less than two years after the Prior Decision, SolarWindow filed the subject application seeking to register the same mark in connection with the same goods at issue in the Prior Application. This time, the examining attorney refused registration of the subject mark on two grounds: (1) the subject mark is merely descriptive under Section 2(e)(1) of the Trademark Act; and (2) the doctrine of res judicata precluded relitigation of the descriptiveness issue based on the TTAB’s Prior Decision. SolarWindows appealed the refusal and the TTAB ultimately ruled that the Prior Decision was a final judgment on the merits of the question of descriptiveness and that the prerequisites for res judicata had been satisfied.

Under the doctrine of res judicata (or 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.” In re Bose Corp., 476 F.3d 1331 (Fed. Cir. 2007). Res judicata is not applicable if not all of the questions of fact involved in the latter proceeding were determined in the prior proceeding. [Decision, at p. 6]. Relying on its prior decision in In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988), the TTAB concluded that, to excuse application of the doctrine of res judicata to the Subject Application, SolarWindow needed to demonstrate “a material change in the relevant conditions or circumstances.”  [Id., at p. 8].

The TTAB held that SolarWindow failed to satisfy this burden because (1) only 20 months had passed since abandonment of the Prior Application, and (1) SolarWindow did not identify any new facts arising after the Prior Decision showing a “material change of circumstances or conditions.” [Id., at pp. 8-9]. The TTAB acknowledged that SolarWindow had attached evidence to its response to the examining attorney’s refusal on grounds of descriptiveness. However, SolarWindow failed to specify how these “additional facts” presented new circumstances or “whether the evidence [SolarWindow] relied] upon was unavailable when the [TTAB] previously adjudicated the question of descriptiveness of the subject mark in the Prior Decision.  Instead, SolarWindow merely raised a “new argument” it could have presented during the prosecution of the Prior Application. [Id., at p. 9]. The TTAB found this argument insufficient to avoid the doctrine of res judicata, stating, “It was incumbent upon [SolarWindow] to put its best foot forward by presenting during prosecution of the Prior Application all arguments that it believe could overcome the descriptiveness refusal.” [Id., at pp. 9-10]. As a result, the TTAB affirmed the examining attorney’s refusal of registration.

In view of the TTAB’s decision, it is critical that, when applying to register a mark that the USPTO previously refused in connection with the same goods or services, counsel and applicants identify new facts, postdating the prior refusal, that demonstrate a “material change of circumstances or conditions.” Failure to do so will likely result in the application of res judicata and refusal of the latter application. New arguments that the applicant could have raised during the prosecution of the earlier application will not fly.

The decision is In re SolarWindow Technologies, Inc., Serial No. 87819480 (TTAB Mar. 5, 2021).