Staub Design, LLC v. Carnivale , 625 F. App'x 993 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
STAUB DESIGN, LLC,
Appellant
v.
DAVID JOHN CARNIVALE,
Appellee
______________________
2015-1306
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board, in No.
92047553.
______________________
Decided: August 6, 2015
______________________
KURT JOHN NIEDERLUECKE, Fredrikson & Byron, PA,
Minneapolis, MN, for appellant. Also represented by
DEAN R. KARAU, CYNTHIA A. JOKELA MOYER.
DAVID JOHN CARNIVALE, Staten Island, NY, pro se.
______________________
Before REYNA, WALLACH, and HUGHES, Circuit Judges.
2 STAUB DESIGN, LLC v. CARNIVALE
HUGHES, Circuit Judge.
Staub Design, LLC argues the Trademark Trial and
Appeal Board erred in dismissing its petition for cancella-
tion of John Carnivale’s registered mark, because Staub
presented new issues that were not already decided in
prior litigation. We find that Staub has failed to identify
any evidence that might support or even concern Staub’s
argument regarding the allegedly new issues. According-
ly, we affirm.
I
Mr. Carnivale owns the registered trademark “THE
AFFORDABLE HOUSE” for “architectural plans and
specifications” and “on-line retail store services featuring
books and sets of blue prints.” Registration No.
3,058,545. Mr. Carnivale published a book, “The Afforda-
ble House,” in 1994 and registered the domain name
“www.affordablehouse.com” in 1998 to sell copies of his
book and the blueprint sets it contains. Carnivale v.
Staub Design, LLC, 700 F. Supp. 2d 660, 662 (D. Del.
2010).
Staub is a residential design company focused on the
use of autoclaved aerated concrete, a lightweight building
material. In 2004, after having discovered
Mr. Carnivale’s website, Staub registered the domain
name “www.theaffordablehouse.com.”
Mr. Carnivale sent Staub cease and desist letters in
March 2007. On May 16, 2007, Staub petitioned for
cancellation of Mr. Carnivale’s mark, alleging the mark
was obtained fraudulently and is generic for the services
for which it is registered. See 15 U.S.C. § 1064(3). On
May 22, 2007, the Board instituted proceedings and
issued a scheduling order setting deadlines for discovery
and the testimony period.
On May 30, 2007, Mr. Carnivale filed a civil action
against Staub in district court, alleging that Staub’s use
STAUB DESIGN, LLC v. CARNIVALE 3
of the domain name www.theaffordablehouse.com violated
the Anticybersquatting Consumer Protection Act (ACPA),
Pub. L. No. 106-113, § 3002, 113 Stat 1501, 1501A545–46
(1999) (codified at 15 U.S.C. § 1125(d)). Shortly after,
Mr. Carnivale filed in the Trademark Office a notice of a
pending civil action and a motion to dismiss, which the
Board construed as a motion under 37 C.F.R. § 2.132(b).
On October 18, 2007, the Board ordered suspension of the
cancellation proceedings pending the outcome of the civil
action.
In March 2010, a district court, as part of its determi-
nations on portions of Mr. Carnivale’s ACPA claim, found
Mr. Carnivale’s mark distinctive and not generic. Carni-
vale, 700 F. Supp. 2d at 666–67; 15 U.S.C.
§ 1125(d)(1)(A)(ii)(II). And in April 2014, after a series of
appeals and remands, the civil action concluded with a
final judgment that Staub violated the ACPA. J.A. 9.
Mr. Carnivale notified the Board in May 2014 of the
final judgment in the civil action. Within the following
three months, the parties filed supplemental memoranda
and notices regarding Mr. Carnivale’s still-pending mo-
tion to dismiss and the concluded civil action. Staub also
filed a motion to amend its petition to delete the fraud
allegation and add an allegation that Mr. Carnivale’s
mark is merely descriptive. After considering the entire
record of the proceeding and the decisions in the civil
action, the Board granted Staub’s motion to amend but
nonetheless granted Mr. Carnivale’s motion to dismiss.
Staub appeals. We have jurisdiction under 15 U.S.C.
§ 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).
II
We review de novo the Board’s legal conclusions, in-
cluding the dismissal of claims as legally deficient. Ay-
cock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1355 (Fed.
Cir. 2009); Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175
4 STAUB DESIGN, LLC v. CARNIVALE
F.3d 1322, 1324 (Fed. Cir. 1999). The Board’s factual
findings are reviewed for substantial evidence. Aycock
Eng’g, Inc., 560 F.3d at 1355.
Generic terms are not registrable, and a registered
mark may be cancelled at any time on the grounds that it
has become generic. 15 U.S.C. § 1064(3). Whether a
mark is generic is a question of fact reviewed for substan-
tial evidence. In re Reed Elsevier Props. Inc., 482 F.3d
1376, 1378 (Fed. Cir. 2007).
The Board found that Staub was precluded under
principles of collateral estoppel from re-litigating before
the Board the same issue of distinctiveness that was
decided in the civil action. Liability for a violation of the
ACPA may be established by proving, among other things,
that “in the case of a mark that is distinctive at the time
of registration of the domain name, [the domain name] is
identical or confusingly similar to the mark.” 15 U.S.C.
§ 1125(d)(1)(A)(ii)(II). In the civil action, Mr. Carnivale
prevailed on the issue of whether his registered mark was
distinctive and not generic at the time of Staub’s registra-
tion of the domain name www.theaffordablehouse.com.
See Carnivale, 700 F. Supp. 2d at 666–67; Carnivale v.
Staub Design, LLC, No. CIV. 1:08-cv-764-SLR, 2012 WL
6814251, at *4 (D. Del. Jan. 7, 2012), aff’d, 547 F. App’x
114 (3d Cir. 2013). To the extent that Staub’s petition
concerned the same issue of whether Mr. Carnivale’s
mark was distinctive and not generic in 2004, the Board
correctly found that Staub was precluded from re-
litigating that issue. See, e.g., Int’l Order of Job’s Daugh-
ters v. Lindeburg & Co., 727 F.2d 1087, 1091 (Fed. Cir.
1984).
Staub argues that his petition should be allowed to
proceed because the distinctiveness issue in the civil
action was limited to whether Mr. Carnivale’s mark was
distinctive at the time of registration of the domain name.
According to Staub, the housing and foreclosure crisis
STAUB DESIGN, LLC v. CARNIVALE 5
that began in 2008 has made it “especially likely” that the
term is no longer distinctive in light of this change, mak-
ing the issues of this case different than those decided in
the civil action. Appellant’s Br. 16–17. Staub offered no
evidence before the Board to substantiate its argument.
In this regard, the Board found that “[n]othing in Staub’s
submissions to [the] Board indicates that the issues in
this proceeding differ from those that were litigated
before the District Court and affirmed by the Third Cir-
cuit.” J.A. 11. And our review of the record indicates that
it does not contain any evidence relevant to Staub’s
changed-circumstances argument. Thus, on the record
before us, we cannot say that the Board erred by dismiss-
ing Staub’s petition. 1 See, e.g., Home Meridian Int’l, Inc.
v. United States, 772 F.3d 1289, 1295 (Fed. Cir. 2014)
(holding that self-serving statements do not constitute
substantial evidence).
III
We have considered Staub’s remaining arguments
and conclude they are without merit. Accordingly, we
affirm the Board’s dismissal of Staub’s petition for cancel-
lation.
AFFIRMED
No costs.
1 We express no opinion on the applicability of issue
preclusion to the issue of whether a mark is still distinc-
tive later in time when the basis for applying issue pre-
clusion is a civil court’s finding, in relation to an ACPA
claim, that the mark was distinctive earlier in time.