FILED

U.S. COURT OF APPEALS

ELEVENTH CIRCUIT

JULY 07, 2008

THOMAS K. KAHN

CLERK

 [DO NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

________________________

No. 08-10248

Non-Argument Calendar

________________________

D. C. Docket No. 06-61449-CV-PAS

LU SORO, 

d.b.a. Citigroup, 

Plaintiff-Appellant, 

versus 

CITIGROUP, 

Defendant-Appellee. 

________________________

Appeal from the United States District Court

for the Southern District of Florida

_________________________

(July 7, 2008)

Before TJOFLAT, BLACK and WILSON, Circuit Judges.

PER CURIAM:

Lu Soro d/b/a Citigroup (“Soro”), proceeding pro se, appeals the district
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court’s dismissal, on the grounds of res judicata and collateral estoppel, of his

complaint, which sought to overturn the Trademark Trial and Appeal Board’s

(“TTAB”) denial of his petition for cancellation of defendant Citigroup’s federal

registration of the CITIGROUP mark, 15 U.S.C. § 1071(b)(1), (4).

Soro argues that neither res judicata nor collateral estoppel applied to the

claims he raised in the district court. Soro contends that because different issues

arise in infringement proceedings and cancellation proceedings, the decisions in

the prior infringement suit do not bar the instant cancellation litigation. Soro

notes that the original permanent injunction did not relate to the use of the

CITIGROUP mark, only the CITICORP mark. Soro also asserts that he had

priority use of the CITIGROUP mark, and that the mark is generic.

We review de novo a grant of a motion to dismiss. Spain v. Brown &

Williamson Tobacco Corp., 363 F.3d 1183, 1187 (11th Cir. 2004). We review de

novo a district court’s res judicata or collateral estoppel determination. EEOC v.

Pemco Aeroplex, Inc., 383 F.3d 1280, 1285 (11th Cir. 2004).

A party to a cancellation proceeding who is dissatisfied with the decision of

the TTAB may bring suit in federal district court. 15 U.S.C. § 1071(a)(1), (b)(1);

Coach House Rest. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1556 n.3 (11th Cir.

1991). “A district court may not reverse findings of the TTAB, unless the contrary
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is established by testimony which in character and amount carries thorough

conviction. The district court can reverse if it concludes that the law applied by

the TTAB was incorrect. Moreover, any equitable rulings rendered by the TTAB

may be reversed if the TTAB abused its discretion.” Id. at 1557 (internal

quotation marks and footnotes omitted).

“In order to prosecute successfully a petition for cancellation, petitioner

must prove: (1) [t]hat it has standing to petition for cancellation because it is likely

to be damaged, and (2) that there are valid grounds for discontinuing registration.” 

Id. at 1557; see 15 U.S.C. § 1064. A mark may be cancelled on the basis of,

among other things, (1) if the petition to cancel was filed within five years of the

registration, any reason that the mark should not have been registered; or (2) at

any time if, inter alia, the mark has become generic, functional, or abandoned, or

the mark was obtained or is being used fraudulently. 15 U.S.C. § 1064(1), (3). To

cancel registration under 15 U.S.C. § 1052(d), a petitioner must show “(1) that the

registered mark resembles petitioner’s mark, (2) that petitioner acquired trade

identity rights in the mark before the registrant used the mark, and (3) that the

registered mark is likely to cause confusion when used in connection with the

services of registrant.” Coach House, 934 F.2d at 1559 (footnotes omitted).

Res judicata, or claim preclusion, bars the filing of a claim that was raised
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or could have been raised in prior litigation where (1) there is a final judgment on

the merits; (2) rendered by a court of competent jurisdiction; (3) that involved the

same parties or individuals in privity with them; and (4) involved the same cause

of action. Ragsdale v. Rubbermaid, Inc., 193 F.3d 1235, 1238-39 (11th Cir.

1999). “[T]he principal test for determining whether the causes of action are the

same is whether the primary right and duty are the same in each case. In

determining whether the causes of actions are the same, a court must compare the

substance of the actions, not their form. It is now said, in general, that if a case

arises out of the same nucleus of operative fact, or is based upon the same factual

predicate, as a former action, that the two cases are really the same ‘claim’ or

‘cause of action’ for purposes of res judicata.” Id. at 1239 (internal quotation

marks and citation omitted). The only aspect of res judicata in question here is

whether the prior litigation between Soro and Citigroup involved the same claim

or cause of action.

Collateral estoppel, or issue preclusion, bars re-litigation of issues actually

litigated and necessary to the judgment of prior litigation when the party against

whom the earlier decision is asserted had a full and fair opportunity to litigate in

the earlier proceeding. Precision Air Parts, Inc. v. Avco Corp., 736 F.2d 1499,

1501 (11th Cir. 1984). “There are several prerequisites to the application of
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collateral estoppel: (1) the issue at stake must be identical to the one involved in

the prior litigation; (2) the issue must have been actually litigated in the prior suit;

(3) the determination of the issue in the prior litigation must have been a critical

and necessary part of the judgment in that action; and (4) the party against whom

the earlier decision is asserted must have had a full and fair opportunity to litigate

the issue in the earlier proceeding.” I.A. Durbin, Inc. v. Jefferson Nat’l Bank, 793

F.2d 1541, 1549 (11th Cir. 1986). The only aspect of collateral estoppel in

question here is whether the issues in the prior proceedings were identical to the

issues in the instant case.

After careful consideration of the briefs of the parties, and thorough review

of the record, we find no reversible error.

The district court erred in determining that res judicata barred Soro’s

complaint. The prior litigation regarded only whether trade names used by Soro

infringed on the CITICORP mark and an injunction directing Soro not to use trade

names similar to the CITICORP mark. The instant case concerns whether

Citigroup had the right to federally register the CITIGROUP mark. These are not

the same causes of action and, therefore, res judicata is not applicable.

The district court correctly determined that collateral estoppel was

applicable to the issue of priority use, but erred in determining that this barred the
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entirety of Soro’s complaint. The issue of priority use was collaterally estopped as

a result of the 2003 contempt order in the prior litigation between Soro and

Citigroup. However, in the instant case Soro asserted that registration of the

CITIGROUP mark should be cancelled because the term was generic, an

independent basis for cancellation that had not been previously litigated by these

two parties.

We may affirm on any ground supported by the record. Bircoll v.

Miami-Dade County, 480 F.3d 1072, 1088 n.21 (11th Cir. 2007). Here, the TTAB

correctly determined that Soro did not have standing to file the original petition

for cancellation, and the district court’s dismissal of Soro’s complaint may be

affirmed on this ground. To prevail on a petition for cancellation, a petitioner

must show that “it has standing to petition for cancellation because it is likely to

be damaged.” Coach House, 934 F.2d at 1558; see 15 U.S.C. § 1064. A petitioner

has to show that he has a real commercial interest in the disputed mark, and a

reasonable basis for the belief that he would be damaged by the registration of the

mark. Chem. New York Corp. v. Conmar Form Sys, Inc., 1 U.S.P.Q.2d 1139, 1142

(TTAB 1986). Here, Soro is the subject of a permanent injunction that prohibits

him from using the word “Citigroup” in providing financial services. Because of

this prohibition, Soro lacked a legitimate commercial interest in the CITIGROUP
 Soro additionally argues the applicability to the TTAB of the 10-day period identified in 1

Fed. R. Civ. P. 56(c). In light of Soro’s lack of standing, any error in this regard was harmless.

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mark. Accordingly, we affirm. 1

AFFIRMED.