“Supreme Court Decision Will Impact Procurement and Enforcement of US Trademark Rights”

March 24, 2015
Marshall Gerstein Alert

In a decision that will change the way trademark lawyers practice, the Supreme Court held today in B&B v. Hargis Industries that a loss in a trademark opposition before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office could significantly limit the company’s defenses if the opposer subsequently sues in the courts claiming trademark infringement. The likelihood-of-confusion issue decided by the Trademark Trial and Appeal Board (TTAB) has long been considered to be materially different than the likelihood-of-confusion issue decided by the courts in infringement litigation. Today, however, the Court held that even though the issues are sometimes (or even often) different, conventional issue preclusion should apply in those cases where the "usages" are the same. ("Usages" is new wording from the Court that might represent a new way of looking at the issues.) Consequently, a final decision from the TTAB that a mark is unregistrable for a broad "usage" may preclude the applicant from disputing the central issue in a later infringement case.

Most applications for trademark registration (including the one that was at issue in the Hargis case) list a broad "usage": e.g., "standard characters" that are not limited to the font in which the mark appears in the trade, and a listing of goods that does not specify the industry segments in which the goods are sold. To be allowed to dispute likelihood of confusion in a follow-up infringement action, trademark owners will need to convince a court that the issue raised by their actual use in the marketplace is "materially different" than the broad "usage" listed in the successfully-opposed prior application.

Both applicants and opposers in TTAB proceedings may want to consider trying to expand the typical scope of an opposition proceeding. In cases with broad "usages," TTAB rules normally consider factual inquiries about (for example) the commercial impressions created by the fonts actually used in the marketplace, or the actual channels of trade used by the parties, to be irrelevant. Pressing for or resisting discovery or the introduction of evidence directed to those topics will build a record that could determine whether issue preclusion will apply in a subsequent infringement case. For example, a TTAB order excluding certain evidence could help convince a district court that the likelihood-of-confusion issue that the TTAB decided was indeed materially different than the likelihood-of-confusion issue that the district court must decide in the infringement action.

Those interested in the decision or its impact may contact the trademark group at Marshall, Gerstein & Borun.

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