This week, the Supreme Court issued what is likely the most important trademark opinion in years. In may take a few years before we know the full ramifications of the Court’s decision that TTAB proceedings have a preclusive effect in later District Court actions when the proper conditions are met. I will post more about my opinion of the opinion in the coming days (but my prediction after the hearing – which can be found here – was fairly accurate).
In the interim, here is a roundup of stories and blog posts from others around the web with links and key takeaways:
- TTABlog (“The Court remanded the case to the Eight Circuit, directing it to apply the following rule: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.””)
- Ron Coleman / Likelihood of Confusion (The decision “may very well have implications for some of the pending litigation involving that popular topic of late, Section 2(a) of the Lanham Act.”)
- SCOTUSBlog (“The Court apparently designed its decision Tuesday in B&B Hardware v. Hargis Industries to answer as narrow a question as possible”)
- JD Supra article (“Parties in TTAB proceedings should be keenly aware that if they concurrently file a lawsuit in district court, the determinations made by the TTAB could be binding on the district court, which could have significant consequences to the arguably more important district court litigation. In most instances, seeking to stay the TTAB proceeding pending a determination of the district court litigation would likely be the safest and most efficient course of action.”)
- PATENTLYO (“For patent attorneys, the case will have an obvious impact on the interplay between the Patent Trial and Appeal Board (PTAB) and parallel district court litigation. The same reasoning that led the Supreme Court to its decision in B&B will apply equally with determinations made during inter partes and post grant review proceedings. Importantly, issue preclusion applies to individual decisions of fact or law and thus may be important for sub-issues such as claim construction, scope and content of the prior art, level of skill in the art, etc.”)
- The Recorder (“Whatever the outcome, inter partes proceedings before the TTAB are not likely to be treated the same after B&B Hardware. Trademark owners and applicants should anticipate the potential of TTAB decisions having some preclusive effect in subsequent trademark litigation and should conduct their TTAB proceedings accordingly.”)
- Butzel Long
- Collen IP (“Now, more than ever, trademark owners who believe that another party is infringing its trademark rights should consider commencing a trademark opposition proceeding by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board.”)
- Barnes & Thornburg (“if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should have no later preclusive effect in a suit where actual use in the marketplace is the paramount issue”)
- Crowell Moring (“Major exceptions notwithstanding, the Court’s decision in B&B Hardware has elevated the potential importance of TTAB proceedings, once largely thought to be critical only to the right to register a mark and not the right to use that mark”)
- Pattishall IP Blog (“An unintended consequence of the Supreme Court’s opinion may be protracted litigation in the lower courts about the preclusive effect of TTAB decisions.”
- Incontestable (Naresh Kilaru / Finnegan) (“In view of the Court’s decision, it remains to be seen whether parties will now choose to go “all out” at the TTAB with the knowledge that the decision may be accorded preclusive effect, or whether they will skip the TTAB altogether and head straight to district court. It means that TTAB decisions should be appealed to preserve factual issues. And district courts will have to wrestle with the question of what it means for the TTAB to consider “marketplace usage.” As a strategic matter, TTAB plaintiffs may want to think twice about asserting common law rights outside the scope of their pleaded registrations or introducing other evidence of marketplace use, so as to preserve their ability to bring an infringement action later.”)
- Duets Blog (“Before instituting a cause of action against another party, trademark owners will have to engage in some pre-litigation planning to position the case in the most beneficial forum.”)
- Goodwin Proctor (“the U.S. Supreme Court ruled in favor of Goodwin Procter client B&B Hardware, Inc., in a decision that may change the way trademark cases are litigated.”)
- Kaye Scholer (“We expect that lower courts will grapple with these issues for many years to come.”)
- Fenwick & West (“This decision unquestionably raises the stakes for TTAB proceedings. While both the majority opinion and concurrence note that many TTAB decisions may not bind district courts, this may offer little comfort to trademark litigants deciding on a litigation strategy.”)
- Morrison & Foerster (“The Supreme Court’s decision will likely raise the stakes in opposition and cancellation proceedings before the TTAB.”)
- World Trademark Review (“Ultimately, the issue of preclusion will continue to play out in the courts and it remains to be seen what level of impact this decision will ultimately have. However, it does give trademark counsel plenty to think about in terms of current practice strategies.”)
- Cooley LLP (Going forward, to get the benefits of issue preclusion in a later infringement case, plaintiffs in TTAB opposition and cancellation cases may increasingly offer evidence of actual use of the marks in the marketplace, like courts consider in deciding likelihood of confusion. That may tend to make TTAB adversarial proceedings more complicated, as plaintiffs build more extensive evidentiary records with a subsequent infringement action in mind. But it also may streamline the ensuing infringement litigation.”)
- Ropes & Gray (“As for the TTAB, it may decide to better harmonize its analysis with that used by the federal courts by (for example) giving greater weight to how the marks it considers are used in the marketplace.”)
- Husch Blackwell (“No doubt the real impact of the B&B decision will materialize over time as lower courts feel their way through its teachings. For now, parties involved in proceedings before the PTO’s TTAB should reevaluate their approaches to either prosecuting or defending that action to place themselves in the best possible position, whatever the outcome.”)
