Last 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. The spectrum of takeaways – and thus the broad potential impact of this case in trademark disputes – is rather astonishing.
- 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.”) (
- Fox Rothschild (“This leaves open the question of what issues are materially the same. For example, the court found that neither “trivial variations between the usages set out in an application and the use of the mark in the marketplace” nor “trivial variations” in the marks themselves would constitute materially different usages, but did not indicate what types of variations would be material.)
- Bryan Cave (“As a practical matter, today’s decision could impact how aggressive trademark owners enforce, and defend, their rights in opposition proceedings, which could have preclusive effect in infringement actions”)
- Knobbe Martens (“This case also makes clear that any loss at the TTAB should be carefully reviewed to consider if it should be appealed and/or if it might have preclusive effect on future proceedings. Potential litigants should carefully evaluate both the TTAB and the courts when considering the most advantageous forum for bringing a trademark dispute.”)
- Calfee (” Trademark owners and applicants should carefully consider the potential preclusive effect of a TTAB decision on a pending or subsequent infringement action in district court. While the B&B Hardware case addressed the issue of likelihood of confusion, other common issues, such as descriptiveness, secondary meaning, and dilution, may also be potential grounds for issue preclusion”)
- Womble Carlyle (“The lessons from this Supreme Court decision are yet to be fully determined but, at a minimum, parties to TTAB proceedings are likely to fight harder, requiring more time and expense to resolve opposition and cancellation proceedings. The parties will do so based on the very real possibility that the TTAB decision will bind them in any subsequent litigation. In addition, an entity applying for a trademark registration will want to consider carefully the description of goods or services in its application, including a potential description of the channels of trade in which the goods or services will be offered. A properly tailored description of goods and services (and possibly channels of trade) may avoid a TTAB opposition proceeding altogether.”)
- Thompson Hine (“So what does this decision mean to brand owners? A brand owner seeking to prevent registration of or seek to cancel a registration for a conflicting mark must carefully weigh the strategic advantages and disadvantages of initiating an opposition or cancellation proceeding at the TTAB versus resorting directly to litigation. By the same token, a brand owner facing third-party opposition of its federal trademark registration application must recognize that it may be advisable to pursue judicial review of an adverse outcome at the TTAB if an infringement suit involving the opposed mark is pending or anticipated.”)
- Williams Mullen (“The end result may be that parties will more likely seek review before a district court from a TTAB ruling where they would get the opportunity to obtain additional discovery, present live witnesses, and present evidence of marketplace usage not presented at the TTAB, rather than simply appealing a TTAB decision to the Federal Circuit.”)
- Paul Weiss (“Perhaps most significantly, the Court’s ruling reminds litigants of the importance of seeking judicial review of TTAB decisions. Trademark litigants faced with an unfavorable TTAB registration decision have always had the option to seek de novo review of the Board’s decision in either the U.S. Court of Appeals
for the Federal Circuit or a district court. The Court’s decision underscores the importance of exercising that right.”)
- Caesar Rivise (“Also, it means that Opposition and Cancellation proceeding should be taken as seriously as civil actions in a U.S. District Court.”)
- Sullivan & Worcester (“From a practical perspective, that means that litigants may have little choice but to treat the TTAB proceeding as they would a district court proceeding and bring all relevant evidence to bear, including, inter alia. expensive survey evidence. While TTAB proceedings are traditionally considered a more “economical” means of obtaining a desired end, the cost difference between such proceedings and district court litigation is likely to narrow.”)
- Gibson Dunn (“At a minimum, the opinion underscores the importance of carefully considering whether to oppose a trademark registration proceeding before the TTAB–and whether to pursue immediate judicial review of an adverse TTAB determination.”)
- Greenberg Traurig (“Because it is now clear that a TTAB decision can bind a court in an infringement action, the decision to bring a TTAB proceeding could lower the cost of obtaining a finding of likelihood of confusion in appropriate cases. On the other hand, an adverse result could significantly impair a subsequent enforcement program.”)
- Sideman & Bancroft (“the ruling is likely to result in trademark owners and trademark applicants spending more time (and money) litigating their claims before the TTAB to prevent a unfavorable decision that could possibly preclude a later infringement claim. Plaintiffs will also be more careful and thorough in building evidentiary records before the TTAB, with more attention being paid to marketplace usage.”)
- DLA Piper (“Opposition proceedings, which in the past have been fairly streamlined and consensual, may evolve into something more like contentious full-scale litigation, with disputes over discovery, including electronic discovery, requests for oral arguments, and similar issues becoming more common. In addition, losers before the TTAB may be more likely to seek de novo court review of an adverse TTAB determination on confusion.”)
- Morgan Lewis (“Likewise, an applicant who seeks to register a trademark and faces opposition should think twice about whether to respond to a notice of opposition and risk a final determination on the issue of likelihood of confusion. An applicant may not care enough about obtaining a registration to risk issue preclusion in the future and may therefore take a default judgment so that the issue is not “actually litigated” in the TTAB.”)
