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Attorneys React To Supreme Court’s TTAB Preclusion Ruling

March 24, 2015

Law360

On Tuesday, the U.S. Supreme Court ruled that federal court decisions on “likelihood of confusion” can be precluded by earlier findings on the same issue from the Trademark Trial and Appeal Board. Here, attorneys tell Law360 why the decision in B&B Hardware Inc. v. Hargis Industries Inc. is significant.

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Matthew Kelly, Montgomery McCracken Walker & Rhoads LLP

“Some feared that a Supreme Court decision that TTAB registration-related determinations should be given preclusive effect in infringement litigation would grant the TTAB more authority than Congress had intended – after all, the TTAB’s decisions are reviewable de novo on appeal to the district courts. However, the ruling is in fact very narrow. In order for a TTAB ruling to be given preclusive effect, it must meet all of the elements of issue preclusion, which is very difficult and necessarily requires that all issues and elements considered in the TTAB are identical to those to be considered in litigation. As Justice Ginsburg noted in her concurring opinion, issues of registration in the TTAB and those of infringement in the courts will rarely be identical, as ‘contested registrations are often decided upon “a comparison of the marks in the abstract and apart from their marketplace usage.”‘ From the practitioners’ standpoint, Section 2(d), likelihood of confusion, rejections by the TTAB have always been taken seriously; that is not likely to change. Evidence of marketplace usage presented in infringement litigation, however, has new significance.”

–Editing by Mark Lebetkin

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