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United States Supreme Court Rules that TTAB Decisions as to Likelihood of Confusion May Be Binding on Courts

March 2015

When a party attempts to register a trademark, any other party may object to the mark’s registration by filing an opposition proceeding before the Trademark Trial and Appeal Board (TTAB). A party may also file a lawsuit in court for trademark infringement. The TTAB only has the power to determine issues of whether a trademark or service mark can be federally registered, and, unlike the Courts, does not have the power to issue injunctions prohibiting use of a mark or award damages or fees to a prevailing party. However, in both types of proceedings, the tribunal asks whether one mark so resembles another as to be likely to cause confusion, or to cause mistake, or to deceive. This is known as a likelihood of confusion.

Prior to March 24, 2015, there was no preclusive effect of a TTAB ruling (whether it occurred in a TTAB cancellation proceeding, opposition proceeding, or during the registration process) that one trademark should be barred from being registered because of a likelihood of confusion upon a Court that was considering the same issue in the context of a trademark infringement lawsuit. This is because the settled law had determined that the context through which the TTAB was determining “likelihood of confusion,” i.e. by determining whether the marks resemble each other (such as by looking at the look, sound, and feel of the mark and the goods and services listed in a registration or application) was different from how courts would consider the issue, which mainly focused on the parties’ actual usage of the respective marks. In the case of B&B Hardware, Inc. v. Hargus Industries, Inc., which was decided on March 24, the Supreme Court held that “if a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation.”

The Supreme Court limited its holding only to those instances where a party’s use of the mark was materially similar to the goods or services identified in an application or registration. Thus, “if a mark owner uses its mark in ways that are materially unlike the usages in its application, then the TTAB is not deciding the same issue” and its decision would not be binding on a Court.

The Supreme Court did state, however, that this holding would only be applicable in states whose Circuit court applied similar factors in considering a “likelihood of confusion” as the factors applied by the TTAB, in that case the Eighth Circuit, which governs Arkansas, Iowa, Minnesota, Missouri, Nebraska, North Dakota and South Dakota. Because both the Second Circuit (governing New York, Connecticut and Vermont) and the Third Circuit (governing New Jersey, Pennsylvania, Delaware and the Virgin Islands) also, in our view, apply similar factors, we believe that the Supreme Court’s decision will likely apply to cases in our region as well.

What do you need to take away from this?

TTAB proceedings are now more important than ever because in some instances its rulings as to likelihood of confusion may be binding on a Court, whereas they never were before. This may lead to a greater amount of TTAB decisions being appealed to Federal Courts.

Additionally, whether or not a TTAB ruling will be binding on a Court will need to be determined on a case-by-case basis, involving very fact specific issues; this will inevitably increase the costs of litigating trademark issues.

To discuss how this holding may affect your trademark rights, please contact your Wolff & Samson PC attorney or the authors below. 

Ronald L. Israel | Member of the Firm, Trademark Litigation Group | | (973) 530-2045

Peter E. Nussbaum | Co-chair, Intellectual Property Group | | (973) 530-2025

Abigail J. Remore | Associate, Intellectual Property Group | | (973) 530-2114

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