[E-trademarks] Can a TTAB default prevent future applications for the same trademark

[Pamela Chestek]

I don't see how it would prevent an application - what would be the 
mechanism? But the same plaintiff can file an opposition and would win 
if the elements of claim preclusion are met.

> Syllabus
>
> [*138]  [**1297]  Respondent Hargis Industries, Inc. (Hargis), tried 
> to register its trademark for SEALTITE with the United States Patent 
> and Trademark Office pursuant to the Lanham Act. Petitioner, B&B 
> Hardware, Inc. (B&B), however, opposed registration, claiming that 
> SEALTITE is too similar to B&B's own SEALTIGHT trademark. The 
> Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should 
> not be registered because of the likelihood of confusion. Hargis did 
> not seek judicial review of that decision.
>
> Later, in an infringement suit before the District Court, B&B argued 
> that Hargis was precluded from contesting the likelihood of confusion 
> because of the TTAB's decision. The District Court disagreed. The 
> Eighth Circuit affirmed, holding that preclusion was unwarranted 
> because the TTAB and the court used different  [***230] factors to 
> evaluate likelihood of confusion, the TTAB placed too much emphasis on 
> the appearance and sound of the two marks, and Hargis bore the burden 
> of persuasion before the TTAB while B&B bore it before the District Court.
>
> Held: So long as the other ordinary elements of issue 
> preclusion [****2]  are met, when the usages adjudicated by the TTAB 
> are materially the same as those before a district court, issue 
> preclusion should apply. Pp. 147-160, 191 L. Ed. 2d, at 235-243.
>
> (a) An agency decision can ground issue preclusion. The Court's cases 
> establish that when Congress authorizes agencies to resolve disputes, 
> “courts may take it as given that Congress has legislated with the 
> expectation that [issue preclusion] will apply except when a statutory 
> purpose to the contrary is evident.” Astoria Fed. Sav. & Loan Assn. v. 
> Solimino, 501 U. S. 104, 108, 111 S. Ct. 2166, 115 L. Ed. 2d 96. 
> Constitutional avoidance does not compel a different conclusion. Pp. 
> 147-151, 191 L. Ed. 2d, at 235-238.
>
> (b) Neither the Lanham Act's text nor its structure rebuts the 
> “presumption” in favor of giving preclusive effect to TTAB decisions 
> where the ordinary elements of issue preclusion are met. Astoria, 501 
> U. S., at 108, 111 S. Ct. 2166, 115 L. Ed. 2d 96. This case is unlike 
> Astoria. There, where exhausting the administrative process was a 
> prerequisite to suit in court, giving preclusive effect to the 
> agency's determination in that very administrative process could have 
> rendered the judicial suit “strictly pro forma.” Id., [*139]  at 111, 
> 111 S. Ct. 2166, 115 L. Ed. 2d 96. By contrast, registration involves 
> a separate proceeding to decide separate rights. Pp. 151-153, 191 L. 
> Ed. 2d, at 238-239.
>
> (c) There is no categorical reason why registration decisions can 
> never meet the ordinary elements of issue [****3]  preclusion. That 
> many registrations will not satisfy those ordinary elements does not 
> mean that none will. Pp. 153-160, 191 L. Ed. 2d, at 239-243.
>
> (1) Contrary to the Eighth Circuit's conclusion, the same 
> likelihood-of-confusion standard applies to both registration and 
> infringement. The factors that the TTAB and the Eighth Circuit use to 
> assess likelihood of confusion are not fundamentally different, and, 
> more important, the operative language of each statute is essentially 
> the same.
>
> Hargis claims that the standards are different, noting that the 
> registration provision asks whether the marks “resemble” each other, 
> 15 U. S. C. §1052(d), while the infringement provision is directed 
> toward the “use in commerce” of the marks, §1114(1). That the TTAB and 
> a district court do not always consider the same [**1298]  usages, 
> however, does not mean that the TTAB applies a different standard to 
> the usages it does consider. If a mark owner uses its mark in 
> materially the same ways 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. For a similar reason, the Eighth Circuit erred in holding 
> that issue preclusion could not apply because the TTAB relied [****4]  
> too heavily on “appearance and sound.” Pp. 154-158, 191 L. Ed. 2d, at 
> 239-242.
>
> (2) The fact that the TTAB and  [***231] district courts use different 
> procedures suggests only that sometimes issue preclusion might be 
> inappropriate, not that it always is. Here, there is no categorical 
> “reason to doubt the quality, extensiveness, or fairness,” Montana v. 
> United States, 440 U. S. 147, 164, n. 11, 99 S. Ct. 970, 59 L. Ed. 2d 
> 210, of the agency's procedures. In large part they are exactly the 
> same as in federal court. Also contrary to the Eighth Circuit's 
> conclusion, B&B, the party opposing registration, not Hargis, bore the 
> burden of persuasion before the TTAB, just as it did in the 
> infringement suit. Pp. 158-159, 191 L. Ed. 2d, at 242-243.
>
> (3) Hargis is also wrong that the stakes for registration are always 
> too low for issue preclusion in later infringement litigation. When 
> registration is opposed, there is good reason to think that both sides 
> will take the matter seriously. Congress' creation of an elaborate 
> registration scheme, with many important rights attached and backed up 
> by plenary review, confirms that registration decisions can be weighty 
> enough to ground issue preclusion. Pp. 159-160, 191 L. Ed. 2d, at 243.
>
> 716 F. 3d 1020, reversed and remanded.
>
>
>
B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138, 138-139 (2015).

> Claim preclusion, historically known as res judicata, prevents a party 
> from litigating a matter that should have been litigated in an earlier 
> proceeding. See generally 18 Charles Alan Wright et al., Federal 
> Practice and Procedure § 4402 (3d ed. 2018). Claim preclusion applies 
> when three elements are met: "(1) there is identity of parties (or 
> their privies); (2) there has been an earlier final judgment on the 
> merits of a claim; and (3) the second claim is based on the same set 
> of transactional facts as the first." Nasalok Coating Corp. v. Nylok 
> Corp., 522 F.3d 1320, 1324 (Fed. Cir. 2008) (quoting Jet, Inc. v. 
> Sewage Aeration Systems, 223 F.3d 1360, 1362 (Fed. Cir. 2000)). When 
> wielded against the defendant from the first action, claim preclusion 
> applies "only if (1) the claim or defense asserted in the second 
> action was a compulsory counterclaim that the defendant failed to 
> assert in the first action, or (2) the claim or defense represents 
> what is essentially a collateral attack on the first judgment." Id. 
> (citing Baker v. Gold Seal Liquors, Inc., 417 U.S. 467, 469 n.1, 94 S. 
> Ct. 2504, 41 L. Ed. 2d 243 (1974)). Claim preclusion can apply 
> against [**7]  the defendant even if the first judgment was a default 
> judgment. Id. at 1329-30 (collecting cases).
>

Maksimuk v. Connor Sport Court Int'l, LLC, 771 Fed. Appx. 1001, 1004 
(Fed. Cir. 2019).

Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal
www.chesteklegal.com


On 12/12/2024 5:05 PM, Annette Heller via E-trademarks wrote:
>
>
> On a cruise so cannot do research but need an answer for a current 
> settlement case. Would appreciate any case cites if available,
>
> Thanks. Annette Heller
> Sent from the all new AOL app for iOS 
> <https://apps.apple.com/us/app/aol-news-email-weather-video/id646100661>
>
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