Partner Dyan Finguerra-DuCharme was featured in the Law360 article, “Attorneys React To Supreme Court's TTAB Preclusion Ruling.” 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. Dyan addresses the significance of the decision in B&B Hardware Inc. v. Hargis Industries Inc.

“The decision leaves open more questions rather than providing clear guidance. A party often chooses to not present the same evidence before the TTAB that it would present in federal court because the TTAB has been quite clear that it only looks to the identification of goods in the registration and application and presumes that a standard character mark can appear in any stylization. Now litigants are in a quandary - do they submit marketplace usage to the TTAB or do they stick to arguments around the identified goods and hope that the decision will not be given preclusive effect? Does the TTAB have to consider marketplace usage even if it broadens or narrows the identified goods? How does the TTAB treat visual and commercial impression similarities if the application and registration are in standard character form yet the stylization of the respective marks in the marketplace are clearly distinctive and different? When is actual usage not the paramount issue in an infringement case? The practical effect of the court’s decision is likely an uptick in declaratory judgment actions and the suspension of pending opposition proceedings. If litigants are going to spend more money on the issue of confusion, they might as well do so in federal court where they can take advantage of live testimony and broader survey designs.”

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