More than three months ago, we sounded the alarm about an important trademark case to consider the interplay between the right to register and the right to use a trademark:

“Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm.

If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of us who care deeply about the enforcement and protection of brands and trademarks could be facing a real paradigm shift.

The SG’s amicus brief encourages the Supreme Court to review the case, and it seems likely the Court will do so. If so, let’s hope the Court is flooded with thoughtful amicus briefs to help it get this important issue right. At a minimum, INTA should weigh in as a friend of the court.”

By way of follow-up to that discussion, the Supreme Court has agreed to decide the B&B Hardware case, it is hearing oral arguments on December 2, 2014, and I’m pleased to report that we weren’t the only ones recognizing the importance of having the Supreme Court reach the right answer to this question: “The impact (if any), of a prior win or loss (on the issue of likelihood of confusion) at the USPTO’s Trademark Trial and Appeal Board (TTAB) on a later federal district court trademark infringement case involving the same marks and parties.”

Although the Court wasn’t “flooded” with amicus briefs, it does appear to have received four briefs from some heavy-hitter amici:

The SG’s amicus brief, as well-written as it is, fails to appreciate the very limited scope of TTAB jurisdiction, the full extent of its unique practices and procedures in deciding likelihood of confusion for purposes of registration, and unfortunately the influential SG takes the following misguided position (without respecting the TTAB’s own view of its limited jurisdiction, much less appreciating the negative impact that the threat of preclusion will have by necessarily escalating the stakes, intensity and expense of administrative Board proceedings going forward):

“When the Board concludes in an opposition proceeding that a likelihood of confusion does or does not exist with respect to particular usages, that determination precludes relitigation of the likelihood of confusion question in a subsequent infringement action between the same parties for the same usages.”

IPLAC’s amicus brief oddly concluded:

“[T]he Supreme Court should be aware as follows: (1) a significant dichotomy exists in the nature of cases resolved by the Trademark Trial and
Appeal Board, (2) TTAB cases routinely function as typical federal litigation cases, with discovery and trial, pursuant in part to the Federal Rules of Civil
Procedure and Evidence, and (3) the Seventh Amendment may be implicated and trump any other consideration in the case.”

AIPLA’s amicus brief eschewed a bright line test, noting preclusion is possible, but rare:

“AIPLA respectfully requests that the Court clarify that a TTAB decision on likelihood of confusion can, in appropriate and narrow circumstances, have a preclusive effect, and that if a TTAB decision is denied preclusive effect because the issue is not the same, then no deference is due. However, deference may be appropriate where a TTAB decision is denied preclusive effect for other reasons.”

INTA’s amicus brief correctly concluded a bright line test is appropriate, no preclusion:

“INTA urges this Court to rule that: (1) TTAB determinations on the likelihood of confusion do not have preclusive effect in subsequent civil court proceedings; and (2) district courts should determine, on a case-by-case basis, whether, and to what extent, TTAB’s determinations should be afforded deference, but such deference should be limited to fact issues that were identical and fully litigated and should not prevent a party from offering other evidence and arguments that may nevertheless compel a different result.”

In my opinion, INTA’s amicus brief is the only one to score an A. INTA’s amicus brief did a very impressive job of communicating the clear difference between how likelihood of confusion is addressed at the TTAB in determining the right to register, as compared to how likelihood of confusion is addressed in federal courts across the country — with brand owners having far more at stake in the latter, including injunctive relief, damages, and attorneys fees.

What I don’t recall seeing in any of the amici briefs is the impact on likelihood of confusion in deciding requests to register standard character marks at the USPTO, a potentially much broader right than those acquired through actual use in commerce. (I double-checked, and it appears there is one small reference in AIPLA’s brief, and none in the other amici briefs). In any event, my experience is that the vast majority of oppositions and cancellations involve standard character marks of at least one of the parties, so it seems like a point worth making.

Simply stated, being denied a request for a broader registered right does not automatically warrant a finding of infringement. As we’ve said before: “[J]ust because a brand owner is denied the right to register doesn’t necessarily mean that actual infringement has occurred, injunctive relief is appropriate, or monetary relief is warranted.”

It seems to me that the TTAB’s frequent focus on the registration of standard character marks, in oppositions and cancellations, reinforces INTA’s point about how the TTAB decides likelihood of confusion “on paper” at the USPTO as opposed to how a federal district court finds likelihood of confusion in “the real world” with the specific marks in use in their full and complete marketplace context:

  • If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007).
  • The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).
  • A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely “reasonable manners” of depicting such mark. See In re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
  • Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
  • Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986).

With this well-settled precedent governing most TTAB cases, it should become more and more clear that proving likelihood of confusion at the TTAB to prevent another from being able to register a standard character mark doesn’t necessarily mean that infringement should be assumed or that it can even be established in federal district court, based on the actual market conditions of the specific trademark uses of the parties.

How do you see the Supreme Court deciding this important case for brand owners who enforce their trademark rights or have their right to register challenged at the TTAB?