Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States.
As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution, success, jurisdiction) to consider, weigh and balance. Dabblers probably best step aside.
Now, thanks to the recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc., we must factor in the likelihood of preclusion too, throughout the trademark life cycle.
After noting that “the idea of issue of preclusion is straightforward,” but admitting it “is challenging to implement,” the Court broadly held that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.” (emphasis added)
This broad holding begs the question of what other types of issues decided by the TTAB — beyond the likelihood of confusion question before the Court — may result in the application of issue preclusion. Priority? Inherent Distinctiveness? Genericness? Functionality? Descriptiveness? Acquired Distinctiveness? Fame? Dilution? Intent to Deceive? Bona Fide Intent to Use? Fraud? Intent to Deceive the USPTO? Intent to Resume Use? Abandonment? Laches? Deceptiveness for False Advertising? False Suggestion of Connection for Right of Publicity Violations?
As to the likelihood of confusion question (which the Court found to be fundamentally the same for registration and infringement purposes), the Court unclearly directed: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.” (emphasis added) As is typical when the Supreme Court speaks, more questions are raised than answered.
Does the Court contemplate anything other than the potential for unregistered common law rights and restricted channels of trade when it refers to “usages adjudicated by the TTAB”? What about applications and registrations for typed drawing marks versus stylized marks? What about the presence of house marks and/or famous trade dress on packaging, but not included in the drawing of the applied-for mark? What about goods listings that are appropriate under USPTO rules (e.g., jewelry), but broader than what might be in actual use to support the registration or application (e.g., lapel pins)? Does a cautious following of B&B Hardware counsel in favor of seeking to register narrower trademark claims that include only the stylized version of a mark used with the sleekest description of goods possible?
Exactly what does the Court mean by materially the same usages? Does it contemplate partial preclusion scenarios? Does the materially the same reference invoke the material alteration standard? Does it invoke the “can’t materially differ” standard in trademark tacking cases? If so, under Hana Financial, doesn’t that question go to a jury? Yet, in B&B Hardware (argued to the Supreme Court on the very same day as Hana Financial), the Court wasn’t troubled by the absence of juries in TTAB decisions.
Perhaps most notably, the word “should” appeared twenty-six times in the majority opinion of the Supreme Court’s B&B Hardware decision, and the word “shall” only appeared five times (each of the five references related to specific statutory language), leaving me to ask, must a district court apply issue preclusion when the Supreme Court thinks it should, when the Court specifically avoided use of the words shall and must? In other words, is the decision of preclusion left to the sound discretion of the district court?
One of the other million dollar unanswered question remains: How does one predict the likelihood of preclusion?
For those looking for absolute certainty, don’t clear and adopt a mark for use you can’t federally register, don’t apply to register a mark likely to be opposed unless you can win and you’re prepared to see it though, don’t start defending an opposition if you aren’t prepared to see it through, but if you do and lose, by all means take a de novo appeal to federal district court if you’re a losing opposer who may want to force the use to stop, or if you’re a losing applicant who wants to keep using the applied-for mark.
For the rest of us who are comfortable living with some level of uncertainty, it’s time to read the tea leaves with a view to predicting not only likelihood of confusion, but the likelihood of preclusion too.