TTAB Rulings on Trademark Infringement Cases: Preclusion Explored in 2015
Intellectual property is an increasingly disputed and contentious aspect of commerce. The U.S. Supreme Court’s second trademark decision in 2015 in B&B Hardware, Inc. v. Hargis Industries, Inc., affirms that Trademark Trial and Appeal Board (TTAB) rulings on the likelihood of confusion of trademarks may have a binding, preclusive effect on later Federal Court trademark infringement proceedings.
During the dispute over the Sealtite®™ trademark, B&B contested that the TTAB's decision should be given preclusive effect under the Lanham Act. Although, rejected by the district court, B&B's appeal to the Circuit Court of Appeals was affirmed then subsequently reversed by the High Court. The Court did not rule that all TTAB decisions are preclusive; only that preclusion was possible in some cases. Hence subsequent decisions will be decided independently. However, the definition of 'materially the same' remains unclear.
This decision is significant for trademark opposition and litigation strategy. TTAB proceedings could become more costly and less streamlined, where the losing party might be compelled to seek a review of the decision to avoid the preclusive effect of the ruling.
There are various ways for litigants to avoid preclusion. For example, material differences between how a trademark is depicted when registered and how it is used in commerce may be sufficient to avoid preclusion. Meanwhile, it may be prudent to treat TTAB proceedings only as potentially preclusive of federal infringement litigation, unless material differences in usage are beyond dispute.
The Knowledge Group has assembled a panel of key thought leaders and practitioners to provide a two-hour LIVE Webcast to review the most recent cases in trademark dispute and to discuss the TTAB Rulings on Trademark Infringement Cases, with emphasis upon Preclusion. Speakers will explain the significance and possible repercussions of the rulings and how brand owners can safeguard their trademarks in the future. Speakers will also provide best practices in developing and implementing effective trademark protection strategies to protect against infringement.
Key issues that will be covered in this course are:
- Trademark Trial and Appeal Board (TTAB) Rulings
- The Lanham Act
- Preclusive Effect: An Overview
- Federal Trademark Infringement
- B&B Hardware, Inc. v. Hargis Industries, Inc.
- Coverage and Limitation
- U.S. Trademark Application
- Likelihood of Confusion
- Changes and Implications for Practitioners
- Risks and Pitfalls in Trademarks
- Infringement Mitigation Strategies
Alexandra MacKay, Member
Stites & Harbison, PLLC
- Elements of Preclusion
- Impact of B&B v Hargis on TTAB cases
- Future challenges to preclusive effect of TTAB cases based on comments in B&B v Hargis opinion?
Robert Cruzen, Partner
Klarquist Sparkman, LLP
- History of whether agency proceedings have preclusive effects on litigation.
- Comparison to preclusion issues in related intellectual property areas.
- Tips for practitioners.
James Hastings, Of Counsel
- How to manage trademark enforcement and TTAB litigation budgets after B&B Hardware
- Early risk assessment techniques for trademark opposition cases
- The use of mediation as part of an overall trademark opposition dispute resolution strategy
Brendan O'Rourke, Partner
Proskauer Rose LLP
- Has B&B Hardware Gone to the TTAB’s Head? A Look at the Aftermath
- Vacating a TTAB Decision is Harder than You Think (University of Alabama v. Houndstooth Mafia)
- A Finding in Federal Court of Validity and Infringement Apparently Does Not Rule Out a Later Challenge in the TTAB (SnoWizard v. Snow Ball’s Chance)
Who Should Attend:
- Private Counsel
- In-House Counsel
- General Counsel
- IP Attorneys and Consultants
- Senior Management
- Trademark Lawyers
- Other Related/Interested Professionals
Alex MacKay counsels clients in litigation and transactional matters involving intellectual property. She assists clients with the selection, adoption and registration of their trademarks as well as registration of copyrights. Alex represents clients in the enforcement of their intellectual property rights and has practiced before federal and state courts as well as the Trademark Trial and Appeal Board. She assists clients with a variety of transactional issues including those related to licensing of copyrights, trade secrets, trademarks and other intellectual property rights. Alex is listed in Best Lawyers in America®, Super Lawyers, IP Stars® and was selected as Lawyer of the Year in 2015 in Nashville, Tennessee for Copyright Law. Alex also routinely authors blog posts on www.trademarkology.com, which was recognized by the ABA Journal as the #1 blog in the category of Intellectual Property in the publication’s eighth annual “Blawg 100” for 2014.
Alex MacKay counsels clients in litigation and transactional matters involving intellectual property. She assists clients with the selection, adoption and …
Mr. Cruzen’s practice focuses on intellectual property litigation, including actions for patent infringement, trademark infringement, copyright infringement, and trade secret misappropriation.
Mr. Cruzen practiced appellate and intellectual property litigation at Howard Rice Nemerovski Canady Falk & Rabkin in San Francisco from 1999-2003 and 2005-2007 before joining Klarquist. He served as a law clerk in the chambers of the United Nation’s International Criminal Tribunal for Rwanda in 2004 through the ICTR internship program.
Mr. Cruzen’s practice focuses on intellectual property litigation, including actions for patent infringement, trademark infringement, copyright infringement, and trade secret …
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for brand owners and companies who are seeking to protect their trademark in contested proceedings before the U.S. Trademark Trial and Appeal Board. James’s insight on trademark opposition cases has been featured in Corporate Counsel and the LXBN network of legal publications. James is an approved mediator of the International Trademark Association (INTA) Panel of Mediators, an alternative dispute resolution forum with approximately 150 mediators worldwide that works on behalf of INTA’s 6,500 member companies.
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for …
Brendan O'Rourke is a nationally recognized Trademark and Advertising litigator. He is a partner and co-chair of Proskauer's Litigation Department, as well as co-head of the False Advertising & Trademark Group. Brendan is a "go to" first-chair trial lawyer. He provides day-to-day trademark, false advertising, and Lanham Act counseling to Fortune 500 companies, sports & entertainment industry clients, as well as start-ups and entrepreneurs. His experience includes all phases of trademark and false advertising counseling and litigation, including complex issues involving consumer survey research and claim substantiation, and inter parties proceedings before the U.S. Trademark Trial and Appeal Board and the Federal Circuit. Brendan is recognized by Chambers USA for both his trademark and advertising litigation practice, and Institutional Investor Magazine's Benchmark Litigation survey recognized Brendan as one of New York State's "litigation stars." He has chaired INTA's Leadership Meeting, Advanced Forum on the Trademark Law and Revisions Act, INTA's third annual "Trademarks in Cyberspace" forum, and other prominent trademark law conferences. Brendan received his JD from Fordham University School of Law and his BA, cum laude, from Boston College.
Brendan O'Rourke is a nationally recognized Trademark and Advertising litigator. He is a partner and co-chair of Proskauer's Litigation Department, …
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About Stites & Harbison, PLLC
A full-service law firm representing clients across the U.S. and internationally, Stites & Harbison, PLLC is known for managing sophisticated transactions, challenging litigation, and complex regulatory matters on a daily basis. The firm represents a broad spectrum of clients including multinational corporations, financial institutions, manufacturing companies, high-tech businesses, healthcare organizations, pharmaceutical companies, nonprofit organizations, private companies, and individuals. With 10 offices across the Southeast region, the firm make every effort to thoroughly understand each client's business and objectives in order to provide innovative solutions and exceptional client service. Learn more at www.stites.com.
About Klarquist Sparkman, LLP
With a history of 74 years, Klarquist is one of the oldest and largest full-service intellectual property boutique firms in the Northwest. Klarquist professionals offer clients both technical expertise and legal experience in all facets of intellectual property acquisition, licensing, and litigation in virtually any area of technology.
About Collen IP
Collen IP is a leading intellectual property law firm and business consultancy that advises and represents the interests of corporations and legal associates worldwide. The firm is recognized for its successes in launching brands, advising on marketing strategies, and protecting valuable intellectual property rights. Collen IP’s litigation team represents clients in a wide array of contested intellectual property proceedings in U.S. District Court, the U.S. Trademark Trial and Appeal Board, and domain name dispute proceedings before arbitration tribunals worldwide. It is recognized each year for having one of the most extensive dockets for trademark opposition and cancellation proceedings before the TTAB , and its lawyers have been featured in various national legal and business publications.
About Proskauer Rose LLP
Proskauer is a global law firm recognized for its excellence both in practicing law and serving clients. Our roots go back to 1875, when we were founded in New York City. With 700+ lawyers in 13 offices and approximately 50 areas of practice, we have the capabilities, experience and creativity to guide our clients through their most important legal and business challenges.
Our nationally-recognized and interdisciplinary Intellectual Property practice has particular strength in trademarks, advertising, patents and copyrights. In 2014, we were one of a select group of firms named in the National Law Journal’sannual “IP Hot List.” We have also been named a “Go-To Law Firm®” for Intellectual Property, one of an “exclusive group of firms that deliver exceptional work for the FORTUNE 500®,” according to American Lawyer Media. We are ranked Tier 1 by Chambers and Partners for our Advertising Litigation practice.