In the wake of a recent United States Supreme Court decision B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. _____ (2015) (Slip Op.), there is now no doubt that the strategy decisions you make in brand enforcement efforts before the Trademark Trial and Appeal Board (TTAB), a federal administrative agency, may have a critical impact on the outcome of any later federal court infringement litigation. The Court made clear that the doctrine of “issue preclusion” can foreclose relitigation of the likelihood of confusion issue – the key test of trademark infringement -- in that federal court litigation.
Trademark owners often monitor other trademark filings to determine if and when another party is attempting to register a trademark that is confusingly similar to a trademark that they own. When the trademark owner identifies this situation, they need to make a strategy decision as to whether to a) challenge the attempted registration before the trademark office in the form of an opposition or cancellation proceeding, b) assert the challenge in a federal district court by filing suit for trademark infringement (Litigation), c) both; or (d) do nothing because, despite the similarity in the marks, the real world marketplace impact is minimal.
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