Say you’ve applied for a trademark and everything goes smoothly as your examining attorney approves the mark. So you wait through 30-day period when your trademark is published for opposition and hope no one challenges your mark. Unfortunately, a third party believes your trademark will cause a likelihood of confusion with its registered mark and, therefore, files a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB).
Now, let’s assume after a hard fought battle that the opposer/registrant wins the opposition and the TTAB determines that a likelihood of confusion exists. What consequences could the TTAB decision have beyond blocking the registration of your mark?
According to the recent U.S. Supreme Court case of B&B Hardware vs. Hargis Indus. (2015), a final decision by the TTAB on a factual or legal issue that was actually litigated can preclude a later ruling by a federal court on that same issue (i.e., “issue preclusion” or “collateral estoppel” in legalese). In B&B Hardware, the issue at stake was likelihood of confusion and so the TTAB’s final determination that it existed would preclude the parties from re-litigating that same issue later in federal court.
Both applicants and registrants will need to weight the pros and cons of pursuing a TTAB trademark opposition, particularly if the determination of an issue such as confusion could possibly end differently in federal court (analysis focuses on use in the marketplace) versus the TTAB (analysis focuses on the marks themselves including the products identified therein).