What can go wrong if you lose a TTAB trademark case?

What are the consequences of losing a TTAB trademark opposition or cancellation?

So you have applied to register a trademark and everything has proceeded smoothly so far as your examining attorney has approved the mark. You now wait through 30-day period when your trademark is published for opposition and hope no one challenges your mark. Unfortunately, a third party believes there is a likelihood of confusion between your trademark and their mark. So the third party files a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). What could go wrong if you lose a TTAB trademark case?

Let’s assume after a hard fought battle that the TTAB determines that a likelihood of confusion exists. Would a TTAB trademark loss have any implications beyond the abandonment of your trademark application? What consequences or further liabilities could the TTAB decision have beyond blocking the registration of your mark?

What is issue preclusion or collateral estoppel?

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).

Why does estoppel or preclusion matter if you lose a TTAB trademark case?

TTAB oppositions and cancellations do not deal with the issue of infringement, i.e., a party’s right to use a trademark or to stop others from using the same. TTAB proceedings deal with only the issue of registration. Trademark owners must sue in court, usually at the federal district court level, to stop another party from using a similar mark and to seek money damages.

A prior TTAB victory, therefore, can clear a major hurdle in a subsequent litigation focused on the usage of the mark. The flip side of the coin is that a prior unsuccessful result at the TTAB can prevent a trademark owner from subsequently seeking a different result in court.

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