In 2015, the Supreme Court, in its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. (“B&B”), held that sometimes issue preclusion should apply to prior Trademark Trial and Appeal Board (“TTAB”) decisions. 135 S. Ct. 1293 (2015). Under this directive, if the TTAB decides the issue of “likelihood of confusion” when making a determination of trademark registrability in the context of an opposition or cancellation proceeding, such decision will, under certain circumstances, prevent further litigation of that issue in the future, including in a later federal court litigation. The practical effect of B&B – i.e, the circumstances under which issue preclusion will be applied – is still being refined. The Southern District of New York (“SDNY”) recently added to this refinement in Cesari S.R.L. v. Peju Province Winery, L.P (“Cesari”).
In Cesari, the SDNY applied B&B to hold that the TTAB’s finding, in an opposition proceeding, that a likelihood of confusion existed between Cesari’s trademark LIANO for wines and Peju Province’s trademark application LIANA for wines precluded Peju Province, but not its affiliates, from defending against Cesari’s federal court claim that confusion was likely for the same marks as applied on the parties’ goods in the marketplace. Continue Reading