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“A dramatic year” for trademark cases in the United States

It’s been a busy year for U.S. trademark litigation. Michael Loney previews Wednesday’s Annual Review of federal case law and TTAB developments.

Brush up on your knowledge of recent U.S. litigation this week in the ever-popular Annual Review of U.S. Federal Case Law and TTAB Developments session. Ted Davis of Kilpatrick Townsend & Stockton will be analyzing recent big decisions in the U.S. courts and John Welch of Lando & Anastasi will be analyzing decisions from the Trademark Trial and Appeal Board (TTAB).

The speakers have a lot to pack in. “It really has been a very dramatic year in the case law,” Davis told the INTA Daily News.

Three Supreme Court decisions

Since last year’s INTA meeting the Supreme Court has released three decisions related to trademarks, two of which have come this term. These are POM Wonderful v. Coca Cola in June 2014, Hana Financial v. Hana Bank in January 2015 and B&B Hardware v. Hargis Industries in March 2015. Davis says this term is the first time since 1963 that there have been two cases related to trademark issues within the same term

Hana was the “easiest opinion of the three,” says Davis. The Supreme Court held that the question of whether two trademarks may be tacked for purposes of determining priority is a question for the jury. Davis says this was “very much a sleeper issue” and not something many trademark lawyers were focused on before the Court took it on.

Davis describes the POM Wonderful opinion as the “next easiest.” The Supreme Court held that competitors may bring Lanham Act claims like POM’s challenging food and beverage labels regulated by the FDCA. This opinion was also narrow, and did not resolve what happens in other industries with labels that need to comply with regulations, such as pesticides, alcohol or pharmaceuticals.

There could be an impact within the food and beverage industry, though. “Not all courts were as receptive to that bar on false advertising suits as was the Ninth Circuit but I think it will lead to some additional litigation outside of the industry as plaintiffs try to figure out if it does extend beyond that limited context,” says Davis.

The “big one,” however, is the B&B Hardware opinion, says Davis. The Court held that so long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a district court, issue preclusion should apply.

“It is an opinion that has caused a good deal of excitement,” says Davis, “and I am not sure why because the Court in this case merely adopted the rule that has been in place for over a decade in the Second Circuit, and for about eight years in the Third Circuit.”

The holding made clear that there are some circumstances in which a TTAB determination of the likelihood of confusion between two marks can have a preclusive effect on the later district court litigation.

“If you’ve been advising your clients that a Board opinion on that issue cannot have a preclusive effect, what you’ve been doing is gambling that your client would not get sued in the Second Circuit or the Third Circuit,” says Davis. “So you’ve been gambling that your client would not get sued in the Southern District of New York, the Eastern District of New York, the District of Delaware, the Eastern District of Pennsylvania, among others, and those are pretty popular jurisdictions for lawsuits.”

The opinion does overturn the rule in the Fifth, Eleventh and DC Circuits, however.

TTAB news

The biggest news out of the TTAB in the past year was its cancellation of six federal trademarks that include the term REDSKINS. “It is still a hot topic,” Welch told the INTA Daily News.

Welch says the case and the recent Federal Circuit ruling that Asian American band THE SLANTS could not register a trademark for its name for a trademark have brought the issue of what is disparaging or not to the fore.

The REDSKINS case is pending before the District court of Virginia. A trial is scheduled for June but both sides have filed for summary judgement. A problem for the Native American team has been the statute requires analysis of the mark on the day of registration in 1990, making it hard to prove.

“I think the Native Americans now have some evidence that covers that problem. So that will be interesting,” says Welch. “My prediction is that the Court of Appeals will find it disparaging and I think it is going to go to the Supreme Court. That one and/or THE SLANTS, or both, are going to go to the Supreme Court on the first amendment question, I think. It is teed up now.”

The Annual Review of U.S. Federal Case Law and TTAB Developments session takes place between 10.15am and 11.30am on Wednesday

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