Courts should give preclusive effect to TTAB decisions: USSC

The Supreme Court of the United States held that a court should give preclusive effect to Trademark Trial and Appeal Board (TTAB) decisions in a suit for trademark infringement if the ordinary ele­ments of issue preclusion are met.

“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”, the Court said.

The Petitioner in this case argued that the Respondent is precluded from contesting the likelihood of confusion because of the TTAB’s decision in their favor. TTAB ruled that Respondent’s trademark application for SEALTITE should not be registered because of likelihood of confusion with Petitioner trademark SEALTIGHT.

The Court said neither the Lanham Act’s text nor its structure rebuts the “presumption” in favor of giving preclusive effect to TTAB decisions where the ordinary elements of issue preclusion are met.

Contrary to the Eighth Circuit’s conclusion, the Court said that “the same likeli­hood of confusion standard applies to both registration and infringe­ment. The factors that the TTAB and the Eighth Circuit use to as­sess likelihood of confusion are not fundamentally different, and, more important, the operative language of each statute is essentially the same.”

“That the TTAB and a district court do not always consider the same usages, however, does not mean that the TTAB applies a different standard to the us­ages it does consider. If a mark owner uses its mark in materially the same ways as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation”, the Court added.

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