TTAB Rulings on Registration May Trigger Preclusion in Infringement Cases


Joanne Ludovici, assessing the Supreme Court’s B&B Hardware ruling which held that an infringement standard applied by the Trademark Trial & Appeal Board (TTAB) was materially the same as that in a court proceeding, called it a middle-of-the-road approach in that the Court did not rule that the TTAB is always preclusive. Ms. Ludovici continued that the focus on a materiality standard may make it no longer be possible to use an opposition proceeding to “test the waters” before deciding whether to litigate in federal court. She predicted that this would likely result in fewer TTAB dispute proceedings regarding likelihood of confusion.