United States: Federal Circuit Finds No Bar to TTAB Opposition After Final Decision in District Court Infringement Action

Noting the many important distinctions between trademark infringement actions and trademark oppositions, the U.S. Court of Appeals for the Federal Circuit has held that failure in one does not automatically preclude pursuing the other.Mayer/Berkshire Corp. v. Berkshire Fashions, Case No. 04-1254 (Fed. Cir. Sept. 22, 2005) (Newman, J.).

Berkshire Fashions sought to register the mark BERKSHIRE in class 18 (tote bags, umbrellas, etc.). Meyer/Berkshire opposed and, at the same time, sued Berkshire Fashions for infringing its BERKSHIRE mark issued in class 25 (clothing). At trial, the jury found no likelihood of confusion arising out of Berkshire Fashion’s use of the BERKSHIRE mark, and the district court entered a judgment of non-infringement. Following the district court’s lead, the Trademark Trial and Appeal Board (TTAB) dismissed Meyer/Berkshire’s opposition and registered Berkshire Fashions’ BERKSHIRE mark in class 18.

Berkshire Fashions then filed a new application in class 25 to cover clothing. The application was initially refused based on Mayer/Berkshire’s previous registrations but later passed to publication (after the examiner was instructed to consider the implications of the district court litigation).

Mayer/Berkshire filed an opposition, and the TTAB granted summary judgment in favor of Berkshire Fashions, finding the district court had already decided that no confusion existed between the marks, and, therefore, applying res judicata and collateral estoppel, the issue could not be relitigated in the opposition.

The Federal Circuit reversed. It held that, for res judicata and collateral estoppel purposes, infringement and cancellation/opposition proceedings are different; they involve different burdens and different proofs, and they implicate different public policies. Moreover, Meyer/Berkshire had offered evidence that Berkshire Fashions had changed its marketing since the district court action, causing additional confusion, and its application covered goods that were not specifically considered in the litigation. The Court held that these facts further justified not giving the district court judgment preclusive effect because preclusion must be applied only in cases where it is "certain to every intent" (that is, where it applies beyond a reasonable doubt).

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