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B&B Hardware v. Hargis: Decision and Impact on Trademark Prosecution and Enforcement

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The U.S. Supreme Court in March 2015 has delivered a significant decision in B&B Hardware, Inc. v. Hargis Industries, Inc. The Court affirms that the Trademark Trial and Appeal Board (TTAB) rulings on the likelihood of confusion of trademarks may have a binding, preclusive effect on later Federal Court trademark infringement proceedings so long as the ordinary elements of issue preclusion are met, and the usages adjudicated by the TTAB are materially the same as those before a district court.

This case could substantially impact not only trademark enforcement strategies, but also the clearance of trademarks and prosecution strategies before the United States Patent and Trademark Office (USPTO).

In this two-hour LIVE Webcast, a panel of key thought leaders and practitioners assembled by The Knowledge Group will review the B&B Hardware v. Hargis case and will explain the significance and possible repercussions of the rulings and how brand owners can safeguard their trademarks in the future. Speakers will also provide best practices in developing and implementing effective trademark protection strategies to protect against infringement.

Key issues that will be covered in this course are:

B&B Hardware, Inc. v. Hargis Industries, Inc.
Trademark Trial and Appeal Board (TTAB) Rulings
Preclusive Effect: An Overview
Coverage and Limitation
U.S. Trademark Application
Likelihood of Confusion
Changes and Implications for Practitioners
Risks and Pitfalls in Trademarks
Infringement Mitigation Strategies

To view the webcast go to this link: https://youtu.be/aVox4JrSIkw

To learn more about the webcast please visit our website: http://theknowledgegroup.org

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B&B Hardware v. Hargis: Decision and Impact on Trademark Prosecution and Enforcement

  1. 1. Speaker Firms and Organization: Thank you for logging into today’s event. Please note we are in standby mode. All Microphones will be muted until the event starts. We will be back with speaker instructions @ 11:55am. Any Questions? Please email: info@theknowledgegroup.org Group Registration Policy Please note ALL participants must be registered or they will not be able to access the event. If you have more than one person from your company attending, you must fill out the group registration form. We reserve the right to disconnect any unauthorized users from this event and to deny violators admission to future events. To obtain a group registration please send a note to info@theknowledgegroup.org or call 646.202.9344. Presented By: October 05, 2016 1 Partner Firms: Cullen and Dykman Damias A. Wilson Attorney Collen IP James R. Hastings Of Counsel
  2. 2. October 05, 2016 2  Please note the FAQ.HELP TAB located to the right of the main presentation. On this page you will find answers to the top questions asked by attendees during webcast such as how to fix audio issues, where to download the slides and what to do if you miss a secret word. To access this tab, click the FAQ.HELP Tab to the right of the main presentation when you’re done click the tab of the main presentation to get back.  For those viewing the webcast on a mobile device, please note: o These instructions are for Apple and Android devices only. If you are using a Windows tablet, please follow the instructions for viewing the webcast on a PC. o The FAQ.HELP TAB will not be visible on mobile devices. o You will receive the frequently asked questions & other pertinent info through the apps chat window function on your device. o On Apple devices you must tap the screen anywhere to see the task bar which will show up as a blue bar across the top of the screen. Click the chat icon then click the chat with all to access the FAQ’s. o Feel free to submit questions by using the “questions” function built-in to the app on your device. o You may use your device’s “pinch to zoom function” to enlarge the slide images on your screen. o Headphones are highly recommended. In the event of audio difficulties, a dial-in number is available and will be provided via the app’s chat function on your device.
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  4. 4. October 05, 2016 4  If you are listening on a laptop, you may need to use headphones as some laptops speakers are not sufficiently amplified enough to hear the presentations. If you do not have headphones and cannot hear the webcast send an email to info@theknowledgegroup.org and we will send you the dial in phone number.  About an hour or so after the event, you'll be sent a survey via email asking you for your feedback on your experience with this event today - it's designed to take less than two minutes to complete, and it helps us to understand how to wisely invest your time in future events. Your feedback is greatly appreciated. If you are applying for continuing education credit, completions of the surveys are mandatory as per your state boards and bars. 6 secret words (3 for each credit hour) will be given throughout the presentation. We will ask you to fill these words into the survey as proof of your attendance. Please stay tuned for the secret word. If you miss a secret word please refer to the FAQ.Help tab to the right.  Speakers, I will be giving out the secret words at randomly selected times. I may have to break into your presentation briefly to read the secret word. Pardon the interruption.
  5. 5. October 05, 2016 5 Basic Annual Subscription – LIVE CLE Webcasts $199 (After Instant Discount) Pro Annual Subscription – LIVE CLE & Recorded Webcasts $299 (After Instant Discount) You get all these features:  Unlimited Access to LIVE CLE Webcasts & Materials PLUS  Free CLE Credit Processing  Unlimited Access to Course Materials for LIVE Webcasts  One-Click Registration  Free Webcast Calendar Organizer with Outlook Integration $16.58 per month (Billed Annually – $199) You get all these PRO features:  Unlimited Access to LIVE CLE Webcasts & Materials PLUS  Free CLE Credit Processing  Unlimited Access to Course Materials for LIVE Webcasts  One-Click Registration  Free Webcast Calendar Organizer with Outlook Integration  Unlimited Access to Recorded Webcasts & Materials $299 per year MobileCLE.org is simple to use: On any device, log into your mobileCLE.org account and choose a LIVE continuing legal education webcast or recorded/on-demand course using one of our many powerful search engines (by legal practice area or keywords such as Patent, FACTA, Data Privacy, eDiscovery etc.). Register for your CLE webcast by clicking the reserve button. On the day and time of your LIVE webcast, simply click Launch! and with 2 taps on your screen you’re earning CLE! Practice Areas: Administrative Law, Alternative Dispute Resolution, Antitrust, Appellate Litigation, Bankruptcy, Communications Law, Corporate Law, Employment/Labor Law, Environmental Law, Government Contracts Law, Health Law, Immigration Law, Intellectual Property Law, International Development Law, International Trade Law, Mergers and Acquisitions, National Security Law, Privacy Law, Real Estate Law, Securities Law, Sports/Entertainment Law, Tax Law, Trusts and Estates Law, and White Collar Crime To sign up: www.mobilecle.org
  6. 6. Partner Firms: October 05, 2016 6 Cullen and Dykman’s Intellectual Property attorneys regularly advise and represent clients on trademark and copyright issues. In addition to responding to the day-to-day trademark and copyright issues raised by our clients, such as advice on permissible website and social media content, domain name acquisition, and preparing and responding to cease and desist letters, this practice group is regularly involved in the prosecution of trademark registrations at the state and federal levels The Firm’s Intellectual Property group also handles administrative proceedings before the TTAB, domain name dispute resolution, and state and federal district court trademark, copyright, and unfair competition litigation. As a registered agent with the Trademark Clearinghouse, the Firm also assists its clients with the registration of their trademarks with the Clearinghouse. Such registration enables clients to secure new generic top level domains (“gTLDs”) on the Internet before these domains become available to the general public. Collen IP is a leading intellectual property law firm and business consultancy that advises and represents the interests of corporations and legal associates worldwide. The firm is recognized for its successes in launching brands, advising on marketing strategies, and protecting valuable intellectual property rights. Collen IP’s litigation team represents clients in a wide array of contested intellectual property proceedings in U.S. District Court, the U.S. Trademark Trial and Appeal Board, and domain name dispute proceedings before arbitration tribunals worldwide. It is recognized each year for having one of the most extensive dockets for trademark opposition and cancellation proceedings before the TTAB , and its lawyers have been featured in various national legal and business publications.
  7. 7. Brief Speaker Bios: Damias A. Wilson As an associate at Cullen and Dykman LLP, Mr. Wilson’s practice involves counseling clients from a wide range of industries on a variety of trademark, copyright, and trade secret matters. These matters include due diligence searches and advice on the selection and development of trademarks and trade names; prosecuting trademark applications and recording copyright registrations; developing internal policies and procedures regarding the protection and use of intellectual property; drafting coexistence and consent agreements, trademark and copyright licenses, IP security agreements, and confidentiality agreements; and enforcing and defending intellectual property rights in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, UDRP and URS domain name dispute resolution, and civil litigation. October 05, 2016 7 James R. Hastings James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for brand owners and companies who are seeking to protect their trademark in contested proceedings before the U.S. Trademark Trial and Appeal Board. James’s insight on trademark opposition cases has been featured in Corporate Counsel and the LXBN network of legal publications. James is an approved mediator of the International Trademark Association (INTA) Panel of Mediators, an alternative dispute resolution forum with approximately 150 mediators worldwide that works on behalf of INTA’s 6,500 member companies. ► For more information about the speakers, you can visit: https://theknowledgegroup.org/event-homepage/?event_id=1828
  8. 8. The U.S. Supreme Court in March 2015 has delivered a significant decision in B&B Hardware, Inc. v. Hargis Industries, Inc. The Court affirms that the Trademark Trial and Appeal Board (TTAB) rulings on the likelihood of confusion of trademarks may have a binding, preclusive effect on later Federal Court trademark infringement proceedings so long as the ordinary elements of issue preclusion are met, and the usages adjudicated by the TTAB are materially the same as those before a district court. This case could substantially impact not only trademark enforcement strategies, but also the clearance of trademarks and prosecution strategies before the United States Patent and Trademark Office (USPTO). In this two-hour LIVE Webcast, a panel of key thought leaders and practitioners assembled by The Knowledge Group will review the B&B Hardware v. Hargis case and will explain the significance and possible repercussions of the rulings and how brand owners can safeguard their trademarks in the future. Speakers will also provide best practices in developing and implementing effective trademark protection strategies to protect against infringement. Key issues that will be covered in this course are: • B&B Hardware, Inc. v. Hargis Industries, Inc. • Trademark Trial and Appeal Board (TTAB) Rulings • Preclusive Effect: An Overview • Coverage and Limitation • U.S. Trademark Application • Likelihood of Confusion • Changes and Implications for Practitioners • Risks and Pitfalls in Trademarks • Infringement Mitigation Strategies October 05, 2016 8
  9. 9. Featured Speakers: October 05, 2016 9 James R. Hastings Of Counsel Collen IP SEGMENT 2: Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  10. 10. Introduction As an associate at Cullen and Dykman LLP, Mr. Wilson’s practice involves counseling clients from a wide range of industries on a variety of trademark, copyright, and trade secret matters. These matters include due diligence searches and advice on the selection and development of trademarks and trade names; prosecuting trademark applications and recording copyright registrations; developing internal policies and procedures regarding the protection and use of intellectual property; drafting coexistence and consent agreements, trademark and copyright licenses, IP security agreements, and confidentiality agreements; and enforcing and defending intellectual property rights in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, UDRP and URS domain name dispute resolution, and civil litigation. October 05, 2016 10 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  11. 11. Deference to TTAB before B&B Hardware  Circuit Courts had differing approaches to the extent that TTAB decisions should be treated by Article III courts when deciding critical issues such as likelihood of confusion.  “Some courts will treat Trademark Board decisions as administrative judgments which carry full preclusive effect as to adjudicated facts, if these are the same facts which are in issue in the later court proceeding. Other courts will not give such judgments preclusive effect, but will give them some weight. Still other courts will recognize such judgments unless the contrary is established with thorough conviction.” 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:96 October 05, 2016 11 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  12. 12. Deference to TTAB before B&B Hardware The Eighth Circuit followed the rule established in Flavor Corp. of America v. Kemin Industries, 493 F.2d 275 (8th Cir.1974) that applying collateral estoppel requires a court to confirm “that some question or fact in dispute ha[d] been judicially and finally determined by a court of competent jurisdiction between the same parties or their privies.”  Issue preclusion could not apply because TTAB was not a court of competent jurisdiction. October 05, 2016 12 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  13. 13. Deference to TTAB before B&B Hardware The Second Circuit, in Jim Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729, 734 (2d Cir.1991) held, “the issue of likelihood of confusion in a cancellation proceeding may be different from the issue of likelihood of confusion in an action for infringement.”  The Second Circuit adopted the rule that before preclusive effect is given to a TTAB decision, the decision must be carefully examined to determine exactly what was decided and on what evidentiary basis. Any material differences would bar preclusion. October 05, 2016 13 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  14. 14. Deference to TTAB before B&B Hardware  The Third Circuit has not only recognized issue preclusion for TTAB decisions that are the primary or only grounds for deciding a proceeding, but also to alternative rulings of the TTAB. See Jean Alexander Cosmetics v. L'Oreal USA, 458 F.3d 244 (3rd Cir. 2006) (“We will follow the traditional view that independently sufficient alternative findings should be given preclusive effect.”). October 05, 2016 14 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  15. 15. B&B Hardware in the 8th Cir. Not only did the Eighth Circuit refuse issue preclusion, when it ruled on B&B Hardware, it refused to even enter the TTAB decision into evidence:  The Eighth Circuit upheld the district court’s determination that admission of the TTAB's decision “would be highly confusing and misleading to the jury.” October 05, 2016 15 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  16. 16. Procedural limitations of B&B Hardware: To Stay or to Review? “There are two reasons the facts in the B&B Hardware case were unusual: (1) the T.T.A.B. and the federal court in Arkansas were travelling along parallel paths at the same time to reach a decision and the T.T.A.B. rendered its judgment first. In the usual situation, one party would make a motion asking the T.T.A.B. to stay proceedings pending resolution in the court case and the T.T.A.B. would routinely grant the stay; (2) When Hargis lost the Opposition case before the Trademark Board, it neither appealed to the Federal Circuit nor did it file a suit for review of the decision in a federal District Court.” 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:97 October 05, 2016 16 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  17. 17. Procedural limitations of B&B Hardware: To Stay or to Review? Given the potential preclusive effect of a TTAB decision, some key considerations must now be weighed when deciding whether to request or agree to a stay of a TTAB proceeding pending the outcome of an infringement litigation:  Circuit splits and various tests and presumptions;  Whether use in commerce matches up with the registrations or applications in question;  Timing – what is the likelihood that an infringement claim will be filed imminently?  Cost / Efficiency October 05, 2016 17 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  18. 18. What other issues can the TTAB decide after B&B Hardware  In B&B Hardware, the court was reviewing a TTAB decision in an opposition hearing. The only issue that the court addressed in that case was likelihood of confusion. However, the TTAB rules on a number of issues that can also be critical in subsequent litigation. October 05, 2016 18 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  19. 19. What other issues can the TTAB decide after B&B Hardware?  Priority  Fraud  Validity and inherent strength of a trademark  Descriptiveness and secondary meaning  Disparagement  Abandonment October 05, 2016 19 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  20. 20. What other issues can the TTAB decide after B&B Hardware? PRIORITY  “Even assuming that B & B Hardware stands for the proposition that, when considering the issue of priority, courts must determine whether the actual use of a mark is the same as the use stated in a trademark application, Ashe has alleged no actual use of the mark other than those uses described in his trademark application. Consequently, in this case, the issue of priority decided by the TTAB was identical to the issue of priority presented to the district court.” Ashe v. PNC Financial Services Group, No. 15–2566, 2016 WL 3230703 (4th Cir. 2016). October 05, 2016 20 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  21. 21. What other issues can the TTAB decide after B&B Hardware? FRAUD  The issue of whether Defendant committed fraud on the USPTO is identical to the question considered by the TTAB in the prior proceeding. The issue was decided against Defendant in the prior proceeding, and the determination of fraud was critical and necessary to the TTAB's final decision. Nationstar Mortgage, LLC v. Ahmad, 155 F.Supp.3d 585 (ED Va. 2015) October 05, 2016 21 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  22. 22. What other issues can the TTAB decide after B&B Hardware? COMMERCIAL STRENGTH OF MARK  TTAB can decide the commercial strength of a mark and whether it is entitled to broad or narrow protection.  Based on a high number of similar registrations and common law uses, the TTAB “held that the ‘GRAND HOTELS NYC’ and ‘GRAND HOTEL’ trademarks were ‘sufficiently different to avoid the likelihood of confusion’ even though the only difference between the marks was ‘the inclusion of the geographic term NYC and the pluralization of HOTEL.’ Regency Hotel Management v. Shree Sai, CIV. 14-4033-KES, 2015 WL 12564735 (D. S.D. 2015). October 05, 2016 22 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  23. 23. What other issues can the TTAB decide after B&B Hardware? INHERENT STRENGTH OF MARK  Eastman Kodak does not, and was not intended to, place any limits on the Board's jurisdiction to decide, in the context of an ex parte appeal or opposition, issues of descriptiveness or misdescriptiveness where an intent-to-use application is involved. In re Berman Bros. Harlem Furniture Co., 26 U.S.P.Q.2d 1514 (T.T.A.B. 1993). October 05, 2016 23 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  24. 24. What other issues can the TTAB decide after B&B Hardware? SECONDARY MEANING While secondary meaning is wholly dependant on the realities of the marketplace, the TTAB has jurisdiction to make this determination when it finds that a mark is merely descriptive.  “[D]espite the broad advertising campaign for CRYSTAL GEYSER ALPINE SPRING WATER and the impressive sales figures, we do not find that ALPINE SPRING WATER has come to signify the commercial source of the product, but rather continues merely to inform the consumers about the nature of the product, particularly in an industry where consumers are accustomed to seeing the brand name and the designation of the type of bottled water in close proximity to each other.” In re Crystal Geyser Water Co., 85 U.S.P.Q.2d 137 (TTAB 2007). October 05, 2016 24 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  25. 25. What other issues can the TTAB decide after B&B Hardware? DISPARAGEMENT While the state of whether disparagement is a valid ground for rejecting a trademark registration is in flux, it remains an issue that can be decided by the TTAB, potentially with preclusive effect.  Pro-Football Inc. v. Blackhorse, 112 F.Supp.3d 439 (E.D. Va. 2015)  In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) October 05, 2016 25 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  26. 26. What other issues can the TTAB decide after B&B Hardware? ABANDONMENT  See Imperial Tobacco Ltd., Assignee of Imperial Group PLC v. Phillip Morris, 899 F.2d 1575 (Fed. Cir. 1990)(upholding TTAB’s grant of summary judgment cancelling a foreign company’s registration for lack of use in the United States). October 05, 2016 26 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  27. 27. Judicial Review of TTAB Decisions  The potential for preclusion on crucial issues such as likelihood of confusion increases the incentive for the losing party in a TTAB proceeding to seek judicial review of an adverse result.  A party can seek review of a TTAB decision on whether to register or cancel a registration either in the U.S. Court of Appeals for the Federal Circuit, or it can file an action in a federal district court.  Filing an action in district court allows the opportunity for additional discovery, and the court will decide the matter de novo. October 05, 2016 27 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  28. 28. Judicial Review of TTAB Decisions Courts reviewing a TTAB decision are clearly not precluded from deciding any issues that were adjudicated in the TTAB proceeding. See In re Cordua Restaurants, 823 F.3d 594 (Fed. Cir. 2016). October 05, 2016 28 Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
  29. 29. Introduction James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer for brand owners and companies who are seeking to protect their trademark in contested proceedings before the U.S. Trademark Trial and Appeal Board. James’s insight on trademark opposition cases has been featured in Corporate Counsel and the LXBN network of legal publications. James is an approved mediator of the International Trademark Association (INTA) Panel of Mediators, an alternative dispute resolution forum with approximately 150 mediators worldwide that works on behalf of INTA’s 6,500 member companies. October 05, 2016 29 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  30. 30. Overview 1. B&B Hardware and the TTAB- brief overview 2. How to Manage Trademark Enforcement budgets in light of B&B Hardware Decision 3. Early risk assessment techniques in light of B&B Hardware and its impact on trademark litigants 4. Alternatives to litigation, including Accelerated Case Resolution (ACR); Alternative Dispute Resolution (mediation); and party-to-party discussions. October 05, 2016 30 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  31. 31. Likelihood of Confusion B & B Hardware v. Hargis Industries (Supreme Court 2015)  Potential brand enforcement game-changer for in-house counsel and brand owners in likelihood of confusion cases  Could create a major impact on a brand owners’ determination as to which forum to bring a cause of action for likelihood of confusion – the TTAB or District Court  Filing an action in the TTAB may now carry greater weight and leverage in disputes between parties re: likelihood of confusion issues October 05, 2016 31 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  32. 32. B&B Hardware v. Hargis Industries (Supreme Court 2015) Holding: TTAB decisions concerning likelihood of confusion may have a preclusive effect in subsequent trademark infringement actions in U.S. District Court if the issue of likelihood of confusion/usages was previously adjudicated by the TTAB and is “materially the same” as the issues subsequently being raised in the district court. October 05, 2016 32 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  33. 33. Likelihood of Confusion B & B Hardware v. Hargis Industries (Supreme Court 2015) When will issue preclusion apply in the context of a TTAB finding regarding an issue of likelihood of confusion? A. Where ample evidence of marketplace use of the parties’ respective marks was considered. When will issue preclusion not apply? A. Where the mark owner uses its mark in a manner materially different than the usages in the application or registration or if the TTAB does not consider the parties’ marketplace usages when assessing a likelihood of confusion. October 05, 2016 33 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  34. 34. TTAB Likelihood of Confusion Factors In re E.I. du Pont de Nemours & Co. (CCPA 1973) 1. Similarity or dissimilarity of the marks 2. Similarity or dissimilarity of the goods/services 3. Similarity or dissimilarity of established trade channels 4. Conditions on which purchase is made 5. Fame of the prior mark 6. Number and nature of similar marks in use on similar goods October 05, 2016 34 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  35. 35. TTAB Likelihood of Confusion Factors (cont.) 7. Nature and extent of any actual confusion 8. Length of time where that has been concurrent use without any actual confusion 9. The variety of goods on which a mark is used or not used 10. Market interface between applicant and prior user 11. The extent to which applicant has right to exclude others 12. Extent of potential confusion 13. Any other probative facts In re E.I. du Pont de Nemours & Co. (CCPA 1973) October 05, 2016 35 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  36. 36. TTAB Likelihood of Confusion Factors Q. How does the TTAB consider the Dupont Factors in determining likelihood of confusion?  Analyzes all probative facts in evidence that bear on the factors of likelihood of confusion  No single factor is determinative  In any likelihood of confusion analysis, two key factors are the similarities between the marks and the similarities between the goods. Practice Tip: If you don’t have your evidence properly introduced, it could be excluded October 05, 2016 36 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  37. 37. TTAB Likelihood of Confusion Factors Similarity of Marks  The similarity or dissimilarity of goods or services of the marks at issue are considered in terms of appearance, sound, meaning, and overall commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En (Fed. Cir. 2005) October 05, 2016 37 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  38. 38. TTAB Likelihood of Confusion Factors Similarity of Goods and/or Services  Where the parties’ goods or services are the same, there is a presumption that they move in the same channels of trade and are available to the same class of consumers. Citigroup Inc. v. Capital City Bank Inc. 637 F.3d 1344 (Fed. Cir. 2011) October 05, 2016 38 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  39. 39. Likelihood of Confusion B & B Hardware v. Hargis Industries (Supreme Court 2015) The Dupont Factors relevant to marketplace usage: 3. Similarity or dissimilarity of established trade channels* 4. Conditions on which purchase is made 6. Number and nature of similar marks in use on similar goods 7. Nature and extent of any actual confusion* 8. Length of time where that has been concurrent use without any actual confusion October 05, 2016 39 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  40. 40. Likelihood of Confusion B & B Hardware v. Hargis Industries (Supreme Court 2015) Dupont Factors relevant to Marketplace Usage (cont.): 9. The variety of goods on which a mark is used or not used* 10. Market interface between applicant and prior user 12. Extent of potential confusion* October 05, 2016 40 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  41. 41. Brand Enforcement Budgeting Post B&B Hardware Brand enforcement factors to consider:  Monitoring and enforcing trademarks can get very expensive post B&B Hardware  Companies are seeking greater value from their business partners and well as outside law firms  Creating value can be accomplished through a holistic brand enforcement strategy October 05, 2016 41 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  42. 42. Brand Enforcement Budgeting Post B&B Hardware Holistic Brand Portfolio Strategy  Prioritize the trademark portfolio and establish tiers of importance based on sales, goodwill, importance to company’s performance and other quantitative and qualitative factors  For each trademark value tier, determine the types of third-party activities that will be monitored (e.g., applications, domain names, websites, etc.)  For each trademark, establish the criteria for how and when a third-party’s activities will trigger enforcement. October 05, 2016 42 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  43. 43. Brand Enforcement Budgeting Post B&B Hardware Impact of B&B Hardware on Brand Enforcement Budgets  Clients may out of economic necessity limit enforcement efforts to “Top Tier” trademarks and/or to be more selective in challenging third-party registration or use activities  Early case [risk] assessment will have to take place with more rigor and discipline to avoid undesirable outcomes and/or protracted and costly disputes  Alternative fee arrangements may have to be further explored with clients to ensure that annual brand enforcement budget projections align with actual expenditures October 05, 2016 43 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  44. 44. Brand Enforcement Budgeting Post B&B Hardware TTAB Filing Statistics (2015)  Oppositions filed: 5,290 (-4% from FY2014)  Extensions of time filed: 17,132 (-1% from FY 2014)  Ex parte appeals: 2,992 (+7% from FY 2014) October 05, 2016 44 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  45. 45. Brand Enforcement Budgeting Post B&B Hardware The Cost of Trademark Litigation  $202,000 through the end of discovery  $375,000 through the end of trial Source: AIPLA 2013 Study (amount in controversy less than $1M) October 05, 2016 45 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  46. 46. Brand Enforcement Budgeting Post B&B Hardware Litigation Budget Implications  TTAB proceedings will tend to get more expensive due to greater need to hire trademark survey experts to avoid issue preclusion impact of B&B Hardware  Consumer brand companies with strong trademarks may continue to make the TTAB a preferred forum due to TTAB’s greater emphasis on Dupont Factors of similarity of marks and similarity of goods October 05, 2016 46 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  47. 47. Early Case Assessment Post B&B Hardware Early case assessment (ECA) refers to estimating the risks, benefits, and likelihood of success of a legal case ECA Tips- Trademark Opposer/Plaintiff  Seek an incremental approach to communications with a trademark applicant that begins with the filing of an extension of time to file an opposition with the TTAB, followed-up by a frank but respectful letter to the Applicant  Estimate the risk tolerance of the Applicant to engage in a costly opposition proceeding and present settlement scenarios based in part on the Applicant’s ability to fund any litigation October 05, 2016 47 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  48. 48. Early Case Assessment Post B&B Hardware ECA Tips- Trademark Applicant/Defendant  Determine alternatives to being dragged into an opposition, including amending the application to narrow the identification of goods and/or consider expressly abandoning the applcation in consideration of the potential Opposer not contesting Applicant’s marketplace use  Investigate the strength of the potential Opposer’s marks including USPTO filing history and enforcement activities to determine if you have any viable affirmative defenses or counterclaims October 05, 2016 48 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  49. 49. ACR and ADR (Mediation) TTAB Dispute Resolution Alternative ACR- Accelerated Case Resolution  The purpose of ACR is to offer more efficient and less expensive alternatives to a full trial on the merits. ACR approximates a summary bench trial where the parties stipulate to the evidence.  TTAB average total case pendency Results (FY 2014) • 165.2 weeks (TTAB non-ACR cases) • 136.3 weeks (TTAB ACR cases) • Number of ACR cases decided (21) October 05, 2016 49 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  50. 50. ACR and ADR (Mediation) TTAB Dispute Resolution Alternative ADR- Trademark Mediation  The purpose of mediation is to offer the parties a collaborative forum for the parties to come together to discuss options to amicably resolve the TTAB dispute to avoid additional legal expense and risk.  INTA- Trademark Mediator’s Network includes approximaely 80 United States-based mediators.  Trademark mediation as opposed to arbitration is less rigorous and does not have formal discovery and/or proof submissions October 05, 2016 50 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  51. 51. Additional Practice Tips Trademark Applicants  1. If your trademark application is opposed based on a likelihood of confusion (Section 2d of the Trademark Act), the most relief that the Opposer can receive is an order from the TTAB refusing to register your trademark application.  2. That being said, if issues regarding the parties’ marketplace use are adjudicated in the TTAB and if you lose the case, be prepared for the Opposer to file an action in District Court seeking to enjoin your use of your trademark based on the grounds of issue preclusion October 05, 2016 51 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  52. 52. Additional Practice Tips Trademark Opposers Since the TTAB’s jurisdiction is limited to issues of registration only, you will have to decide if your trademark portfolio goals are primarily to keep the Trademark Registry clear of any registrations that are confusingly similar to your marks as used in connection with your goods and services.  If you think the trademark you are opposing could have serious marketplace confusion implications, it may be best to consider filing a trademark infringement action in federal or district court October 05, 2016 52 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  53. 53. Likelihood of Confusion B & B Hardware v. Hargis Industries (Supreme Court 2015) Final Thoughts to consider for in-house counsel and attorneys: ◦ If your client has a strong mark(s) with good arguments re: similarity of the parties’ marks and similarity of the goods, you may want to consider staying in the TTAB rather than the district courts. ◦ Make sure that you adequately take ample marketplace discovery in the TTAB and brief all issues related to Dupont likelihood of confusion factors. ◦ Educate your adversary re: favorable marketplace use implications should you prevail in the TTAB. October 05, 2016 53 James R. Hastings Of Counsel Collen IP SEGMENT 2:
  54. 54. October 05, 2016 54 Contact Info: Damias A. Wilson Attorney Cullen and Dykman E: dwilson@cullenanddykman.com P: 516.296.9175 James R. Hastings Of Counsel Collen IP E: jHastings@collenip.com P: 914-941-5668
  55. 55. ► You may ask a question at anytime throughout the presentation today. Simply click on the question mark icon located on the floating tool bar on the bottom right side of your screen. Type your question in the box that appears and click send. ► Questions will be answered in the order they are received. Q&A: October 05, 2016 55 James R. Hastings Of Counsel Collen IP SEGMENT 2: Damias A. Wilson Attorney Cullen and Dykman SEGMENT 1:
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  57. 57. October 05, 2016 57 ABOUT THE KNOWLEDGE GROUP The Knowledge Group is an organization that produces live webcasts which examine regulatory changes and their impacts across a variety of industries. “We bring together the world's leading authorities and industry participants through informative two-hour webcasts to study the impact of changing regulations.” If you would like to be informed of other upcoming events, please click here. Disclaimer: The Knowledge Group is producing this event for information purposes only. We do not intend to provide or offer business advice. The contents of this event are based upon the opinions of our speakers. The Knowledge Group does not warrant their accuracy and completeness. The statements made by them are based on their independent opinions and does not necessarily reflect that of The Knowledge Group‘s views. In no event shall The Knowledge Group be liable to any person or business entity for any special, direct, indirect, punitive, incidental or consequential damages as a result of any information gathered from this webcast. Certain images and/or photos on this page are the copyrighted property of 123RF Limited, their Contributors or Licensed Partners and are being used with permission under license. These images and/or photos may not be copied or downloaded without permission from 123RF Limited

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