In Juice Generation, Inc. v. GS Enterprises, LLC (Case No. 2014-1853), the Federal Circuit reversed a decision by the Trademark Trial and Appeal Board (No. 91206450) that sustained an opposition brought by GS Enterprises against Juice Generation’s attempt to register the mark “PEACE LOVE AND JUICE.” The Federal Circuit remanded for further consideration, finding that the TTAB “did not adequately address the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks.”
Juice Generation operates a chain of juice bars in New York City. It attempted to register the mark “PEACE LOVE AND JUICE” with the USPTO in connection with juice bar services (disclaiming “juice”).
GS Enterprises has four registered trademarks in the restaurant services class that incorporate the words Peace and Love–“P & L PEACE & LOVE,” “ALL YOU NEED IS PEACE & LOVE,” “PEACE & LOVE,” and “P & L PEACE & LOVE NEW YORK.” Examples of two of its marks are shown below:
GS Enterprises filed an opposition to Juice Generation’s application, arguing that the “PEACE LOVE AND JUICE” mark created a likelihood of confusion.
The TTAB considered the 13 DuPont factors in analyzing the likelihood of confusion. It first found that Juice Generation had been using its mark for years without evidence of actual confusion, but it discounted this factor because it did not think that there had been “meaningful opportunities” for actual confusion to occur given the parties’ use of their marks.
The Board next looked to the dominant feature of Juice Generation’s mark (PEACE LOVE) and found it was virtually identical to GS Enterprise’s “PEACE & LOVE” mark.
The Board also looked to at least 26 examples of 3rd parties using similar combinations of Peace and Love in their marks–e.g., “PEACE LOVE AND PIZZA,” “PEACE LOVE YOGURT,” and “PEACE, LOVE & BEER,” but did not find that there was sufficient evidence to show that consumers recognized that other entities were using similar terms in their marks.
On balancing this evidence, the TTAB concluded the there was a likelihood of confusion with consumers and sustained GS Enterprises’ opposition.
The Federal Circuit Vacates and REmands
The Federal Circuit was clearly troubled by the conclusions the TTAB reached. It first noted that likelihood of confusion is a legal conclusion that it reviews de novo, and that it is to be analyzed using the 13 DuPont factors.
The Federal Circuit was concerned by the TTAB’s failure to place much weight in the numerous examples of other marks that used the words “PEACE” and “LOVE” together with other terms. The Court found these examples to be “powerful” evidence that GS Enterprises’ marks were not strong on their face. With so many similar marks, there was substantial prima facie evidence that GS Enterprises marks were not strong. As a result, the Federal Circuit remanded the case to the TTAB to conduct a more thorough analysis of the strength of GS Enterprises’ mark in light of these numerous similar marks.
The Federal Circuit finally noted that the TTAB improperly considered just a portion of Juice Generation’s mark–the PEACE LOVE part–without considering whether the mark as a whole might convey a meaning distinct from GS Enterprises’ marks. As a result, the Federal Circuit also remanded for the TTAB to provide a more thorough analysis of the mark as a whole.
The Supreme Court handed down a decision today in B&B Hardware, Inc. v. Hargis Industries, Inc. (No. 13-352), in which it reversed an Eighth Circuit ruling regarding whether a decision by the Trademark Trial and Appeal Board (TTAB) during an opposition proceeding that there was a likelihood of confusion between two marks could have a preclusive effect in a subsequent trademark infringement lawsuit in a district court. In a 7-2 decision, authored by Justice Alito, the Supreme Court held that in certain circumstances, final decisions by the TTAB can preclude re-litigation of those issues in later forums. Justices Thomas and Scalia dissented, stating that they did not think that TTAB decisions should have preclusive effects.
B&B Hardware registered its trademark “SEALTIGHT” with the USPTO in 1993, which was used with threaded and unthreaded metal fasteners and other related hardware. In 1996, Hargis sought to register its own mark, “SEALTITE” for self-piercing and self-drilling metal screws. B&B Hardware opposed the registration, contending that the marks were confusingly similar.
Although not described in detail, the Court noted that the parties had been involved in disputes before the USPTO and courts in the Eighth Circuit for the last twenty years, including three trips to the Eighth Circuit and two jury verdicts in infringement actions.
Relevant to this case, the parties were before the TTAB on an opposition proceeding brought by B&B Hardware. B&B Hardware successfully argued to the TTAB that the USPTO should not register the SEALTITE mark because it was confusingly similar to its SEALTIGHT mark. While the Lanham Act provides that a decision of the TTAB can be appealed to either a district court or the Federal Circuit, Hargis declined to seek any judicial review, and the decision of the TTAB to not allow registration of the SEALTITE mark became final.
While the opposition proceeding was occurring, B&B Hardware brought a trademark infringement action against Hargis in district court. Once the TTAB decision became final, B&B Hardware argued before the district court that Hargis could no longer contest the issue of likelihood of confusion based on the doctrine of issue preclusion. The district court disagreed, and a jury ultimately concluded that there was no likelihood of confusion. The Eighth Circuit affirmed.
The Supreme Court ultimately reversed both the Eighth Circuit and the district court.
The Supreme Court’s Decision
Issue preclusion is a doctrine that prohibits the redetermination of issues in a later action that have been finally decided in a prior action. In general, it applies “[w]hen an issue of law or fact is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.”
In deciding whether issue preclusion could apply to a TTAB decision, the Court first concluded that issue preclusion is not limited to proceedings involving two courts. It is possible that agency decisions (such as a TTAB decision) can be given preclusive effects unless Congress clearly indicates otherwise. In this case, the Court found that Congress did not indicate in the Lanham Act that TTAB decisions should not be given preclusive effect, so it concluded that issue preclusion is potentially available.
Next, the Court considered whether the TTAB and the district court were, in fact, deciding the same issue in order for issue preclusion to be available. It reviewed the standards applied by both tribunals and concluded that the same likelihood-of-confusion standard applies to both the registration of marks and the question of infringement.
Hargis argued that issue preclusion should not apply because the TTAB considers whether the marks “resemble” each other, while the district court considers how the marks are used in commerce, and that these are different tests. The Court rejected that argument, stating that while the two tribunals may not consider the same usage of the marks, that did not mean that they applied different standards to the usage. It is at this point that the Court noted some important limitations on whether a TTAB decision could be given preclusive effect:
If a mark owner uses its mark in ways that are materially the same 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. By contrast, if a mark owner uses its mark in ways that are materially unlike the usages in its application, then the TTAB is not deciding the same issue. Thus, if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should “have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.” 6 McCarthy §32:101, at 32–246.
In addition, the Court reiterated that if the TTAB considers a different mark than is at issue in the litigation or has decided a different issue than is before the district court, there can be no issue preclusion.
Because Hargis decided not to appeal the TTAB decision, it was a final judgment. And, because the likelihood of confusion issue was the same in both tribunals, the Court concluded that issue preclusion applied. Thus, the Court reversed the Eighth Circuit and remanded the case.
Issues not decided by the Supreme court
There were a couple of issues that the Court touched on, but did not rule because either the parties had not preserved the issues or they had not been adequately presented. In both instances, the majority noted that the constitutional issues were not before it, but it seems unlikely from what was said that they would have been successful even if they had been.
For instance, the Court noted that it has never had the occasion to determine whether issue preclusion from an agency decision violates the separation of powers in Article II and III of Constitution. In addition, the Court indicated that Hargis failed to preserve a Seventh Amendment challenge that giving preclusive effect to an non-jury, agency decision denied it a right to a jury.
It will be interesting to see if those challenges are raised with more care in future cases before the Court.
As seems to be typical in intellectual property cases before the Supreme Court, the Court did not set down a bright-line rule. The Court held that in some appropriate circumstances, decisions by the TTAB can be given preclusive effect in subsequent litigation in Article III courts. The Court caveated its determination, though, so litigants in the TTAB will need to carefully consider what the risks might be if they do not seek judicial review of a TTAB decision in either a district court or before the Federal Circuit. This uncertainty will likely give rise to more challenges to TTAB decisions, especially where there is a risk that those decisions have aspects that are similar to issues being raised in court (such as likelihood of confusion).
For further discussion of this case, the Likelihood of Confusion blog has some good coverage.
Last month, the USPTO issued new rules and provided information that will be useful to trademark practitioners. In May 2011, the USPTO published the third edition of the TTAB Manual of Procedure (TBMP), which is the first update since 2004. The latest edition “incorporates all case law, statutory changes, and changes to the Trademark Rules of Practice and Federal Rules where applicable as of November 15, 2010.” The complete version can be downloaded here. Trademark practitioners before the Trademark Trial and Appeal Board (TTAB) will need to review the changes and become familiar with these new rules.
In addition, building on its successful patent dashboard, the USPTO launched a trademarks dashboard. This dashboard, in the USPTO’s Data Visualization Center, provides up-to-date information about trademark filings at the USPTO, such as the average time to the first action, average total pendency of an application, number of applications, and other relevant statistics. This information will allow trademark attorneys to better inform their clients of the delays they may face in filing for a trademark. The USPTO now has three dashboards (patent, trademark, and policy and external affairs) that provide current statistics for the public, which builds on Director Kappos’ goal of providing more transparency about USPTO procedures.