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TTAB Decisions Past: Will They Come Back to Haunt You in Federal Court?
When a dispute arises between parties regarding the use and registrability of a trademark, counsel often must weigh the facts and circumstances to advise a client whether it would be best to commence an action in the PTO's Trademark Trial and Appeal Board (“TTAB”) or file suit in federal court. In some cases however, counsel will find a client in the midst of a TTAB proceeding ' or worse ' after an unfavorable decision has been rendered against the client in an opposition or cancellation proceeding. In such situations, counsel must assess what preclusive effect, if any, the prior administrative decision may have in a subsequent trademark infringement action in federal district court.
As an initial matter, a distinction must be drawn between the doctrines of issue preclusion and claim preclusion. Issue preclusion, sometimes referred to as collateral estoppel, prevents parties from relitigating issues that were actually raised, tried and decided in a previous action. The majority of jurisdictions, including the Second Circuit, have held that issue preclusion is applicable where: 1) the issue decided in the prior adjudication was identical to the issue presented in the second action; 2) the first adjudication resulted in a final judgment on the merits; 3) the party against whom the claim is asserted was either a party, or in privity with a party, to the prior adjudication; and 4) the party against whom the claim is asserted had a full and fair opportunity to litigate the issues in the prior adjudication. See J. McCarthy, Trademarks and Unfair Competition, '32:84 (4th Ed. 2004); Levy v. Kosher Overseers Assoc. of America, Inc., 104 F.3d 38, 41 (2d Cir. 1996).
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.