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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).
Claim preclusion, on the other hand, “prevents the subsequent litigation by either party of any ground of recovery that was available in the prior action, whether or not it was actually litigated or determined.” Jim Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729, 736 (2d. Cir. 1991). For example, under New York law, claim preclusion is applicable where: 1) the prior judgment was rendered by a court of competent jurisdiction; 2) there was a final judgment on the merits; 3) the second action involves the same cause of action as the prior adjudication; and 4) the second action involves the same parties to the prior adjudication or those in privity with them. See Herendeen v. Champion International Corp., 525 F.2d 130, 133 (2d Cir. 1975); see also McCarthy, supra at '32:82 (three elements necessary for claim preclusion include: identity of parties or those in privity with them, earlier final judgment on the merits of the claim, and second claim based on the same set of transitional facts as the first) (citing Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360 (Fed. Cir. 2000)).
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Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
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