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TTAB Decisions Past: Will They Come Back to Haunt You in Federal Court?

By Andrea L. Calvaruso

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).

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