CAFC Vacates TTAB's Summary Judgment in "BERKSHIRE" Res Judicata Case

Concluding that the TTAB erred in applying res judicata and collateral estoppel arising out of a prior district court litigation, the CAFC vacated and remanded a summary judgment dismissal of a Section 2(d) opposition involving the mark BERKSHIRE for various clothing items. Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 76 USPQ2d 1310 (Fed. Cir. 2005) [precedential].

In the opposition, filed in 1989, Mayer/Berkshire alleged a likelihood of confusion between Berkshire Fashion's mark BERKSHIRE for various items of apparel (class 25), and Mayer/Berkshire's identical mark registered in class 25. In December 2003, the Board granted summary judgment in favor of Berkshire Fashions, ruling that the issue of likelihood of confusion had been decided in an earlier civil action and could not be re-litigated.

The CAFC observed that "[c]aution is warranted in the application of preclusion by the PTO, for the purposes of administrative trademark procedures include protecting both the consuming public and the purveyors."

"Thus the party objecting to a registration may raise grounds not only of commercial injury to itself, but of confusion or deception or mistake to the consumer. The public policy underlying the principles of preclusion, whereby potentially meritorious claims may be barred from judicial scrutiny, has led courts to hold that the circumstances for preclusion 'must be certain to every intent.'"

Here, the appellate court found that the questions of likelihood of confusion "presented sufficiently different issues and transactional facts to bar the application of preclusion."

The CAFC cited TTAB precedent stating that "in Board proceedings, likelihood of confusion is determined independent of the context of actual usage. In an infringement action, on the other hand, the context of the use of the mark is relevant." In the district court action, the issue was whether Berkshire Fashion's marketing of specific products with either the BERKSHIRE mark or the Berkshire Fashions trade name was likely to cause confusion with the registered BERKSHIRE mark of Mayer/Berkshire. In the opposition, however, the Board must consider "not only what the applicant has already marketed or has stated the intention to market, but of all items for which registration is sought."

Here, the parties disputed the extent to which Berkshire Fashions' application embraced a broader list of goods than those considered by the district court. Mayer/Berkshire pointed out that the trial exhibits did not include any sweaters, vests, or pants, all of which are included in the opposed application. The CAFC observed that since the Board did not consider the additional goods in the application, that alone rendered summary judgment improper.

In addition, in the opposition Mayer/Berkshire offered evidence of actual confusion arising from "materially changed marketing practices" by Berkshire Fashions after the district court's decision. That, too, precluded summary judgment.

The CAFC therefore vacated the summary judgment and remanded the case to the TTAB for further proceedings

Text Copyright John L. Welch 2005