Applying B&B Hardware, District Court Gives Preclusive Effect to TTAB Priority Finding
Applying collateral estoppel (i.e., issue preclusion) based on a prior TTAB decision [TTABlogged here], the United States District Court for the District of Maryland granted Defendant PNC's motion to dismiss Plaintiff's Ashe's complaint for trademark infringement. The Board had granted PNC's motion for summary judgment in an opposition brought by Ashe against PNC's application to register the mark SPENDOLOGY for an online financial management tool, ruling that PNC and not Ashe had priority of use. The district court applied the Supreme Court's holding in B&B Hardware v. Hargis that "a court should give preclusive effect to [Trademark Board] decisions if the ordinary elements of issue preclusion are met." Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November 17, 2015).
The district court found that the determination of priority of use by the TTAB in an opposition is the same as the determination of priority of use for purposes of an infringement claim. Furthermore, that issue was resolved in the TTAB proceeding, the issue was critical and necessary to the TTAB's judgment, the judgment was final, and Ash has a full and fair opportunity to litigate the issue before the Board. Thus all five requirements for issue preclusion were met.
Because priority is a necessary element of Ashe's infringement claim, the Board granted PNC's motion to dismiss.
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TTABlog comment: Ownership is another issue that seems to be ripe for the application of issue preclusion. So even if issue preclusion is unlikely to result from a TTAB ruling on the issues of likelihood of confusion because the Board does not consider "marketplace usage," one should be aware that the Board's determination of ownership and priority may well have preclusive effect. Consequently, a party should be give those issues its full attention and maximum effort.
Text Copyright John L. Welch 2015.