Claim Preclusion and Nonuse Block "ERA 8 BY LAMAR JACKSON" Trademark Application

Baltimore Ravens quarterback Lamar Jackson (who wears number "8") was tackled for a loss in his attempt to register the mark ERA 8 BY LAMAR JACKSON for "athletic bags; backpacks; duffel bags; sport bags; carry-on bags; travelling bags," in International Class 18 and "bottoms as clothing; footwear; headwear; tops as clothing; undergarments," in International Class 25. Claim preclusion knocked him down as to most of the goods, and as to the rest (carry-on bags and travelling bags), the Board piled on by finding that Jackson hadn't used the mark for those goods prior to filing his use-based application. New Era Cap, LLC v. Lamar Jackson, Opposition No. 91264801 (August 27, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Claim Preclusion: Under the doctrine of claim preclusion (or res judicata), "'a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.'" Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000)(quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322). For claim preclusion to apply, there must be: 

(1) identity of parties (or their privies); 

2) an earlier final judgment on the merits of a claim; and

(3) a second claim based on the same set of transactional facts as the first claim.

A prior opposition was brought by New Era against Jackson, alleging priority and likelihood of confusion based on a number of registrations for NEW ERA, in standard character and stylized form, and other ERA-formative marks. The prior opposition involved the identical mark ERA 8 BY LAMAR JACKSON and nearly the same goods as in the instant opposition. Jackson failed to serve and file an Anwer to the notice of opposition, and so judgment was entered by default against Jackson on September 28, 2019.

The Board agreed with Jackson that claim preclusion does not apply to the goods "added" into the new application: namely, carry-on bags and travelling bags. New Era did not cite any case law applying claim preclusion to goods in a subsequent application that were not encompassed by the goods identified in the prior application.

Jackson also argued that his professional achievements since the default judgment was entered in the prior opposition represented a material change in circumstances, such that New Era did not show that the new opposition rose from the same set of transactional facts as the prior one. [According to Jackson, the strength of his mark had increased, but the Board pointed out that the DuPont analysis considers the strength of the cited mark, not the "applied-for" mark]. "Since the prior default, Mr. Jackson has also achieved high ranking sales of his No. 8 jersey, reached 3.2 million social media followers and registered his word and design mark featuring a wild dog design and the words 2018 ERA 8 BY LAMAR JACKSON 2018." The Board was unmoved.

Here, we do not find a material change in the facts relevant to the claim of likelihood of confusion. As detailed above, except for the newly added goods (which we conclude are not subject to claim preclusion), the Prior Opposition involved the same parties (or their privies), the same mark, and the same goods, and resulted in a judgment by default, which operates as a judgment on the merits. This Application was filed approximately six months after default judgment was entered in the Prior Opposition. Evidence in the record indicates that Mr. Jackson’s upward trajectory was well in motion in September 2019 when the default judgment was entered.

The Board concluded that Jackson failed to show a material change in circumstances that would alter the likelihood of confusion analysis in this proceeding from the prior opposition.

Jackson claimed that he didn't receive notice of the default in the prior opposition, but the Board pointed out that he can't rely on a lack of communication from prior counsel. "While such circumstances may be relevant to a [timely] request for relief under Fed. R. Civ. P. 60(b) in the Prior Opposition, they do not negate the finality of the earlier judgment for purposes of claim preclusion here."

Nonuse: Jackson admitted during discovery that he never used the subject mark on athletic bags, backpacks, duffle bags, sport bags, carry-on bags, or traveling bags. Nonuse was also supported by his "failure to proffer any affirmative testimony or documentary evidence, such as purchase orders or invoices, showing that it sold or shipped any athletic bags, backpacks, duffel bags, sport bags, carry-on bags or travelling bags under the mark as of the filing date."

And so, the Board ruled that Jackson's application to register was void ab initio as to all of the bags listed therein, based on nonuse at the time the application was filed.

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Text Copyright John L. Welch 2026.