INTA Files Proposed Amicus Brief in Peju's Appeal: SDNY Erred in Applying Issue Preclusion Based on TTAB Decision

The International Trademark Association (INTA) has filed a proposed amicus brief with the U.S. Court of Appeals for the Second Circuit in Peju's appeal from the decision of the U.S. District Court for the Southern District of New York in Cesari S.R.L. v. Peju Province Winery L.P., Civil Action No. 17 Civ. 873 (NRB) (S.D.N.Y. Dec. 11, 2017) [pdf here]. The district court granted Plaintiff Cesari's motion for partial summary judgment on its trademark infringement claim, ruling that preclusion applied to the issue of likelihood of confusion based on a 2004 TTAB decision. In its brief, INTA states: "In light of B & B Hardware and this Court’s precedents, the District Court erred by applying issue preclusion to justify its refusal to consider such evidence." The proposed amicus brief may be downloaded here.

 

INTA's brief supports neither party and it takes no position on whether "the proffered marketplace distinctions would be sufficient to avoid confusion in the case at issue," Rather, "INTA urges this Court to rule that, under B & B Hardware, a prior TTAB decision based on a likelihood of confusion should be given preclusive effect only where, the TTAB received, considered, and resolved the dispute based on evidence of actual marketplace usage—which is not the case here."

Read comments and post your comment here.

TTABlogger comment: Previous TTABlog discussions of the Peju case may be found here and here.

Text Copyright John L. Welch 2024.