The U.
Issue Preclusion: Plaintiff LFI argued that issue preclusion should bar Defendant from litigating whether its mark is likely to cause confusion, since the Board found that "because the marks are similar, the goods are related and the goods move in the same channels of trade and are sold to the same classes of consumers, [LCC's] mark
The Second Circuit observed that:
As a general matter, issue preclusion "applies when (1) the issues in both proceedings are identical, (2) the issue in the prior proceeding was actually litigated and actually
decided, (3) there was a full and fair opportunity for litigation in the prior proceeding, and (4) the issues previously litigated were necessary to support a valid and final judgment on the merits.
The
Id. at 160. However, "if the TTAB does not consider the marketplace usage of the parties' marks, the TTAB's decision should 'have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.'" Id. at 156-57 (quoting McCarthy on
The district court wisely concluded that issue preclusion does not apply here because, at the time of the TTAB's decision, defendant had not yet entered the U.S. market. [Defendant's registration issued under Section 66(a) of the Lanham Act, not Section 1(a))].
Therefore, all of the marketplace usage at issue here occurred after the TTAB's decision. *** [W]hether there is a likelihood of confusion in this action depends considerably on the actual marketplace usage of both LFI's and LCC's marks. With respect to the factor of similarity between the
In this civil action, Plaintriff LFI relies in part on Defendant's use of its "
[A] reasonable jury could find that the factor of actual confusion in the marketplace weighs
in favor of LFI or LCC. Because the issues in this case turn on actual marketplace usage not
considered by the TTAB, issue preclusion does not apply. See B&B Hardware, 575 U.S. at 154 ("[F]or a great many registration decisions issue preclusion obviously will not apply because the ordinary elements will not be met.").
Denial of the Cross-motions: Running through the Second Circuit's Polaroid factors, the district court explained that three of the factors - (1) strength of mark (2) similarity of the marks and (3) competitive
proximity - involve triable issues of fact. And so the Board denied the summary judgment motions.
The TTABlog
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