The 2015 Supreme Court ruling in B&B Hardware, Inc. v. Hargis Industries means that the Trademark Trial and Appeal Board (TTAB) will get a lot more attention and resources than they have in the past. Previously, the TTAB was often viewed as nothing more than a first bite at the apple. Losing an opposition proceeding might be automatically be followed by a District Court action claiming infringement. But the Supreme Court has now held that a TTAB ruling has a “preclusive effect” on subsequent actions in federal court. No second bite at the apple.
There is, however, an exception. The Supreme Court did state that “for a great many registration decisions issue preclusion obviously will not apply because the ordinary elements [of issue preclusion] will not be met.” For example, issue preclusion will not apply if the way the marks are used in the marketplace is different from the marks as registered and viewed by the TTAB in the abstract. In cases where the TTAB does not “consider the marketplace usage of the parties’ marks” the way federal courts consider marketplace realities, the TTAB’s decision will not have a binding effect on a subsequent infringement action. But an adverse decision is an adverse decision and no one wants to have to argue that a different set of evidence is now suddenly relevant.
So, if you are going to the TTAB, you will want to have all your ducks in a row. And one likely effect of all this that we have already seen is an increase in the use of surveys in TTAB proceedings.