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TTAB Ruling Precludes Subsequent Litigation (as Predicted)

The Supreme Court ruled in B&B Hardware, Inc. v. Hargis Industries that a TTAB ruling can have (in certain cases) a “preclusive effect” on subsequent actions in federal court (see earlier blog entry here.) Some commentators had expected that this would have only limited effect because it required that the fact pattern be essentially similar and because the issues of registration that the USPTO dealt with were different from the marketplace realities that are relevant in Federal Court.

But the Supreme Court’s ruling on issue preclusion has already had an impact. In Ashe v. PNC Financial Services, the District Court dismissed Ashe’s claims of priority of use of the “Spendology” mark because the TTAB had previously ruled that PNC was the first user of the mark. In its ruling, the Court cited the B&B Hardware decision as the basis for barring Ashe’s claims noting that Ashe had “had a full and fair opportunity to litigate the issue or fact in the prior proceeding.” Note that the original TTAB decision in Ashe preceded the Supreme Court’s B&B Hardware decision, so changing case law can have an impact on cases already in the system. And even more reason to be careful how cases are dealt with at the TTAB.