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January/February 2016
In This Issue
2015 U.S. Trademark Developments Every Food and
Beverage Lawyer Should Know
Patent Claim Construction One Year after Teva –
Navigating Uncertainty
King & Spalding News
PLI’s Intellectual Property Rights Enforcement 2016
Program
King & Spalding Maintains Multiple Top-Tier
Rankings in Chambers Asia-Pacific 2016
Save the Date - 2016 Cybersecurity & Privacy Sum-
mit – Moving From “Issue Spotting” To
Implementing A Mature Risk Management Model
Asian Pacific American Bar Association of Silicon
Valley Mixer
2015 U.S. Trademark Developments Every
Food and Beverage Lawyer Should Know
Kathleen E. McCarthy
In 2015, U.S. courts provided trademark practition-
ers with several issues to discuss and debate.
Identified and summarized below are the top five
most discussed issues.
1. The Effect of TTAB Decisions on District
Court Actions
Will the 2015 U.S. Supreme Court B&B Hardware
v. Hargis1 decision affect strategies for handling
trademark opposition and cancelation proceedings
in the Trademark Trial and Appeal Board (TTAB)
of the U.S. Patent and Trademark Office (USPTO)?
Assume you file an application seeking to register a
trademark. A competitor opposes your application
and the TTAB eventually rules in favor of your op-
ponent, finding that your mark is likely to cause
confusion with your opponent’s mark and cannot be
registered.
The TTAB does not have the power to enjoin your
use of the mark, but if your opponent decides to sue
you for infringement in the U.S., will the adverse
TTAB decision be binding in court? Before 2015,
different circuits handled the issue in different
ways.
The Court held that the TTAB determination of
likelihood of confusion could preclude re-litigation
of the issue in a federal court infringement action,
so long as the other ordinary elements of issue pre-
clusion are met,2 and the trademark usages
1 B & B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct.
1293 (2015).
2 Issue preclusion applies when an issue is actually litigated
and determined by a valid and final judgment and the determi-
nation is essential to the judgment; in those circumstances, the
determination is conclusive in a subsequent action between the
adjudicated by the TTAB are materially the same as
those before the district court.
On the other hand, the Court also recognized that if
the TTAB did not consider the marketplace usage of
the parties’ marks, the TTAB decision should “have
no later preclusive effect in a suit where actual us-
age in the marketplace is the paramount issue.”
So what does this mean? If you are familiar with
TTAB practice, you know that most TTAB cases
settle. You also know that TTAB decisions are
based on comparing the marks as they are identified
in the applications or registrations at issue, which
can differ from how the marks are actually used in
the marketplace. Packaging, house marks, trade
parties, whether on the same or a different claim. Restatement
(Second) of Judgments §27.
