On September 22, 2005 the United States Court of Appeals for the Federal Circuit ruled that prior trademark infringement and unfair competition litigation did not bar a later- filed opposition to a trademark’s registration between the same parties. At issue was Berkshire Fashions’ use of the name BERKSHIRE on apparel. Mayer/Berkshire had previously sued Berkshire Fashion for infringement stemming from its use of BERKSHIRE on certain accessories, including umbrellas and totes, but lost the case. The jury found no likelihood of confusion between the two companies’ products. As a result, the Patent and Trademark Office approved Berkshire Fashions’ trademark registration for accessories.

The next year, Berkshire Fashion applied for a trademark registration for other apparel, such as raincoats, sweaters, gloves, pants, and hats. The trial examiner rejected the registration as a result of Mayer/Berkshire’s preexisting trademarks. Berkshire Fashions appealed and the Trademark Trial and Appeal Board (“the Board”) instructed the examiner to consider the prior litigation. The examiner approved the registration and Mayer/Berkshire appealed. The Board ruled against Mayer/Berkshire finding that under the principles of finality (specifically, res judicata and collateral estoppel) the issue of non-infringement had already been decided in the prior civil litigation.

Mayer/Berkshire appealed to the Federal Circuit. The court considered the issue of whether the prior finding on non-infringement was binding, based on the principles of res judicata and collateral estoppel (the former pertaining to claim preclusion, and the latter referring to issue preclusion.) In essence, both these principles prevent parties from re-litigating issues and claims that have already been adjudicated in prior proceedings. The court held that the previous litigation and finding of non-infringement would not bar a subsequently filed Opposition Proceeding.

First, the Court noted that the registrability of a trademark was an issue in infringement litigation, because the cause of action was be based on the actual sale or advertising of the goods, not on the content of the registration application. Also, the Court distinguished the prior litigation by noting that it involved only the likelihood of confusion between Mayer/Berkshire’s registered trademarks and Berkshire Fashions marketed products. An opposition proceeding would be broader in scope: consideration would be given to any item for which registration is sought.

Second, the Court reasoned that there were new facts since the litigation, as Mayer/Berkshire alleged that Berkshire Fashions had changed their marketing practices. This, the Court noted, could lead to greater likelihood of confusion between the two companies’ products. Third, the court noted that the administrative trademark procedures were designed not only to protect purveyors of goods, but also the consuming public. Public policy considerations extant in the opposition proceeding were absent from the prior litigation.

In sum, the Court held that the Board’s grant of summary judgment was inappropriate. Mayer/Berkshire had sufficiently presented different issues and different facts in the opposition proceeding than were covered by the previous trademark infringement and unfair competition litigation.

For more information, contact:

Elizabeth Cohen
202-857-6166
cohen.elizabeth@arentfox.com