B&B Hardware v. Hargis: Decision and Impact on Trademark Prosecution and Enforcement

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Presented By:
October 05, 2016
1
Partner Firms:
Cullen and Dykman
Damias A. Wilson
Attorney
Collen IP
James R. Hastings
Of Counsel

October 05, 2016
2
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October 05, 2016
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October 05, 2016
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Partner Firms:
October 05, 2016
6
Cullen and Dykman’s Intellectual Property attorneys regularly advise and
represent clients on trademark and copyright issues. In addition to
responding to the day-to-day trademark and copyright issues raised by our
clients, such as advice on permissible website and social media content,
domain name acquisition, and preparing and responding to cease and desist
letters, this practice group is regularly involved in the prosecution of
trademark registrations at the state and federal levels The Firm’s Intellectual
Property group also handles administrative proceedings before the TTAB,
domain name dispute resolution, and state and federal district court
trademark, copyright, and unfair competition litigation. As a registered agent
with the Trademark Clearinghouse, the Firm also assists its clients with the
registration of their trademarks with the Clearinghouse. Such registration
enables clients to secure new generic top level domains (“gTLDs”) on the
Internet before these domains become available to the general public.
Collen IP is a leading intellectual property law firm and business consultancy
that advises and represents the interests of corporations and legal
associates worldwide. The firm is recognized for its successes in launching
brands, advising on marketing strategies, and protecting valuable intellectual
property rights. Collen IP’s litigation team represents clients in a wide array
of contested intellectual property proceedings in U.S. District Court, the U.S.
Trademark Trial and Appeal Board, and domain name dispute proceedings
before arbitration tribunals worldwide. It is recognized each year for having
one of the most extensive dockets for trademark opposition and cancellation
proceedings before the TTAB , and its lawyers have been featured in
various national legal and business publications.

Brief Speaker Bios:
Damias A. Wilson
As an associate at Cullen and Dykman LLP, Mr. Wilson’s practice involves counseling clients from a wide range of industries on a
variety of trademark, copyright, and trade secret matters. These matters include due diligence searches and advice on the selection
and development of trademarks and trade names; prosecuting trademark applications and recording copyright registrations;
developing internal policies and procedures regarding the protection and use of intellectual property; drafting coexistence and consent
agreements, trademark and copyright licenses, IP security agreements, and confidentiality agreements; and enforcing and defending
intellectual property rights in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, UDRP and URS
domain name dispute resolution, and civil litigation.
October 05, 2016
7
James R. Hastings
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a helpful primer
for brand owners and companies who are seeking to protect their trademark in contested proceedings before the U.S. Trademark Trial
and Appeal Board. James’s insight on trademark opposition cases has been featured in Corporate Counsel and the LXBN network of
legal publications. James is an approved mediator of the International Trademark Association (INTA) Panel of Mediators, an
alternative dispute resolution forum with approximately 150 mediators worldwide that works on behalf of INTA’s 6,500 member
companies.
► For more information about the speakers, you can visit: https://theknowledgegroup.org/event-homepage/?event_id=1828

The U.S. Supreme Court in March 2015 has delivered a significant decision in B&B Hardware, Inc. v. Hargis Industries, Inc. The Court affirms that the
Trademark Trial and Appeal Board (TTAB) rulings on the likelihood of confusion of trademarks may have a binding, preclusive effect on later Federal Court
trademark infringement proceedings so long as the ordinary elements of issue preclusion are met, and the usages adjudicated by the TTAB are materially the
same as those before a district court.
This case could substantially impact not only trademark enforcement strategies, but also the clearance of trademarks and prosecution strategies before the
United States Patent and Trademark Office (USPTO).
In this two-hour LIVE Webcast, a panel of key thought leaders and practitioners assembled by The Knowledge Group will review the B&B Hardware v. Hargis
case and will explain the significance and possible repercussions of the rulings and how brand owners can safeguard their trademarks in the future.
Speakers will also provide best practices in developing and implementing effective trademark protection strategies to protect against infringement.
Key issues that will be covered in this course are:
• B&B Hardware, Inc. v. Hargis Industries, Inc.
• Trademark Trial and Appeal Board (TTAB) Rulings
• Preclusive Effect: An Overview
• Coverage and Limitation
• U.S. Trademark Application
• Likelihood of Confusion
• Changes and Implications for Practitioners
• Risks and Pitfalls in Trademarks
• Infringement Mitigation Strategies
October 05, 2016
8

Featured Speakers:
October 05, 2016
9
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

Introduction
As an associate at Cullen and Dykman LLP, Mr. Wilson’s practice involves counseling clients from a wide range of industries
on a variety of trademark, copyright, and trade secret matters. These matters include due diligence searches and advice on
the selection and development of trademarks and trade names; prosecuting trademark applications and recording copyright
registrations; developing internal policies and procedures regarding the protection and use of intellectual property; drafting
coexistence and consent agreements, trademark and copyright licenses, IP security agreements, and confidentiality
agreements; and enforcing and defending intellectual property rights in opposition and cancellation proceedings before the
Trademark Trial and Appeal Board, UDRP and URS domain name dispute resolution, and civil litigation.
October 05, 2016
10
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

Deference to TTAB before B&B Hardware
 Circuit Courts had differing approaches to the extent that TTAB decisions should be treated by Article
III courts when deciding critical issues such as likelihood of confusion.
 “Some courts will treat Trademark Board decisions as administrative judgments which carry full
preclusive effect as to adjudicated facts, if these are the same facts which are in issue in the later
court proceeding. Other courts will not give such judgments preclusive effect, but will give them
some weight. Still other courts will recognize such judgments unless the contrary is established
with thorough conviction.” 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 32:96
October 05, 2016
11
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

The Eighth Circuit followed the rule established in Flavor Corp. of America v. Kemin Industries, 493 F.2d
275 (8th Cir.1974) that applying collateral estoppel requires a court to confirm “that some question or fact
in dispute ha[d] been judicially and finally determined by a court of competent jurisdiction between the
same parties or their privies.”
 Issue preclusion could not apply because TTAB was not a court of competent jurisdiction.
October 05, 2016
12
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

The Second Circuit, in Jim Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729, 734 (2d Cir.1991)
held, “the issue of likelihood of confusion in a cancellation proceeding may be different from the issue of
likelihood of confusion in an action for infringement.”
 The Second Circuit adopted the rule that before preclusive effect is given to a TTAB decision, the
decision must be carefully examined to determine exactly what was decided and on what evidentiary
basis. Any material differences would bar preclusion.
October 05, 2016
13
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

 The Third Circuit has not only recognized issue preclusion for TTAB decisions that are the primary or
only grounds for deciding a proceeding, but also to alternative rulings of the TTAB. See Jean Alexander
Cosmetics v. L'Oreal USA, 458 F.3d 244 (3rd Cir. 2006) (“We will follow the traditional view that
independently sufficient alternative findings should be given preclusive effect.”).
October 05, 2016
14
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware in the 8th Cir.
Not only did the Eighth Circuit refuse issue preclusion, when it ruled on B&B Hardware, it refused to even
enter the TTAB decision into evidence:
 The Eighth Circuit upheld the district court’s determination that admission of the TTAB's decision
“would be highly confusing and misleading to the jury.”
October 05, 2016
15
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

Procedural limitations of B&B Hardware:
To Stay or to Review?
“There are two reasons the facts in the B&B Hardware case were unusual: (1) the T.T.A.B. and the federal
court in Arkansas were travelling along parallel paths at the same time to reach a decision and the T.T.A.B.
rendered its judgment first. In the usual situation, one party would make a motion asking the T.T.A.B. to
stay proceedings pending resolution in the court case and the T.T.A.B. would routinely grant the stay; (2)
When Hargis lost the Opposition case before the Trademark Board, it neither appealed to the Federal
Circuit nor did it file a suit for review of the decision in a federal District Court.” 6 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 32:97
October 05, 2016
16
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

Procedural limitations of B&B Hardware:
To Stay or to Review?
Given the potential preclusive effect of a TTAB decision, some key considerations must now be weighed
when deciding whether to request or agree to a stay of a TTAB proceeding pending the outcome of an
infringement litigation:
 Circuit splits and various tests and presumptions;
 Whether use in commerce matches up with the registrations or applications in question;
 Timing – what is the likelihood that an infringement claim will be filed imminently?
 Cost / Efficiency
October 05, 2016
17
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

What other issues can the TTAB decide after
B&B Hardware
 In B&B Hardware, the court was reviewing a TTAB decision in an opposition hearing. The only issue
that the court addressed in that case was likelihood of confusion. However, the TTAB rules on a
number of issues that can also be critical in subsequent litigation.
October 05, 2016
18
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
 Priority
 Fraud
 Validity and inherent strength of a trademark
 Descriptiveness and secondary meaning
 Disparagement
 Abandonment
October 05, 2016
19
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
PRIORITY
 “Even assuming that B & B Hardware stands for the proposition that, when considering the issue of
priority, courts must determine whether the actual use of a mark is the same as the use stated in a
trademark application, Ashe has alleged no actual use of the mark other than those uses described in
his trademark application. Consequently, in this case, the issue of priority decided by the TTAB was
identical to the issue of priority presented to the district court.” Ashe v. PNC Financial Services Group,
No. 15–2566, 2016 WL 3230703 (4th Cir. 2016).
October 05, 2016
20
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
FRAUD
 The issue of whether Defendant committed fraud on the USPTO is identical to the question considered
by the TTAB in the prior proceeding. The issue was decided against Defendant in the prior proceeding,
and the determination of fraud was critical and necessary to the TTAB's final decision. Nationstar
Mortgage, LLC v. Ahmad, 155 F.Supp.3d 585 (ED Va. 2015)
October 05, 2016
21
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
COMMERCIAL STRENGTH OF MARK
 TTAB can decide the commercial strength of a mark and whether it is entitled to broad or narrow
protection.
 Based on a high number of similar registrations and common law uses, the TTAB “held that the
‘GRAND HOTELS NYC’ and ‘GRAND HOTEL’ trademarks were ‘sufficiently different to avoid the
likelihood of confusion’ even though the only difference between the marks was ‘the inclusion of the
geographic term NYC and the pluralization of HOTEL.’ Regency Hotel Management v. Shree Sai,
CIV. 14-4033-KES, 2015 WL 12564735 (D. S.D. 2015).
October 05, 2016
22
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
INHERENT STRENGTH OF MARK
 Eastman Kodak does not, and was not intended to, place any limits on the Board's jurisdiction to
decide, in the context of an ex parte appeal or opposition, issues of descriptiveness or
misdescriptiveness where an intent-to-use application is involved. In re Berman Bros. Harlem Furniture
Co., 26 U.S.P.Q.2d 1514 (T.T.A.B. 1993).
October 05, 2016
23
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
SECONDARY MEANING
While secondary meaning is wholly dependant on the realities of the marketplace, the TTAB has
jurisdiction to make this determination when it finds that a mark is merely descriptive.
 “[D]espite the broad advertising campaign for CRYSTAL GEYSER ALPINE SPRING WATER and
the impressive sales figures, we do not find that ALPINE SPRING WATER has come to signify the
commercial source of the product, but rather continues merely to inform the consumers about the
nature of the product, particularly in an industry where consumers are accustomed to seeing the
brand name and the designation of the type of bottled water in close proximity to each other.” In re
Crystal Geyser Water Co., 85 U.S.P.Q.2d 137 (TTAB 2007).
October 05, 2016
24
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
DISPARAGEMENT
While the state of whether disparagement is a valid ground for rejecting a trademark registration is in flux,
it remains an issue that can be decided by the TTAB, potentially with preclusive effect.
 Pro-Football Inc. v. Blackhorse, 112 F.Supp.3d 439 (E.D. Va. 2015)
 In re Tam, 808 F.3d 1321 (Fed. Cir. 2015)
October 05, 2016
25
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

B&B Hardware?
ABANDONMENT
 See Imperial Tobacco Ltd., Assignee of Imperial Group PLC v. Phillip Morris, 899 F.2d 1575 (Fed. Cir.
1990)(upholding TTAB’s grant of summary judgment cancelling a foreign company’s registration for
lack of use in the United States).
October 05, 2016
26
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

Judicial Review of TTAB Decisions
 The potential for preclusion on crucial issues such as likelihood of confusion increases the incentive for
the losing party in a TTAB proceeding to seek judicial review of an adverse result.
 A party can seek review of a TTAB decision on whether to register or cancel a registration either in
the U.S. Court of Appeals for the Federal Circuit, or it can file an action in a federal district court.
 Filing an action in district court allows the opportunity for additional discovery, and the court will
decide the matter de novo.
October 05, 2016
27
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

Judicial Review of TTAB Decisions
Courts reviewing a TTAB decision are clearly not precluded from deciding any issues that were
adjudicated in the TTAB proceeding. See In re Cordua Restaurants, 823 F.3d 594 (Fed. Cir. 2016).
October 05, 2016
28
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

Introduction
James Hastings is Of Counsel to Collen IP. He is the author of the online publication, Trademark Opposition Lawyer, a
helpful primer for brand owners and companies who are seeking to protect their trademark in contested proceedings before
the U.S. Trademark Trial and Appeal Board. James’s insight on trademark opposition cases has been featured in Corporate
Counsel and the LXBN network of legal publications. James is an approved mediator of the International Trademark
Association (INTA) Panel of Mediators, an alternative dispute resolution forum with approximately 150 mediators worldwide
that works on behalf of INTA’s 6,500 member companies.
October 05, 2016
29
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Overview
1. B&B Hardware and the TTAB- brief overview
2. How to Manage Trademark Enforcement budgets in light of B&B Hardware Decision
3. Early risk assessment techniques in light of B&B Hardware and its impact on trademark litigants
4. Alternatives to litigation, including Accelerated Case Resolution (ACR); Alternative Dispute Resolution
(mediation); and party-to-party discussions.
October 05, 2016
30
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Likelihood of Confusion
B & B Hardware v. Hargis Industries
(Supreme Court 2015)
 Potential brand enforcement game-changer for in-house counsel and brand owners in likelihood of
confusion cases
 Could create a major impact on a brand owners’ determination as to which forum to bring a cause of
action for likelihood of confusion – the TTAB or District Court
 Filing an action in the TTAB may now carry greater weight and leverage in disputes between parties
re: likelihood of confusion issues
October 05, 2016
31
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

B&B Hardware v. Hargis Industries
Holding: TTAB decisions concerning likelihood of confusion may have a preclusive effect in subsequent
trademark infringement actions in U.S. District Court if the issue of likelihood of confusion/usages was
previously adjudicated by the TTAB and is “materially the same” as the issues subsequently being raised
in the district court.
October 05, 2016
32
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

When will issue preclusion apply in the context of a TTAB finding regarding an issue of likelihood of
confusion?
A. Where ample evidence of marketplace use of the parties’ respective marks was considered.
When will issue preclusion not apply?
A. Where the mark owner uses its mark in a manner materially different than the usages in the
application or registration or if the TTAB does not consider the parties’ marketplace usages when
assessing a likelihood of confusion.
October 05, 2016
33
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

TTAB
Likelihood of Confusion Factors
In re E.I. du Pont de Nemours & Co. (CCPA 1973)
1. Similarity or dissimilarity of the marks
2. Similarity or dissimilarity of the goods/services
3. Similarity or dissimilarity of established trade channels
4. Conditions on which purchase is made
5. Fame of the prior mark
6. Number and nature of similar marks in use on similar goods
October 05, 2016
34
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

TTAB
Likelihood of Confusion Factors (cont.)
7. Nature and extent of any actual confusion
8. Length of time where that has been concurrent use without any actual confusion
9. The variety of goods on which a mark is used or not used
10. Market interface between applicant and prior user
11. The extent to which applicant has right to exclude others
12. Extent of potential confusion
13. Any other probative facts
In re E.I. du Pont de Nemours & Co. (CCPA 1973)
October 05, 2016
35
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

TTAB
Q. How does the TTAB consider the Dupont Factors in determining likelihood of confusion?
 Analyzes all probative facts in evidence that bear on the factors of likelihood of confusion
 No single factor is determinative
 In any likelihood of confusion analysis, two key factors are the similarities between the marks and the
similarities between the goods.
Practice Tip: If you don’t have your evidence properly introduced, it could be excluded
October 05, 2016
36
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

TTAB
Similarity of Marks
 The similarity or dissimilarity of goods or services of the marks at issue are considered in terms of
appearance, sound, meaning, and overall commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En (Fed. Cir. 2005)
October 05, 2016
37
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

TTAB
Similarity of Goods and/or Services
 Where the parties’ goods or services are the same, there is a presumption that they move in the same
channels of trade and are available to the same class of consumers.
Citigroup Inc. v. Capital City Bank Inc. 637 F.3d 1344
(Fed. Cir. 2011)
October 05, 2016
38
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

The Dupont Factors relevant to marketplace usage:
3. Similarity or dissimilarity of established trade channels*
4. Conditions on which purchase is made
6. Number and nature of similar marks in use on similar goods
7. Nature and extent of any actual confusion*
8. Length of time where that has been concurrent use without any actual confusion
October 05, 2016
39
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Dupont Factors relevant to Marketplace Usage (cont.):
9. The variety of goods on which a mark is used or not used*
10. Market interface between applicant and prior user
12. Extent of potential confusion*
October 05, 2016
40
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Brand Enforcement Budgeting
Post B&B Hardware
Brand enforcement factors to consider:
 Monitoring and enforcing trademarks can get very expensive post B&B Hardware
 Companies are seeking greater value from their business partners and well as outside law firms
 Creating value can be accomplished through a holistic brand enforcement strategy
October 05, 2016
41
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Post B&B Hardware
Holistic Brand Portfolio Strategy
 Prioritize the trademark portfolio and establish tiers of importance based on sales, goodwill,
importance to company’s performance and other quantitative and qualitative factors
 For each trademark value tier, determine the types of third-party activities that will be monitored
(e.g., applications, domain names, websites, etc.)
 For each trademark, establish the criteria for how and when a third-party’s activities will trigger
enforcement.
October 05, 2016
42
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Post B&B Hardware
Impact of B&B Hardware on Brand Enforcement Budgets
 Clients may out of economic necessity limit enforcement efforts to “Top Tier” trademarks and/or to
be more selective in challenging third-party registration or use activities
 Early case [risk] assessment will have to take place with more rigor and discipline to avoid
undesirable outcomes and/or protracted and costly disputes
 Alternative fee arrangements may have to be further explored with clients to ensure that annual
brand enforcement budget projections align with actual expenditures
October 05, 2016
43
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Post B&B Hardware
TTAB Filing Statistics (2015)
 Oppositions filed: 5,290 (-4% from FY2014)
 Extensions of time filed: 17,132 (-1% from FY 2014)
 Ex parte appeals: 2,992 (+7% from FY 2014)
October 05, 2016
44
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Post B&B Hardware
The Cost of Trademark Litigation
 $202,000 through the end of discovery
 $375,000 through the end of trial
Source: AIPLA 2013 Study
(amount in controversy less than $1M)
October 05, 2016
45
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Post B&B Hardware
Litigation Budget Implications
 TTAB proceedings will tend to get more expensive due to greater need to hire trademark survey
experts to avoid issue preclusion impact of B&B Hardware
 Consumer brand companies with strong trademarks may continue to make the TTAB a preferred
forum due to TTAB’s greater emphasis on Dupont Factors of similarity of marks and similarity of
goods
October 05, 2016
46
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Early Case Assessment
Post B&B Hardware
Early case assessment (ECA) refers to estimating the risks, benefits, and likelihood of success of a
legal case
ECA Tips- Trademark Opposer/Plaintiff
 Seek an incremental approach to communications with a trademark applicant that begins with the
filing of an extension of time to file an opposition with the TTAB, followed-up by a frank but
respectful letter to the Applicant
 Estimate the risk tolerance of the Applicant to engage in a costly opposition proceeding and
present settlement scenarios based in part on the Applicant’s ability to fund any litigation
October 05, 2016
47
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Early Case Assessment
Post B&B Hardware
ECA Tips- Trademark Applicant/Defendant
 Determine alternatives to being dragged into an opposition, including amending the application to
narrow the identification of goods and/or consider expressly abandoning the applcation in
consideration of the potential Opposer not contesting Applicant’s marketplace use
 Investigate the strength of the potential Opposer’s marks including USPTO filing history and
enforcement activities to determine if you have any viable affirmative defenses or counterclaims
October 05, 2016
48
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

ACR and ADR (Mediation)
TTAB Dispute Resolution Alternative
ACR- Accelerated Case Resolution
 The purpose of ACR is to offer more efficient and less expensive alternatives to a full trial on the
merits. ACR approximates a summary bench trial where the parties stipulate to the evidence.
 TTAB average total case pendency Results (FY 2014)
• 165.2 weeks (TTAB non-ACR cases)
• 136.3 weeks (TTAB ACR cases)
• Number of ACR cases decided (21)
October 05, 2016
49
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

ACR and ADR (Mediation)
TTAB Dispute Resolution Alternative
ADR- Trademark Mediation
 The purpose of mediation is to offer the parties a collaborative forum for the parties to come
together to discuss options to amicably resolve the TTAB dispute to avoid additional legal expense
and risk.
 INTA- Trademark Mediator’s Network includes approximaely 80 United States-based mediators.
 Trademark mediation as opposed to arbitration is less rigorous and does not have formal
discovery and/or proof submissions
October 05, 2016
50
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Additional Practice Tips
Trademark Applicants
 1. If your trademark application is opposed based on a likelihood of confusion (Section 2d of the
Trademark Act), the most relief that the Opposer can receive is an order from the TTAB refusing to
register your trademark application.
 2. That being said, if issues regarding the parties’ marketplace use are adjudicated in the TTAB and if
you lose the case, be prepared for the Opposer to file an action in District Court seeking to enjoin
your use of your trademark based on the grounds of issue preclusion
October 05, 2016
51
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Additional Practice Tips
Trademark Opposers
Since the TTAB’s jurisdiction is limited to issues of registration only, you will have to decide if your
trademark portfolio goals are primarily to keep the Trademark Registry clear of any registrations that are
confusingly similar to your marks as used in connection with your goods and services.
 If you think the trademark you are opposing could have serious marketplace confusion implications, it
may be best to consider filing a trademark infringement action in federal or district court
October 05, 2016
52
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

Final Thoughts to consider for in-house counsel and attorneys:
◦ If your client has a strong mark(s) with good arguments re: similarity of the parties’ marks and
similarity of the goods, you may want to consider staying in the TTAB rather than the district
courts.
◦ Make sure that you adequately take ample marketplace discovery in the TTAB and brief all issues
related to Dupont likelihood of confusion factors.
◦ Educate your adversary re: favorable marketplace use implications should you prevail in the TTAB.
October 05, 2016
53
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:

October 05, 2016
54
Contact Info:
Damias A. Wilson
Attorney
Cullen and Dykman
E: dwilson@cullenanddykman.com
P: 516.296.9175
James R. Hastings
Of Counsel
Collen IP
E: jHastings@collenip.com
P: 914-941-5668

► You may ask a question at anytime throughout the presentation today. Simply click on the question mark icon located on the floating tool bar on the bottom right side of your screen. Type
your question in the box that appears and click send.
► Questions will be answered in the order they are received.
Q&A:
October 05, 2016
55
James R. Hastings
Of Counsel
Collen IP
SEGMENT 2:
Damias A. Wilson
Attorney
Cullen and Dykman
SEGMENT 1:

October 05, 2016
56
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