News & Analysis as of

Claim Preclusion Trademark Trial and Appeal Board

Haug Partners LLP

Third Circuit Rules That Trademark Cancellation Proceedings Before The TTAB Do Not Preclude Later Infringement Lawsuits In Federal...

Haug Partners LLP on

On September 17, 2021, in Beasley v. Howard, 14 F.4th 226 (3d Cir. 2021), the Third Circuit joined the Second and Ninth Circuits in ruling that prior trademark cancellation actions in front of the Trademark Trial and Appeal...more

Saiber LLC

Defendant Sings the Blues as Third Circuit Decides Claim Preclusion Based on Prior TTAB Decision Does Not Apply in Matter of First...

Saiber LLC on

In a recent precedential opinion, Beasley v. Howard, ___ F.4th ___ (3d Cir. 2021) (publication pending), the United States Court of Appeals for the Third Circuit determined, in an issue of first impression, that trademark...more

Fox Rothschild LLP

Precedential TTAB Decision Revisits Claim And Issue Preclusion

Fox Rothschild LLP on

In a recent precedential decision, the TTAB again revisited the doctrines of claim and issue preclusion. Valvoline Licensing & Intellectual Property LLC (“Valvoline”) opposed Sunpoint International Group USA Corp.’s...more

Jones Day

JONES DAY TALKS®: Women in IP: 2020 in Review and a Look Toward 2021

Jones Day on

Jones Day's Meredith Wilkes and Anna Raimer discuss 2020's most significant developments in trademark law and preview what's to come in 2021, including possible progress in Washington on the highly anticipated Trademark...more

Knobbe Martens

Issue Preclusion at the ITC: New Developments for Trademark-Based Claims

Knobbe Martens on

Investigations at the International Trade Commission (“ITC”) often involve intellectual property disputes that may also be the subject of parallel litigation in district court. This parallel litigation is often stayed pending...more

Nutter McClennen & Fish LLP

New Dangers at the TTAB

The Trademark Trial and Appeal Board of the United States Patent and Trademark Office has recently become a more dangerous place....more

Akerman LLP - Marks, Works & Secrets

Caveat Opposer: Preclusion Lurks at the TTAB

Recently, the Trademark Trial and Appeal Board (the “TTAB”) held that an unsuccessful opposer was precluded from later pursuing a cancellation against the same trademark owner, even though the opposer assumed a different...more

Knobbe Martens

Trademark Review - December 2014

Knobbe Martens on

The TTAB Sets the Rules for Pleading Abandonment of a Section 66(a) Registration - VENM seeks registration of the mark VENM for dance costumes. Dragon Bleu opposed registration of VENM’s mark based on 3 earlier...more

McDonnell Boehnen Hulbert & Berghoff LLP

Trademark Cases Pending Before the U.S. Supreme Court

In December, the Supreme Court of the United States will hear oral arguments on two trademark cases: B&B Hardware, Inc. v. Hargis Industries, Inc. and Hana Financial v. Hana Bank. These cases address the issues of whether a...more

Nossaman LLP

Supreme Court To Decide Preclusive Effect of TTAB Decisions on Subsequent Court Actions

Nossaman LLP on

Last week the Supreme Court granted certiorari to determine whether decisions of the Trademark Trial and Appeals Board (TTAB) concerning likelihood of confusion preclude relitigating that issue in subsequent infringement...more

Proskauer Rose LLP

UPDATE: U.S. Supreme Court Will Decide What Preclusive Effect, If Any, Should Be Given to Likelihood of Confusion Findings by the...

Proskauer Rose LLP on

As we reported in our May 29 client alert, the Solicitor General submitted an amicus brief recommending that the Supreme Court grant a petition for certiorari seeking a determination of whether likelihood of confusion...more

Proskauer Rose LLP

Petition for Certiorari Filed Regarding Preclusive Effect of Likelihood of Confusion Findings by the Trademark Trial and Appeal...

Proskauer Rose LLP on

In advising clients and making strategic decisions about whether to bring or defend inter partes proceedings before the Trademark Trial and Appeal Board ("TTAB"), trademark practitioners need to consider carefully whether...more

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