trademark litigation in light of b&b hardware, inc. v. hargis industries, inc. live webcast

Speaker Firms and Organization:

Wiley Rein LLPAlan S. Cooper

Of Counsel

Thank you for logging into today’s event. Please note we are in standby mode. All Microphones will be muted until the event starts. We will be back with speaker instructions @ 09:55am. Any Questions? Please email: [email protected] Group Registration Policy

Please note ALL participants must be registered or they will not be able to access the event. If you have more than one person from your company attending, you must fill out the group registration form. We reserve the right to disconnect any unauthorized users from this event and to deny violators admission to future events.

To obtain a group registration please send a note to [email protected] or call 646.202.9344.

Presented By:

November 07, 2014

1

Partner Firms:Oblon, Spivak, McClelland, Maier &

Neustadt, LLPChico Gholz

Partner

Akerman LLPIra S. Sacks

Partner

Oblon, Spivak, McClelland, Maier & Neustadt, LLPJonathan Hudis

Partner

November 07, 2014

2

Follow us on Twitter, that’s @Know_Group to receive updates for this event as well as other news and pertinent info.

If you experience any technical difficulties during today’s WebEx session, please contact our Technical Support @ 866-779-3239.

You may ask a question at anytime throughout the presentation today via the chat window on the lower right hand side of your

screen. Questions will be aggregated and addressed during the Q&A segment.

Please note, this call is being recorded for playback purposes.

If anyone was unable to log in to the online webcast and needs to download a copy of the PowerPoint presentation for today’s

event, please send an email to: [email protected]. If you’re already logged in to the online webcast, we will post a link

to download the files shortly.

If you are listening on a laptop, you may need to use headphones as some laptops speakers are not sufficiently amplified enough to

hear the presentations. If you do not have headphones and cannot hear the webcast send an email to

[email protected] and we will send you the dial in phone number.

https://twitter.com/know_group

https://twitter.com/know_group

November 07, 2014

3

About an hour or so after the event, you'll be sent a survey via email asking you for your feedback on your experience with this

event today - it's designed to take less than two minutes to complete, and it helps us to understand how to wisely invest your time in

future events. Your feedback is greatly appreciated. If you are applying for continuing education credit, completions of the surveys

are mandatory as per your state boards and bars. 6 secret words (3 for each credit hour) will be given throughout the presentation.

We will ask you to fill these words into the survey as proof of your attendance. Please stay tuned for the secret word.

Speakers, I will be giving out the secret words at randomly selected times. I may have to break into your presentation briefly to read

the secret word. Pardon the interruption.

November 07, 2014

4

Welcome to the Knowledge Group Unlimited Subscription Programs. We have Two Options Available for You: FREE UNLIMITED: This program is free of charge with no further costs or obligations. It includes:

Unlimited access to over 15,000 pages of course material from all Knowledge Group Webcasts. Subscribers to this program can download any slides, white papers, or supplemental material covered during all live webcasts.

50% discount for purchase of all Live webcasts and downloaded recordings.

PAID UNLIMITED: Our most comprehensive and cost-effective plan, for a one-time fee:

Access to all LIVE Webcasts (Normally $199 to $349 for each event without a subscription). Including: Bring-a-Friend – Invite a client or associate outside your firm to attend for FREE. Sign up for as many webcasts as you wish.

Access to all of Recorded/Archived Events & Course Material includes 1,500+ hours of audio material (Normally $299 for each event without a subscription).

Free CLE/CPE/CE Processing (Normally $49 Per Course without a subscription). Access to over 15,000 pages of course material from Knowledge Group Webcasts. Ability to invite a guest of your choice to attend any live webcast Free of charge (Exclusive benefit only available for PAID

UNLIMITED subscribers). 6 Month Subscription is $299 with No Additional Fees Other options are available. Special Offer: Sign up today and add 2 of your colleagues to your plan for free Check the “Triple Play” box on the sign-up

sheet contained in the link below.

https://gkc.memberclicks.net/index.php?option=com_mc&view=mc&mcid=form_157964



November 07, 2014

5

Knowledge Group UNLIMITED PAID Subscription Programs Pricing: Individual Subscription Fees: (2 Options)Semi-Annual: $299 one-time fee for a 6 month subscription with unlimited access to all webcasts, recordings, and materials. Annual: $499 one-time fee for a 12 month unlimited subscription with unlimited access to all webcasts, recordings, and materials.

Group plans are available. See the registration form for details.

Best ways to sign up:1. Fill out the sign up form attached to the post conference survey email.2. Sign up online by clicking the link contained in the post conference survey email. 3. Click the link below or the one we just posted in the chat window to the right. https://gkc.memberclicks.net/index.php?option=com_mc&view=mc&mcid=form_157964

Discounts: Enroll today and you will be eligible for the “Triple Play” program and 3% off if you pay by credit card. Also we will waive the $49 CLE/CPE processing fee for today’s conference. See the form attached to the post conference survey email for details.

Questions: Send an email to: [email protected] with “Unlimited” in the subject.



mailto:[email protected]

Partner Firms:

November 07, 2014

6

Akerman LLP is a leading transactions and trial law firm. Akerman is known for its core strengths in litigation, intellectual property, middle-market M&A within the financial services and real estate industries, and for a diverse Latin America practice. Akerman has more than 600 lawyers and government affairs professionals and a network of 20 offices.

Wiley Rein LLP is a D.C.-based firm home to more than 275 attorneys practicing in almost two dozen areas of law, including specialties in Trademark, Intellectual Property, and Litigation. We offer clients a unique integration of legal, regulatory and public policy expertise with an in-depth understanding of the business and technical underpinnings of the industries we serve. Our interdisciplinary approach leverages the full breadth of our talent and knowledge and provides counsel derived from aggressive advocacy and extensive subject matter knowledge. Legal Times has noted that the firm “represents as perfect a merging of public policy and corporate America as exists in Washington.

Assisting clients for over 40 years, Oblon Spivak is one of the largest law firms in the United States focusing exclusively on intellectual property law. Emerging and established companies across the world depend on Oblon, Spivak to help them establish, leverage and protect their intellectual property assets. The firm is headquartered within steps of the United States Patent and Trademark Office (USPTO), with an additional office in Tokyo, Japan.

Brief Speaker Bios:

Alan S. Cooper

Alan Cooper has practiced many years exclusively in the area of trademark enforcement with particular emphasis on trademark

infringement and dilution cases as well as contested proceedings before the Trademark Trial and Appeal Board and counterfeit

matters working with U.S. Customs and Border Protection. He taught trademark law as an Adjunct Professor at Georgetown University

Law School for twelve years, and has been a faculty member at numerous CLE programs directed to trademark law, and has written a

number of articles on topics in the trademark field. He is one of the co-authors of the treatise “A Legal Strategist’s Guide to Practice

Before the Trademark Trial and Appeal Board” published by the American Bar Association and for many years has been a member of

the Advisory Board of the BNA’s Patent, Trademark & Copyright Journal.

November 07, 2014

7

Ira S. Sacks

Ira Sacks practices in the area of litigation, including a broad range of trademark and branding matters, as well as a variety of general

commercial matters. His practice also includes antitrust, copyright, and patent litigation and counseling. Ira brings to his diverse client

base in-depth experience as a litigator with extensive big case trial experience. He has served as counsel of record in more than 90

reported decisions, including two successful arguments before the United States Supreme Court, and he has been first-chair trial

counsel in over 20 matters litigated to judgment.

Brief Speaker Bios:

Jonathan Hudis

Jonathan Hudis, a partner in the firm’s Trademark and Copyright practice group, counsels clients in trademark, copyright, trade

secrets and unfair competition matters, as well as related matters pertaining to the Internet. A skilled trademark and copyright attorney,

Mr. Hudis prosecutes and litigates a full range of these matters before the federal courts, the Register of Copyrights, and the

Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO). He has several years of

practical intellectual property litigation experience in contested court matters and administrative proceedings. He is the Editor in Chief

of the treatise “A Legal Strategist’s Guide to Practice Before the Trademark Trial and Appeal Board” published by the American Bar

Association.

November 07, 2014

8

Charles Gholz

Charles L. Gholz is a partner in the Litigation practice group. He is particularly skilled at handling patent interferences under 35 USC §

135 before the Patent Trial and Appeal Board (PTAB) and court review of decisions by the PTAB in interferences. He handles both

appeals to the Federal Circuit under 35 USC § 141 and civil actions in district courts under 35 USC § 146. Mr. Gholz represents a wide

variety of domestic and foreign clients across a range of technologies including biotech, chemical, electronics, computers and lasers.

He regularly appears before the PTAB, the Federal Circuit, and various district courts. He also counsels on patent validity and

patentability, and he has appeared as an expert witness on many patent issues. He is one of the co-authors of the treatise Court of

Appeals for the Federal Circuit: Practice and Procedure published by LexisNexis and for many years has been a member of the

Advisory Panel of the BNA’s Patent, Trademark & Copyright Journal.

► For more information about the speakers, you can visit: http://theknowledgegroup.org/event_name/trademark-litigation-in-light-of-bb-hardware-inc-v-hargis-industries-inc-live-webcast/

http://theknowledgegroup.org/event_name/trademark-litigation-in-light-of-bb-hardware-inc-v-hargis-industries-inc-live-webcast/

http://theknowledgegroup.org/event_name/trademark-litigation-in-light-of-bb-hardware-inc-v-hargis-industries-inc-live-webcast/

The Supreme Court’s opinion in B&B Hardware, Inc. v. Hargis Industries, Inc. (to be argued December 2, 2014), may well revolutionize trademark infringement litigation. The petitioner, which won a previous trademark opposition against the respondent before the Trademark Trial and Appeal Board (“TTAB”), argues that the TTAB’s decision on the issue of likelihood of confusion is entitled to issue preclusion effect and that, consequently, the only issues to be decided in its subsequent trademark infringement action against the respondent are (1) whether the respondent ever used the mark shown in its application on the goods recited in its application and (2), if so, the wording of the injunction and the amount of damages to which it is entitled.

In a two-hour live webcast, the speakers will discuss:

• The procedural history of the case• The circuit split leading to the grant of certiorari• The arguments of the parties and the amici• The implications for trademark practitioners if the Supreme Court accepts the petitioner’s arguments• The possible impact of the Supreme Court’s opinion on the settled law concerning the corresponding

situation in patent cases

November 07, 2014

9

Featured Speakers:

November 07, 2014

10

Alan S. CooperOf CounselWiley Rein LLP

Ira S. SacksPartnerAkerman LLP

Jonathan HudisPartnerOblon, Spivak, McClelland, Maier & Neustadt, LLP

Charles (“Chico”) GholzPartnerOblon, Spivak, McClelland, Maier & Neustadt, LLP

Introduction

Alan Cooper has practiced many years exclusively in the area of trademark enforcement with particular

emphasis on trademark infringement and dilution cases as well as contested proceedings before the

Trademark Trial and Appeal Board and counterfeit matters working with U.S. Customs and Border

Protection. He taught trademark law as an Adjunct Professor at Georgetown University Law School for

twelve years, and has been a faculty member at numerous CLE programs directed to trademark law, and

has written a number of articles on topics in the trademark field. He is one of the co-authors of the

treatise “A Legal Strategist’s Guide to Practice Before the Trademark Trial and Appeal Board” published

by the American Bar Association and for many years has been a member of the Advisory Board of

the BNA’s Patent, Trademark & Copyright Journal.

November 07, 2014

11


Introduction

Ira Sacks practices in the area of litigation, including a broad range of trademark and branding matters,

as well as a variety of general commercial matters. His practice also includes antitrust, copyright, and

patent litigation and counseling. Ira brings to his diverse client base in-depth experience as a litigator with

extensive big case trial experience. He has served as counsel of record in more than 90 reported

decisions, including two successful arguments before the United States Supreme Court, and he has been

first-chair trial counsel in over 20 matters litigated to judgment.

November 07, 2014

12


Introduction

Jonathan Hudis, a partner in the firm’s Trademark and Copyright practice group, counsels clients in

trademark, copyright, trade secrets and unfair competition matters, as well as related matters pertaining

to the Internet. A skilled trademark and copyright attorney, Mr. Hudis prosecutes and litigates a full range

of these matters before the federal courts, the Register of Copyrights, and the Trademark Trial and

Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO). He has several years

of practical intellectual property litigation experience in contested court matters and administrative

proceedings. He is the Editor in Chief of the treatise “A Legal Strategist’s Guide to Practice Before the

Trademark Trial and Appeal Board” published by the American Bar Association.

November 07, 2014

13


November 07, 2014

14

Charles (“Chico”) GholzPartnerOblon, Spivak, McClelland, Maier & Neustadt, LLP

Introduction

Charles (“Chico”) Gholz is a partner in the Litigation practice group. He is particularly skilled at handling

patent interferences under 35 USC § 135 before the Patent Trial and Appeal Board (PTAB) and court

review of decisions by the PTAB in interferences. He handles both appeals to the Federal Circuit under

35 USC § 141 and civil actions in district courts under 35 USC § 146. Mr. Gholz represents a wide variety

of domestic and foreign clients across a range of technologies including biotech, chemical, electronics,

computers and lasers. He regularly appears before the PTAB, the Federal Circuit, and various district

courts. He also counsels on patent validity and patentability, and he has appeared as an expert witness

on many patent issues. He is one of the co-authors of the treatise Court of Appeals for the Federal

Circuit: Practice and Procedure published by LexisNexis and for many years has been a member of the

Advisory Panel of the BNA’s Patent, Trademark & Copyright Journal.

B&B Hardware v. Hargis – Case History and Background

November 07, 2014

15


B&B Hardware, Inc v. Hargis Industries, Inc. presents two issues:

Should a TTAB likelihood of confusion decision in an inter partes proceeding be given preclusive effect in subsequent infringement litigation between the same parties?

If issue preclusion does not apply what deference, if any, should TTAB likelihood of confusion decision be given in subsequent infringement litigation between the same parties?

November 07, 2014

16


CASE BACKGROUND

Marks In Issue Hargis -- Application Serial No. 75/129,229 to register SEALTITE for self-piercing and self-drilling

metal screws for use in the manufacture of metal and post-frame buildings based on § 2(f) claim of acquired distinctiveness.

B&B Hardware -- Registration No. 1,797,509 of SEALTIGHT for threaded or unthreaded metal fasteners and other related hardware, namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive O-ring.

November 07, 2014

17


CASE BACKGROUND (continued)

Actual Use Hargis’ SEALTITE products -- self-piercing and self-drilling metal screws used in manufacture of

metal and post-frame buildings.

B&B Hardware’s SEALTIGHT products – metal fasteners used basically in aerospace industry.

November 07, 2014

18


OPPOSITION PROCEEDING

B&B Hardware opposed Hargis’ application based on likelihood of confusion. Background:

• B&B Hardware filed prior infringement action that was dismissed on ground that its mark SEALTIGHT is merely descriptive and had not acquired secondary meaning – Eighth Circuit affirmed.

• Because of that determination regarding validity, the District Court did not consider likelihood of confusion claim.

• B&B Hardware’s registration of SEALTIGHT remained in force because Hargis did not counterclaim for cancellation of that registration.

• Hargis subsequently petitioned to cancel B&B Hardware’s registration of SEALTIGHT on ground of abandonment.

• Cancellation proceeding was dismissed because the registration was then more than five years old and thus precluded by § 14 of the Federal Trademark Act.

November 07, 2014

19


OPPOSITION PROCEEDING (continued)

TTAB recognized anomaly that even though B&B Hardware is precluded from enjoining Hargis’s

use of SEALTITE based on earlier finding that SEALTIGHT is merely descriptive, B&B Hardware

may still rely on its registration of SEALTIGHT because that registration remained in force although

B&B Hardware could not rely on any common law rights in that mark.

November 07, 2014

20


OPPOSITION PROCEEDING (continued)

TTAB applied the DuPont likelihood of confusion factors and found that confusion is likely when:• Marks are confusingly similar – based in part on Hargis’ admission that marks are

phonetic equivalents.• Products are commercially related even used for different end purposes and sold in

different channels of trade. Hargis did not appeal to Federal Circuit or file a § 21(b) de novo appeal – result is that SEALTITE

application was deemed abandoned.

November 07, 2014

21


INFRINGEMENT ACTION

After the TTAB decision, B&B Hardware filed an infringement and unfair competition action in U.S. District Court for E.D. of Arkansas.

Hargis counterclaimed alleging fraudulent procurement and § 43(a) unfair competition. Seven day jury trial -- verdict dismissing all of B&B Hardware’s claims. B&B Hardware filed a post-verdict motion for judgment as matter of law on ground that District

Court improperly refused to defer to the TTAB’s likelihood of confusion decision.

November 07, 2014

22


POST-VERDICT MOTION

District Court denied post-verdict motion.• TTAB findings are controlling in a § 21(b) de novo appeal unless contrary is established

by evidence carrying a thorough conviction.• That legal principle is irrelevant because Hargis did not file de novo appeal, but rather

brought a new infringement action.• Jury instructions applied the Eighth Circuit’s SquirtCo confusion factors, which basically

overlap the DuPont factors.• Jury verdict that confusion is not likely was based on evidence showing specific

differences between parties’ products and their end uses.• District Court held that jury verdict precluded application of TTAB’s decision on likelihood

of confusion.

November 07, 2014

23


APPEAL TO U.S. COURT OF APPEALS FOR EIGHTH CIRCUIT

B&B Hardware’s principal argument on appeal -- District Court erred in not giving either preclusive effect or deference to TTAB’s finding of likelihood of confusion.

Court of Appeals held that issue preclusion was not applicable because the likelihood of confusion issues decided by TTAB and the District Court were not the same.

• TTAB did not give sufficient weight to marketplace usage of the marks, including the different pricing and different marketing conditions, and non-competitive nature of products.

• TTAB’s finding of likelihood of confusion should not be given preclusive effect because TTAB did not decide the same likelihood of confusion issue presented by evidence in the infringement action.

November 07, 2014

24


APPEAL TO U.S. COURT OF APPEALS FOR EIGHTH CIRCUIT (continued)

District Court refused to admit the TTAB’s decision because it would be highly confusing and misleading to jury.

• B&B Hardware argued that District Court abused its discretion by refusing to admit TTAB’s decision into evidence.

• Court of Appeals found no abuse of discretion because the TTAB’s decision only had minimal probative value in the infringement context.

November 07, 2014

25


APPEAL TO U.S. COURT OF APPEALS FOR EIGHTH CIRCUIT

Dissent -- Vigorous dissent by Judge Colloton.• Differences between the likelihood of confusion tests applied by the TTAB and the

District Court were minimal.• TTAB’s likelihood of analysis was based on all of the relevant facts in evidence.

November 07, 2014

26


PETITION FOR CERTIORARI

B&B Hardware’s basic argument: the Eighth Circuit’s decision is in conflict with the law in other Circuits.

Solicitor General• At Supreme Court’s request, the Solicitor General submitted a brief stating the federal

government’s position.• TTAB’s likelihood of confusion finding should be given preclusive effect in a subsequent

infringement action if the same issue is presented, but not if there are material differences with respect to the actual use of the marks in issue.

November 07, 2014

27


November 07, 2014

28


B&B v. Hargis:

The Circuit Split and Arguments of the Parties and Amici

The Circuit Split

Third and Seventh Circuits: Accord preclusive effect to TTAB decisions on the likelihood of confusion question.

Second Circuit: Where the TTAB has compared conflicting marks in their entire marketplace context, the factual basis for the likelihood of confusion issue is the same, the issues are the same, and collateral estoppel is appropriate.

Fifth and Eleventh Circuits: Deny preclusive effect to all TTAB decisions. But district courts should be deferential to TTAB findings as to confusing similarity of marks… unless the contrary is established by evidence which, in character and amount carries thorough conviction.

Eighth Circuit: Application of collateral estoppel may be appropriate where TTAB is acting in a judicial capacity but only when the same issue is being decided. Court found that the issues of likelihood of confusion decided by the TTAB were not the same as those decided by the district court. Further, the court held that no deference was owed to the TTAB determinations.

November 07, 2014

29


Petitioner’s Arguments

In the federal system, litigants get one full and fair opportunity to litigate and appeal an issue.

Likelihood of confusion before the TTAB is the same issue as likelihood of confusion before a district court.

The statute uses the same language throughout.

Both § 1057 and § 1114 incorporate a single concept dating back to 1881.

The statutory structure demonstrates that registration and infringement proceedings both apply the same concept of likelihood of confusion.

Congress consciously amended the Lanham Act to ensure that the Board could consider all relevant evidence.

Minor variations in factors between circuits are irrelevant.

An opposer in a registration proceeding and a plaintiff in an infringement proceeding bear the same burden.

November 07, 2014

30


Petitioner’s Arguments (cont’d.)

The Eighth Circuit wrongly second-guessed the substance of the TTAB’s decision.

The Board considered marketplace context.

Preclusion does not turn on the Board’s analysis of each factor.

Because the two proceedings involved the same legal issue, the same marks, and the same goods, the Eighth Circuit’s denial of preclusion should be reversed.

November 07, 2014

31


Amici in Support of Petitioner

The United States Government

The doctrine of issue preclusion applied to Board determinations in opposition proceedings. When an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate, preclusion doctrines apply.

Issue preclusion likely barred relitigation of the Board’s likelihood-of-confusion determination.

The court of appeals’ three grounds for denying preclusive effect to the Board’s likelihood-of-confusion determination were legally erroneous.

Faithfully enforcing traditional preclusion doctrines is especially important in the trademark context.

November 07, 2014

32


Amici in Support of Neither Party

American Intellectual Property Law Association

TTAB decisions may have preclusive effect, but only in appropriate and narrow circumstances. The TTAB must have considered evidence of marketplace usage of both marks.

Broad application of issue preclusion could negatively transform inter partes practice before the TTAB. Preclusion should be the exception and not the rule. Parties litigate TTAB disputes very differently than federal litigation.

No deference should be afforded if issue preclusion does not apply because the TTAB decided a different issue.

November 07, 2014

33



Intellectual Property Law Association of Chicago

There is a dichotomy of TTAB cases. Some TTAB cases are resolved in a manner that permits evidence on, and an assessment of, the real world usage of trademarks by one of the parties. These cases involve challenges to federal trademark registrations based on common law usages of trademarks

TTAB cases routinely function as typical litigation cases, with discovery and trial.

The place of the Seventh Amendment may need to be resolved if issue preclusion is applied.

November 07, 2014

34



International Trademark Association

TTAB decisions are eligible for issue preclusion despite the fact that the TTAB is an administrative agency.

Circuit courts have applied varying standards in deciding whether to accord preclusive effect to TTAB decisions on confusion.

The Eighth Circuit properly rejected issue preclusion in light of the many differences between TTAB and civil court adjudication.

TTAB inter partes proceedings do not afford registrants a full and fair opportunity to litigate likelihood of confusion

Because of the significant differences in the standards and procedures applied by the TTAB and federal courts, preclusion should not apply to TTAB findings on the likelihood of confusion.

November 07, 2014

35


Respondents’ Arguments

TTAB decisions do not bind Article III courts in deciding infringement claims.

Congress intended infringement issues to be decided de novo by Article III courts.

Preclusion in this context would not serve the purpose of res judicata or collateral estoppel.

The Doctrine of Constitutional Avoidance militates against preclusion.

November 07, 2014

36


Respondents’ Arguments (cont’d.)

Registration proceedings and infringement actions resolve distinct issues.

The Lanham Act’s registration and infringement provisions use different language to establish distinct inquiries.

The scope of the likelihood-of-confusion inquiries in registration and infringement proceedings is not the same.

November 07, 2014

37


Respondents’ Arguments (cont’d.)

Under any standard of preclusion, the Eighth Circuit’s decision is correct.

Registration proceedings can at most preclude relitigation of certain findings of fact.

The TTAB’s findings in this case could not determine the outcome of the district court litigation.

November 07, 2014

38


Amici in Support of Respondents

The Intellectual Property Law Section of the State Bar of Texas

Two of the Supreme Court’s predicate requirements for issue preclusion were not met below.

The statutory language shows Congress did not intend TTAB opposition decisions to give rise to issue preclusion.

TTAB procedures do not allow a “full and fair opportunity to litigate” that supports issue preclusion.

November 07, 2014

39


Amici in Support of Respondents

The New York Intellectual Property Law Association

A TTAB decision should not be entitled to preclusive effect as a matter of course.

Minimal evidentiary weight should be given to a TTAB decision on the rare occasion that the TTAB considers the marketplace context in a meaningful way.

November 07, 2014

40


B&B Hardware v. Hargis –

What Issue-Preclusive Effect, If Any, Should Trademark Trial and Appeal Board Proceedings Have on Subsequent Infringement Litigation?

November 07, 2014

41


General Concepts

Collateral Estoppel (Issue Preclusion) – an issue decided in one case is treated as decided, without further proof, in any subsequent litigation involving that issue.

Elements

• Prior litigation involving the identical issue.

• The issue was actually litigated in the first proceeding, and the party against whom collateral estoppel is being asserted must have had a full and fair opportunity to litigate the issue in the first proceeding.

• The issue was necessarily decided and rendered as a necessary part of the final judgment in the first proceeding.

Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n. 5 (1978)

November 07, 2014

42


General Concepts

Res Judicata (Claim Preclusion) – When a judgment is rendered in one litigation, the parties are precluded, in any future litigation, from raising claims that were raised, or could have been raised, in that first lawsuit.

Elements

• Prior litigation in which identical claims were raised, or could have been raised. Claims are sufficiently identical if they share a common nucleus of operative fact.

• Parties in the second litigation are identical to the parties in the original litigation, or be in privity with the parties in the first action.

• There must have been a final judgment on the merits in the original litigation.

Allen v. McCurry, 449 U.S. 90, 94-95 (1980)

November 07, 2014

43


Issue Preclusion, from the Board to a Court

Under what circumstances, if ever, should the Trademark Trial and Appeal Board’s (“TTAB’s”) findings on likelihood of confusion be given preclusive effect in subsequent trademark infringement litigation?

Did the TTAB render its decision based upon the context of marketplace usage?

November 07, 2014

44


Issue Preclusion, from the Board to a Court (Cont’d)

Was the record before the TTAB essentially identical to the record in the federal court action?

Were the same likelihood of confusion factors applied?

November 07, 2014

45


Issue Preclusion, from the Board to a Court (Cont’d)

Was the same scope of discovery allowed?

Does it matter that the TTAB does not hear live witnesses?

Does it matter that there are different objectives at stake?

November 07, 2014

46


Deference, from the Board to a Court

If not given preclusive effect, under what circumstances, if ever, should the TTAB’s findings on likelihood of confusion be given deference in subsequent trademark infringement litigation?

November 07, 2014

47


Deference, from the Board to a Court (Cont’d)

Should the facts decided by the Board be deemed established unless the contrary is proven by thorough conviction in the subsequent litigation (See, Trademark Act § 21(b), 15 U.S.C. § 1071(b))?

November 07, 2014

48


Some Weight, from the Board to a Court

If not given preclusive effect or deference, under what circumstances, if ever, should the TTAB’s findings on likelihood of confusion be given some weight (and considered by the jury) in subsequent trademark infringement litigation?

November 07, 2014

49


Some Weight, from the Board to a Court (Cont’d)

The jury would be provided with the facts found by the TTAB in its published decision. Would this be too confusing to the jury or unduly prejudicial to one of the parties?

November 07, 2014

50


Strategic Impact of the Supreme Court’s Ultimate Decision

Availability of a stay of the TTAB proceeding in favor of a federal court action Otherwise, will proceedings before the TTAB be litigated more strenuously? Avenues of Appeal to the Losing Party

• District Court “Appeal”• Appeal to the Federal Circuit Court of Appeals

November 07, 2014

51


Strategic Impact of the Supreme Court’s Ultimate Decision (Cont’d)

Will the Plaintiff forgo a TTAB proceeding and file an infringement action instead?• Is this an Option with Intent-to-Use Based Trademark Applications?

Include a Claim in the Infringement Complaint under Lanham Act § 37, 15 U.S.C. § 1119, requesting a Determination of the Defendant’s Right to Register its Mark

November 07, 2014

52


Strategic Impact of the Supreme Court’s Ultimate Decision (Cont’d)

Will the Court’s decision affect the ability of the junior party to obtain declaratory judgment jurisdiction in a federal court action?

Could or should the junior party withdraw its application before the U.S. Patent and Trademark Office and wait to be sued in federal court?

Are there any implications upon a litigant’s 7th Amendment right to a jury trial?

November 07, 2014

53


WHY THIS CASE SHOULD CONCERN THE PATENT BAR

November 07, 2014

54

Chico GholzPartnerOblon, Spivak, McClelland, Maier & Neustadt, LLP


November 07, 2014

55


(1) In patent interferences (and other inter partes patent proceedings before the Patent Trial and Appeal Board (“PTAB”)), the PTAB has jurisdiction to decide issues which are also decided by district courts in patent infringement actions. Thus, the patent situation is directly analogous to the trademark situation.

(2) The Supreme Court is comprised of generalists who appear to see the three species of the genus intellectual property law as more analogous than do the specialists in those three species.

(3) Thus, it is unlikely that the Supreme Court will carefully cabin its opinion in this case so that it applies only to trademark practice, thereby upsetting settled patent law. (I don’t think that our copyright colleagues are at risk on this one.)


November 07, 2014

56


(4) Broadly speaking, the Supreme Court could make any of four holdings:

(i) The prior administrative decision must be given preclusive effect on the broad issue of validity/registrability;

(ii) The prior administrative decision must be given deference – that is, it stands unless the subsequent Article III judge (or state court analog) or jury is convinced that it was not just wrong, but screwy;

(iii) The prior administrative decision must be given respectful attention by the subsequent Article III judge (or state court analog) or jury, but the subsequent Article III judge (or state court analog) or jury need not feel the least bit constrained by the prior administrative decision; and

(iv) The subsequent Article III judge (or state court analog) can pretend that the prior administrative decision never happened – even to the extent of prohibiting counsel for the party that prevailed in the prior administrative decision from telling the jury about the prior administrative decision.


November 07, 2014

57


(5) The foundational Supreme Court opinions on whether or not administrative decisions should be given preclusive effect are Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979), and United States v. Utah Construction & Mining Co., 384 U.S. 394 (1966). They hold that administrative decisions should be given preclusive effect if the procedures of the administrative body that made the decision in question is sufficiently court-like.

(6) Obviously, the qualifying adverb gives courts deciding whether or not to give a decision by a given administrative body a great deal of wiggle room.

(7) However, the procedures of the TTAB in inter partes proceedings, like the procedures of the PTAB in patent interferences, are about as court-like as the procedures of an administrative body can be. This means that it is extremely unlikely that the Supreme Court will say that those proceedings do not quality for preclusive effect.


November 07, 2014

58


(8) The foundational opinion of the Federal Circuit on whether or not a decision of the PTAB in patent interferences should be given preclusive effect is actually an opinion of a predecessor of the Federal Circuit (the United States Court of Claims) about a decision of a predecessor of the PTAB (the Board of Interference Examiners). However, the Federal Circuit’s first opinion adopted as its precedent the prior opinions of the United States Court of Claims and the United States Court of Customs and Patent Appeals, South Corp. v. United States, 690 F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982) (in banc), and the Federal Circuit has uniformly applied to the PTAB its precedents concerning the PTAB’s predecessors.

(9) So, the foundational opinion of the Federal Circuit on this subject is Coakwell v. United States, 292 F.2d 918, 130 USPQ 231 (Ct. Cl. 1961).


November 07, 2014

59


(10) In Coakwell, the Board of Interference Examiners had held that Coakwell’s opponent (Ferwerda) was the first inventor. That is, the board had apparently decided only priority.

(11) Coakwell filed a 35 USC 146 action, but it was dismissed as untimely.

(12) In the subsequent Court of Claims infringement action, the defendant (which, of course, was the United States) “assert[ed] that … [Coakwell’s] patent was anticipated by the prior art and prior knowledge and is, therefore, invalid.”


November 07, 2014

60


(13) However, the Court of Claims held:

It is obvious that a decree of the District Court upholding the action of the Patent Office, affirmed on appeal, would be a final adjudication of the question and would be res adjudicate in all other courts, and defendant would not be heard to say in this court that plaintiff was not the first inventor. Where the losing party fails to effectively review the Patent Office action in one of the courts and it becomes final, it is equally binding on the parties. It has the same finality as the judgment of either of the courts would have had if one of them had reviewed it.

(14) The Court of Claims did not permit the Government to put on evidence to support its contention that Ferwerda’s claims were unpatentable as “anticipated by the prior art and prior knowledge.”


November 07, 2014

61


(15) I believe that Coakwell is citable for the proposition that an adverse decision by the PTAB precludes the losing party from raising any invalidity defense in a subsequent infringement action by the party that won the interference. However, the district courts have fractured on the issue of the scope of the preclusive effect of the board’s decision.

(16) What I believe is the best opinion on the subject, Meritor Transmission Corp. v. Eaton Corp., 81 USPQ2d 1357 (W.D.N.C. 2006), gives the preclusive effect of the board’s decision very broad scope:

Courts applying issue preclusion to intellectual property litigation have focused on the overall issue previously litigated between the parties, rather than the arguments made in support of the issue. “[O]nce an issue is raised and determined, it is the entire issue that is precluded, not just the particular arguments raised in support of it in the first case….”


November 07, 2014

62


(17) In Meritor the district court treated “the entire issue” as the issue of validity, not as either the issue of validity over the references that Eaton had relied on before the board or the issue of validity under 35 USC 103 over any reference or combination of references, whether or not relied on by Eaton before the board.

(18) Going back to paragraph (4), The Eighth Circuit adopted the fourth possibility for inter partes TTAB decisions. That is, it held that the trial court in the subsequent infringement action by the party that won the inter partes TTAB proceeding can pretend that the inter partes TTAB proceeding never happened, even to the extent of prohibiting counsel for the party that won before the TTAB from mentioning the TTAB proceeding to the jury.

(19) Meritor clearly adopts that first possibility – and I think that Coakwell did too.


November 07, 2014

63


(20) B&B Hardware is arguing for the first possibility. It argues that, on remand from the Supreme Court, all that the district court will have to do is to determine (a) the amount of damages to which it is entitled and (b) the scope of the permanent injunction to which it is entitled.

(21) Actually, there is one more issue that the district court will have to decide on remand from the Supreme Court even if B&B prevails on its fundamental contentions: whether Hargis Industries actually used the mark recited in its application on the goods recited in its application. (Note that Meritor ultimately lost on the patent analog of that issue. That is, the Federal Circuit held that Eaton did not infringe Meritor’s patent.)


November 07, 2014

64


(22) The question for the patent bar, however, is whether the Supreme Court can decide this case without upsetting the patent bar’s reasonably settled expectations – or, in other words, without at least impliedly overruling Meritor.

(23) Note here that we’re talking only about patent interferences and, perhaps, derivation proceedings. The AIA itself defines the preclusive effects of the other three new proceedings created by the AIA. Only the preclusive effect of patent interferences is a creature of Federal common law.

(24) In this case, the district court refused to apply preclusion in part on the ground that the TTAB is an administrative body. In light of the Supreme Court precedent cited in paragraph (5), I think that it is highly unlikely that the Supreme Court would so hold, and Hargis isn’t even making that argument.


November 07, 2014

65


(25) The Supreme Court could buy Hargis’s argument that the administrative agency (i.e., the TTAB) and the district court decided different issues. However, that seems unlikely to this patent attorney. In particular, the fact that the same party bears the burdens of proof and persuasion on the LOC issue before the two tribunals seems to me to make preclusion even more appropriate here than in the patent analog, where the party that bears the burdens of proof and persuasion on the issue of unpatentability before the PTAB has a different, higher burden of proof and persuasion before the district court if it seeks to challenge the validity of its opponent’s claims in the subsequent infringement action.


November 07, 2014

66


(26) The Supreme Court could also distinguish the patent situation from the trademark situation on the ground that the decisions of the techie APJs should be given more weight (in comparison to the decisions of the Article III judges, their state court analogs, and juries) than the decisions of the ATJs, whose decisions on LOC issues are arguably entitled to no more weight than the decisions of juries, Article III judges, and their state court analogs.


November 07, 2014

67


(27) However, I think that the most exciting question for the trademark lawyers in our audience is what effect even a partial victory by B&B Hardware would have on the income of trademark lawyers — and, perhaps more importantly, on the distribution of that income.

(28) In the patent world, the advent of the new AIA inter partes patent proceedings is arguably very good for the overall income of patent lawyers, considered as a group. There are those who think that they are such an excellent vehicle for “killing bad patents” that they will significantly increase the overall workload of the patent bar.


November 07, 2014

68


(29) Perhaps equally significantly, however, the advent of the new AIA patent proceedings is already having an effect on the distribution of the overall income of patent lawyers – in favor of those of us who have made their livings toiling in and with the Patent and Trademark Office.

(30) While I am no trademark lawyer, it seems to me that the skill sets of those of my trademark colleagues who have made their livings toiling in and with the Patent and Trademark Office is significantly different than the skill sets of those of my trademark colleagues who have made their livings toiling in the Federal district courts and their state court analogs. At least two of the three trademark lawyers on this panel disagree. Do you agree or disagree and, either way, why?

November 07, 2014

69

CLE PROCESSINGThe Knowledge Group offers complete CLE processing solutions for your webcasts and land events. This comprehensive service includes everything you need to offer CLE credit at your conference: Complete end-to-end CLE credit Solutions Setting up your marketing collateral properly. Completing and filing all of the applications to the state bar. Guidance on how to structure content meet course material requirements for the state Bars. Sign up forms to be used to check & confirm attendance at your event. Issuing official Certificates of Attendance for credit to attendees.

Obtaining CLE credit varies from state to state and the rules can be complex. The Knowledge Group will help you navigate the complexities via complete cost effective CLE solutions for your conferences. Most CLE processing plans are just $499 plus filing fees and postage.

To learn more email us at [email protected] or CALL 646-202-9344


November 07, 2014

70

PRIVATE LABEL PROGRAM & INTERNAL TRAINING The Knowledge Group provides complete private label webcasts and in-house training solutions. Developing and executing webcasts can be a huge logistical nightmare. There are a lot of moving parts and devolving a program that is executed smoothly and cost effectively can prove to be a significant challenge for companies who do not produce events on a regular basis. Live events require a high level of proficiency in order to execute proficiently. Our producers will plan and develop your webcast for you and our webcast technicians will execute your live event with expert precision. We have produced over 1000 live webcasts. Put our vast expertise to work for you. Let us develop a professional webcast for your firm that will impress all your clients and internal stakeholders. Private Label Programs Include: Complete Project Management Topic Development Recruitment of Speakers (Or you can use your own) Marketing Material Design PR Campaign Marketing Campaign Event Webpage Design Slides: Design and Content Development Speaker coordination: Arranging & Executing Calls, Coordinating Slides & Content Attendee Registration Complete LIVE Event Management for Speaker and Attendees including:

o Technical Supporto Event Moderatoro Running the Live event (All Aspects)o Multiple Technical Back-ups & Redundancies to Ensure a Perfect Live Evento Webcast Recording (MP3 Audio & MP4 Video)o Post Webcast Performance Survey

CLE and CPE Processing Private Label Programs Start at just $999

November 07, 2014

71

RESEARCH & BUSINESS PROCESS OUTSOURCING The Knowledge Group specializes in highly focused and intelligent market and topic research. Outsource your research projects and business processes to our team of experts. Normally we can run programs for less than 50% of what it would cost you to do it in-house. Here are some ideal uses for our services: Market Research and Production

o List Research (Prospects, Clients, Market Evaluation, Sales Lists, Surveys)o Design of Electronic Marketing Collateralo Executing Online Marketing Campaigns (Direct Email, PR Campaigns)o Website Designo Social Media

Analysis & Research

o Research Companies & Produce Reportso Research for Cases o Specialized Research Projects

eSales (Electronic Inside Sales – Email and Online)

o Sales Leads Developmento eSales Campaigns

Inside Sales people will prospect for leased, contact them and coordinate with your sales team to follow up. Our Inside eSales reps specialize in developing leads for big-ticket enterprise level products and services.

o Electronic Database Building – Comprehensive service which includes development of sales leads, contacting clients, scoring leads, adding notes and transferring the entire data set to you for your internal sales reps.

eCustomer Service (Electronic Inside Sales – Email and Online)

o Real-Time Customer Service for Your clients Online Chat Email

o Follow-Up Customer Service Responds to emails Conducts Research Replies Back to Your Customer

Please note these are just a few ways our experts can help with your Business Process Outsourcing needs. If you have a project not specifically listed above please contact us to see if we can help.

► 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:

November 07, 2014

72





November 07, 2014

73

Welcome to the Knowledge Group Unlimited Subscription Programs. We have Two Options Available for You: FREE UNLIMITED: This program is free of charge with no further costs or obligations. It includes:

Unlimited access to over 15,000 pages of course material from all Knowledge Group Webcasts. Subscribers to this program can download any slides, white papers, or supplemental material covered during all live webcasts.

50% discount for purchase of all Live webcasts and downloaded recordings.

PAID UNLIMITED: Our most comprehensive and cost-effective plan, for a one-time fee: Access to all LIVE Webcasts (Normally $199 to $349 for each event without a subscription). Including: Bring-a-Friend – Invite a

client or associate outside your firm to attend for FREE. Sign up for as many webcasts as you wish. Access to all of Recorded/Archived Events & Course Material includes 1,500+ hours of audio material (Normally $299 for each

event without a subscription). Free CLE/CPE/CE Processing3 (Normally $49 Per Course without a subscription). Access to over 15,000 pages of course material from Knowledge Group Webcasts. Ability to invite a guest of your choice to attend any live webcast Free of charge. (Exclusive benefit only available for PAID

UNLIMITED subscribers.) 6 Month Subscription is $299 with No Additional Fees. Other options are available. Special Offer: Sign up today and add 2 of your colleagues to your plan for free. Check the “Triple Play” box on the sign-up

sheet contained in the link below.




November 07, 2014

74

Knowledge Group UNLIMITED PAID Subscription Programs Pricing: Individual Subscription Fees: (2 Options)Semi-Annual: $299 one-time fee for a 6 month subscription with unlimited access to all webcasts, recordings, and materials. Annual: $499 one-time fee for a 12 month unlimited subscription with unlimited access to all webcasts, recordings, and materials.

Group plans are available. See the registration form for details.

Best ways to sign up:1. Fill out the sign up form attached to the post conference survey email.2. Sign up online by clicking the link contained in the post conference survey email. 3. Click the link below or the one we just posted in the chat window to the right. https://gkc.memberclicks.net/index.php?option=com_mc&view=mc&mcid=form_157964

Discounts: Enroll today and you will be eligible for the “Triple Play” program and 3% off if you pay by credit card. Also we will waive the $49 CLE/CPE processing fee for today’s conference. See the form attached to the post conference survey email for details.

Questions: Send an email to: [email protected] with “Unlimited” in the subject.




November 07, 2014

75

ABOUT THE KNOWLEDGE GROUP, LLC.

The Knowledge Group, LLC is an organization that produces live webcasts which examine regulatory

changes and their impacts across a variety of industries. “We bring together the world's leading

authorities and industry participants through informative two-hour webcasts to study the impact of

changing regulations.”

If you would like to be informed of other upcoming events, please click here.

Disclaimer:

The Knowledge Group, LLC is producing this event for information purposes only. We do not intend to provide or offer business advice. The contents of this event are based upon the opinions of our speakers. The Knowledge Group does not warrant their accuracy and completeness. The statements made by them are based on their independent opinions and does not necessarily reflect that of The Knowledge Group‘s views. In no event shall The Knowledge Group be liable to any person or business entity for any special, direct, indirect, punitive, incidental or consequential damages as a result of any information gathered from this webcast.

Certain images and/or photos on this page are the copyrighted property of 123RF Limited, their Contributors or Licensed Partners and are being used with permission under license. These images and/or photos may not be copied or downloaded without permission from 123RF Limited

http://theknowledgegroup.org/

http://theknowledgegroup.org/all-events-list/

trademark litigation in light of b&b hardware, inc. v. hargis industries, inc. live webcast

Education

unlimited access

month unlimited subscription

knowledge group webcasts

month subscription

live webcasts

group registration form

todays event

group plans