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SCOTUS Opts Not To Remand Case Raising Preclusion Question Answered in B&B Hardware

On April 27, 2015 the Supreme Court surprisingly denied certiorari in Escamilla v. M2 Tech., Inc., U.S., No. 14-1012 rather than remanding the case for further consideration in light of the High Court's recent decision in B&B Hardware, Inc. v. Hargis Industries, Inc. et al., No. 13-352, 575 U.S. ___ (2015).

The petitioner in Escamilla owns the "M2" trademark and sought to enjoin the respondents from continuing to use the mark "M2 Technology" on the grounds that such use was likely to cause confusion with the petitioner's mark. The district court denied the petitioner's claim for injunctive relief finding, among other things, no likelihood of confusion between the marks. On appeal, the petitioner made a number of arguments, including that the Trademark Trial and Appeal Board (TTAB) found (in an adversarial proceeding) that there was a likelihood of confusion between the marks and that the district court erred in failing to give this determination preclusive effect. Although the Fifth Circuit affirmed the district court's finding of no likelihood of confusion without ever opining on the preclusion issue, it had to have rejected the petitioner's preclusion argument in light of the TTAB's prior confusion determination. Such a rejection would have been fully in accord with circuit precedent holding that TTAB decisions never have preclusive effect. See Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 9-10 (5th Cir. 1974). 

However, such a rejection appears to be at odds with the Supreme Court's recent decision in B&B Hardware, wherein the Court held that TTAB likelihood of confusion determinationscan have preclusive effect so long as (i) the other ordinary elements of issue preclusion are met; and (ii) the usages adjudicated by the TTAB are "materially" the same as those litigated in the infringement action. It is therefore surprising that the Court chose to deny certiorari rather than remand the case to the Fifth Circuit for further consideration in light of B&B Hardware. 

See the Supreme Court's decision in B&B Hardware here.

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© 2021 Proskauer Rose LLP. National Law Review, Volume V, Number 122
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About this Author

Brendan O'Rourke, Litigation Law, Proskauer Rose Law Firm
Partner

Brendan O'Rourke is co-Chair of the firm’s Litigation Department and co-head of the False Advertising & Trademark Group. From the inception of his career, Brendan has concentrated in the field of trademark, false advertising, and unfair competition law, and has provided day-to-day trademark, false advertising, and Lanham Act counseling to many Fortune 500 clients, as well as start-up companies and entrepreneurs. He is a first-rate, first-chair trial lawyer, having successfully tried numerous trademark, trade dress, unfair competition, false advertising, copyright and...

212-969-3120
Lawrence I Weinstein, False Advertising and Trademark Copywright Law, Proskauer
Partner

Larry Weinstein is a Partner in Proskauer's Litigation Department. He is co-head of the firm’s Intellectual Property Litigation Group, and also co-head of the firm’s False Advertising & Trademark Practice. Larry is both a distinguished trial lawyer and counselor, whose practice covers a broad spectrum of intellectual property law, including Lanham Act false advertising and trademark cases, consumer class action cases, NAD and FTC proceedings, and trade secret and copyright litigations, as well as sports, art and other complex commercial cases.

212-969-3240
Celia Cohen, Litigation Attorney, Proskauer Rose Law Firm
Associate

Celia Cohen is an associate in the Litigation Department and a member of the White Collar Defense & Investigations and Appellate groups. She represents clients in an array of complex litigation matters, both criminal and civil.

In her white collar practice, Celia has represented both individual and corporate clients in prosecutions involving a broad range of federal crimes, including mail and wire fraud, money laundering and antitrust charges. She also has assisted clients with complex criminal forfeiture actions.  In addition, Celia...

212.969.3126
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