INTA files motion for leave to file amicus brief on the preclusive effect of TTAB decisions on registrability before US Second Circuit Court of Appeals  

New York, New York—December 19, 2024—The International Trademark Association (INTA) filed a motion for leave to file an amicus brief in the United States Second Circuit Court of Appeals in Cesari S.R.L. v. Peju Province Winery L.P. et al., Appeal No. 24-1903. In the proposed brief, attached to the motion, INTA urges the court to rule that in infringement litigation, no preclusive effect should be given to a prior decision of the US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) finding the parties’ marks likely to be confused if the TTAB excluded evidence of marketplace differences relevant to determining the entire marketplace context (e.g., packaging, house marks, price, trade channels, etc.).  

INTA’s proposed amicus brief distinguishes B&B Hardware, Inc. v. Hargis Industries, Inc., 575 US 138 (2015), where the US Supreme Court ruled that a prior TTAB decision can be preclusive in subsequent infringement litigation “if the ordinary elements of issue preclusion are met.” 

In 2003, Peju Province applied to register LIANA for “wine.” Cesari opposed it based on its registration for LIANO for “wines.” Peju Province denied that confusion was likely, highlighting differences between the parties’ respective uses in the marketplace. In 2004, the TTAB granted summary judgment for Cesari based only on a comparison of the parties’ respective application and registration and without considering Peju Province’s proffered marketplace distinctions.  

Peju Province continued use of the mark and, in 2016, Cesari filed an infringement action. Cesari moved for partial summary judgment, arguing that Peju Province was collaterally estopped from relitigating the TTAB’s 2004 decision. Peju Province opposed, arguing that the TTAB did not consider any evidence of the way the parties used the marks in the marketplace (including, e.g., differences in the type of wines, label designs, and geographic areas and trade channels where the wines were sold). The District Court disregarded Peju Province’s proffered evidence of marketplace distinctions and ruled that the 2004 TTAB decision was preclusive against Peju Province as to the likelihood of confusion. The case has now been appealed to the Second Circuit. 

In its proposed amicus brief, INTA distinguishes B&B Hardware, Inc., where the Supreme Court ruled that a TTAB finding of likelihood of confusion may give rise to issue preclusion but emphasized that this was not a general rule and that the applicability of preclusion must be decided on a case-by-case basis. INTA argues that the TTAB decision should not have a preclusive effect here because the TTAB failed to consider proffered evidence of actual marketplace conditions when it ruled that confusion was likely. Should the court grant the motion, INTA will file the amicus brief. 

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