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`
`United States Court of Appeals for the Federal Circuit
`
`04-1254
`(Opposition No. 91/080,606)
`
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`
`MAYER/BERKSHIRE CORP.,
`
`v.
`
`BERKSHIRE FASHIONS,
`
`lNC,,
`
`Appellant,
`
`Appellee.
`
`JUDGMENT
`
`ON APPEAL from the
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`
`In CASE NO(S).
`
`Opposition No. 91/080,606
`
`This CAUSE having been heard and considered, it is
`
`ORDERED and ADJUDGED:
`
`VACATED AND REMANDED
`
`ENTERED BY ORDER OF THE COURT
`
`DATED:_____
`
`SEP 22 2°05
`
`§
`
`
`
`erk
`Jan Horbaly,
`CERTIHED COPY
`c RTIFY THIS DOCUMENT
`‘ HEREtgurfAND CORRECT cow
`OF THE ORIGINAL ON FILE.
`
`UNITED STATES COURT OF APPEALS
`FOR THE F DERAL CIRCUT
`,.
`BW
`Date: UD 1 D5
`
`
`
`

`
`
`
`United States Court of Appeals for the Federal Circuit
`
`04-1254
`
`(Opposition No. 91/080,606)
`
`MAYER/BERKSHIRE CORP.,
`
`Appellant,
`
`BERKSHIRE FASHIONS, |NC.,
`
`Appellee.
`
`gnmes B. Swire, Dorsey & Whitney LLP, of New York, New York, argued for
`appellant. V\fith him on the brief was Sandra Edelman.
`
`ggzra Sutton, Ezra Sutton, P.A., of Woodbridge, New Jersey, argued for appellee.
`
`Appealed from: United States Patent and Trademark Office, Trademark Trial and
`Appeal Board
`
`

`
`
`
`United States Court of Appeals for the Federal Circuit
`
`04-1254
`
`(Opposition No. 91/080,606)
`
`MAYER/BERKSHIRE CORP.,
`
`Appellant,
`
`v.
`
`BERKSHIRE FASHIONS, lNC.,
`
`Appeilee.
`
`DECIDED: September 22, 2005
`
`Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and BRYSON,
`Circuit Judge.
`
`NEWMAN, Circuit Judge.
`
`Mayer/Berkshire Corp. appeals the decision of the United States Patent and
`
`Trademark Office, Trademark Trial and Appeal Board,‘ dismissing its opposition to the
`
`registration by Berkshire Fashions, Inc. of the mark BERKSHIRE for various categories of
`
`clothing. The Board held that the opposition is barred by res judicata and collateral
`
`Myer/Berkshire Corp. v. Berkshire Fashions, |nc., Opposition No. 80,606
`1
`(TTAB Dec. 17, 2003).
`
`

`
`
`
`estoppel arising; from prior district court infringement litigation. We conclude that the Board
`
`erred in its application of these doctrines. The dismissal is vacated and the case is
`
`remanded to the PTO for further proceedings.
`
`BACKGROUND
`
`Both parties use the word BERKSHIRE in theirtrade names and as a trademark in
`
`association with various items of clothing and accessories. Mayer/Berkshire states that it
`
`and its predecessor companies have used BERKSHIRE since 1906 in their trade name
`
`and since 1925 as a trademark in association with apparel including socks, hosiery,
`
`unden/vear, gloves, lingerie, nightgowns, pajamas, t—shirts, Ieotards, and down vests, and
`
`in their retail outlet store with a full range of men's, women's, and children's clothing. As
`
`of 1990 Mayer/lBerkshire had eight registrations for BERKSHIRE in Class 25 for use in
`
`connection with hosiery and apparel items.
`
`Berkshire Fashions states that it has used BERKSHIRE in its trade name since
`
`1945, and as a trademark for various goods.
`
`In September 1981 Berkshire Fashions filed
`
`an application to register the mark BERKSHIRE as applied to articles in Classes 18 and
`
`25. The Class 18 goods included umbrellas, tote bags, and umbrella and scarf sets sold
`
`as a unit. The Class 25 goods included sixteen kinds of apparel, Q; raincoats, sweaters,
`
`pocket squares, scarves, mantillas, belts, gloves, hats, earmuffs, slippers, tops, blouses,
`
`shirts, pants, vests, and uniforms. The examining attorney refused registration in Class 25
`
`because of Mayer/Berkshire's prior registrations of BERKSHIRE in Class 25 for various
`
`items of women's and children's garments. Berkshire Fashions then deleted the Class 25
`
`goods from the application. The application with the remaining Class 18 goods was
`
`04-1254
`
`2
`
`

`
`
`
`passed to publication, and Mayer/Berkshire filed an opposition in July 1984 under Section
`
`13 of the Lanham Trademark Act, 15 U.S.C. §1063.
`
`In 1982 Mayer/Berkshire had filed suit against Berkshire Fashions in the United
`
`States District Court for the District of New Jersey, alleging trademark infringement and
`
`unfair competition. The Board suspended the opposition proceeding in Class 18 until the
`
`district court action was concluded.
`
`In April 1985 the district court case went to the jury,
`
`with the following question:
`
`1.
`
`Have defendants infringed plaintiff's trademark, i.e., is there a
`likelihood of confusion resulting from the use by defendants of
`the trademark and trade name "Berkshire"?
`
`If No, answer no more questions; your deliberations are over.
`
`The jury answered "No," and the district court entered judgment for Berkshire Fashions.
`
`The Board then dismissed Mayer/Berkshire's opposition, and the registration in Class 18
`
`issued to Berkshire Fashions for use of the mark BERKSHIRE with umbrellas, tote bags,
`
`and umbrella and scarf sets. That registration is not here at issue.
`
`In October 1986 Berkshire Fashions filed the application that is the subject of this
`
`appeal, seeking registration for the apparel items in Class 25 that it had removed from the
`
`earlier application. The trademark examiner rejected the application based on six of
`
`Mayer/Berkshire's prior registrations in Class 25. Berkshire Fashions appealed to the
`
`Board, who remanded to the examiner to consider the New Jersey litigation. Berkshire
`
`Fashions submitted a list of trial exhibits in the New Jersey action that included most but
`
`not all of the kinds of items in Berkshire Fashions Class 25 application. Thereafter, after
`
`deleting belts and slippers from the list of goods in the application, the examiner passed
`
`the Class 25 application to publication. Mayer/Berkshire duly filed a notice of opposition,
`
`04-1254
`
`3 I
`
`

`
`
`
`alleging likelihood of confusion between the BERKSHIRE mark applied to the Berkshire
`
`Fashions items in Class 25 and the items subject to Mayer/Berkshire's registered
`
`BERKSHIRE marks.
`
`The lBoard granted summaryjudgment in favor of Berkshire Fashions, ruling thatthe
`
`issue of likelihood of confusion had been decided in the New Jersey civil action and could
`
`not be re—litigated, applying res judicata and collateral estoppel. The Board held that
`
`Mayer/Berkshire was estopped to challenge the registration of BERKSHIRE for the
`
`fourteen kinds of goods in Berkshire Fashions‘ Class 25 application. The TTAB entered
`
`final judgment denying the opposition to the Class 25 registration.
`
`DISCUSSION
`
`This appeal is from the Board's grant of summary judgment in reliance on res
`
`judicata and collateral estoppel based on the district court judgment in the infringement
`
`litigation. When an administrative agency governed by the Federal Rules grants a motion
`
`for summary judgment, the pleadings and record evidence must "show that there is no
`
`genuine issue as to any material fact and that the moving party is entitled to a judgment
`
`as a matter of law." Fed. R. Civ. P. 56(c). The Board has adopted the Federal Rules for
`
`inter partes proceedings. 37 C.F.R. §2.116(a) (2005). The Board's summaryjudgment is
`
`reviewed in accordance with the requirements of Federal Rule 56. 1 Lincoln Logs Ltd.
`
`v. Lincoln P_re£ut Log Homes, Inc., 971 F.2d 732, 734 (Fed. Cir. 1992) (court gives de
`
`novo review to the grant of summary judgment in an opposition proceeding).
`
`Mayer/Berkshire states that the decision of the infringement case in the district court
`
`does not control federal trademark registration, on principles of either res judicata or
`
`collateral estoppel. Mayer/Berkshire states that the decision in the infringement trial was
`
`04-1254
`
`,
`
`4
`
`

`
`
`
`based on evidence showing that much of Berkshire Fashions’ use ofthe word BERKSHIRE
`
`was in its trade name,
`
`in usages such as the label "By Berkshire Fashions" or on
`
`packages, but not in trademark use; and that this presentation explains thejury verdict that
`
`there was not a likelihood of confusion between Berkshire Fashions‘ and Mayer/Berkshire's
`
`identical marks. Thus Mayer/Berkshire argues that the evidence presented to the district
`
`court does not warrant
`
`the summary judgment
`
`in
`
`the opposition proceeding.
`
`Mayer/Berkshir-e also states that the Board is required to consider issues of priority of use
`
`and the scope of the goods in the Class 25 application, issues that were not before the
`
`district court. Mayer/Berkshire urges that preclusion was improperly applied by the Board.
`
`Res judicata, or claim preclusion, protects against re-litigation of a previously
`
`adjudicated claim between the same parties or their privies. As discussed in Parklane
`
`Hosiegy CoLn_p_a_ny, Inc. v. Shore., 439 U.S. 322, 326 n.5 (1979), "Under the doctrine of res
`
`judicata, a judgment on the merits in a prior suit bars a second suit involving the same
`
`parties ortheir privies based on the same cause of action." In Jet, Inc. v. Sewage Aeration
`
`Systems, 223 F.3d 1360, 1362 (Fed. Cir. 2000) this court on reviewing a cancellation
`
`proceeding on appeal from the Board, elaborated that "a second suit will be barred by
`
`claim preclusion if: (1) there is identity of parties (or their privies); (2) there has been an
`
`earlier final judgment on the merits of a claim; and (3) the second claim is based on the
`
`same set of transactional facts as the first."
`
`In the absence of res judicata, the related principle of collateral estoppel or issue
`
`preclusion can also bar relitigation of the same issue in a second action.
`
`In Parklane, 439
`
`U.S. at 326 n.5, the Court explained that "[u]nder the doctrine of collateral estoppel, on the
`
`other hand, the second action is upon a different cause of action and the judgment in the
`
`04-1254
`
`5
`
`

`
`
`
`prior suit precludes re—litigation of issues actually litigated and necessary to the outcome
`
`of the first action." In Montana v. United States, 440 U.S. 147, 153-55 (1979) the Court
`
`summarized the requirements of collateral estoppel as (1) identity of an issue in a prior
`
`proceeding, (2) the identical issue was actually litigated, (3) determination of the issue was
`
`necessary to the judgment in the prior proceeding, and (4) the party defending against
`
`preclusion had a full and fair opportunity to litigate the issue in the prior proceeding.
`
`in J_et,_l_r1_c:_. the court explained that a trademark infringement action in the district
`
`court is not automatically of preclusive effect in a cancellation proceeding in the PTO, for
`
`a claim for trademark infringement may not be based on the same transactional facts as
`
`a petition to cancel a registered mark, or the facts relevant to infringement may not be
`
`sufficiently applicable to trademark registration to warrant preclusion.
`
`In a trademark
`
`infringement action, the owner of a registered mark sues for relief from the injury caused
`
`by the defendant's actual sale, offering for sale, or advertising ofgoods or services bearing
`
`the challenged mark, whereas an opposition to registration is based on the content of the
`
`registration application. Although to succeed in an opposition proceeding the opposer
`
`must show that "he would be damaged by the registration of a mark upon the principal
`
`register, including as a result ofdilution under section 43(c) .
`
`.
`
`.
`
`.", 15 U.S.C. §1063, the
`
`opposer need not show actual injury, and is benefitted by prior registration and prior use.
`
`These different causes of action may involve different sets of transactional facts, different
`
`proofs, different burdens, and different public policies. Registrability is not at issue in
`
`infringement
`
`litigation, and although the likelihood of confusion analysis presents a
`
`"superficial similarity," differences in transactional facts will generally avoid preclusion. Jet,
`
`m_c_., 223 F.3d at 1364-65.
`
`04-1254
`
`’
`
`6
`
`

`
`
`
`The Board emphasized this rule in American Hygienic Labs., Inc. v. Tiffany & Co.,
`
`228 USPQ 855, 857 (TTAB 1986), explaining that in an opposition proceeding "a claim of
`
`infringement before the court and a claim of priority and likelihood of confusion before this
`
`Board are different claims. The former claim is, in essence, a claim of injury resulting from
`
`applicant's fie of its mark in commerce; the latter claim,
`
`in essence, is a claim that
`
`opposer believes it would be damaged by registration of applicant's mark." Again in lg_r§
`
`lnfinity Broadcasting Corp. of Dallas, 60 USPQ,?d 1214, 1218 (TTAB 2001) the Board
`
`stated that "in Board proceedings, likelihood of confusion is determined independent of the
`
`context of actual usage.
`
`In an infringement action, on the other hand, the context of the
`
`use of the mark is relevant." §¢_ee generally J.T. McCarthy, McCarthy on Trademark and
`
`Unfair Comp_e_tiLigg, §32:82 at 321143 (4th ed. 2004) ("A claim for infringement is not the
`same as an interpartes claim for opposition or cancellation against another's registration
`
`of a mark. Thus, an opposer would not necessarily be barred by the rule of claim
`
`preclusion when it lost a previous infringement claim in court.")
`
`The issue litigated in the district court action was whether the marketing by
`
`Berkshire Fashions of specific products with either the BERKSHIRE mark orthe Berkshire
`
`Fashions trade name was likely to cause confusion with Mayer/Berkshire's registered
`
`BERKSHIRE trademarks.
`
`In an opposition proceeding the question of likelihood of
`
`confusion requires consideration not only of what the applicant has already marketed or
`
`has stated the intention to market, but of all the items for which registration is sought. The
`
`parties dispute the extent to which Berkshire Fashions‘ application embraces a broader
`
`statement of goods than those before the ‘district court; this aspect alone rendered
`
`summaryjudgmeent inapplicable, for the Board did not consider the separate goods in the
`
`04-1254
`
`7
`
`

`
`
`
`Class 25 application, but stated that all "garments" were included in the district court
`
`judgment. Precedent and practice require a more detailed analysis.
`
`in the opposition proceeding, Mayer/Berkshire proffered evidence of actual
`
`confusion which it states arose from materially changed marketing practices by Berkshire
`
`Fashions after the district court's judgment. A change in trademark usage can constitute
`
`a change in transactional facts that avoids preclusion based on the earlier non-
`
`infringement decision.
`
`It is not irrelevant if, as Mayer/Berkshire asserted in opposing the
`
`grant of summary judgment, Berkshire Fashions‘ earlier inconspicuous marking of some
`
`goods with labels bearing only the trade name, has evolved into major marketing activity
`
`promoting thetrademark BERKSHIRE in a mannerthat has, according to Mayer/Berkshire,
`
`caused significant actual confusion. Mayer/Berkshire presented sufficient evidence on this
`
`aspect to negate the grant of summaryjudgment based on preclusion.
`
`Mayer/Berkshire also argues that the issues were not
`
`identical because the
`
`infringement action was based on Berkshire Fashions’ use of the BERKSHIRE mark with
`
`the goods in evidence, showing thatthe trial exhibit list did not include any sweaters, vests,
`or pants, all of which are included in the Class 25 application. Mayer/Berkshire points out
`
`that the registration would not be limited to the specific articles in evidence in the district
`
`court. Berkshire Fashions responds that the items were the same in both proceedings.
`
`The Board did not resolve the question of what was in evidence at the infringement trial,
`
`but held that it sufficed that "garments" were before the district court. However, this term
`
`does not correlate with the specificity of the trademark classification, and does not
`
`establish preclusion as to the specific items for which registration is sought and opposed.
`
`04-1254
`
`8
`
`

`
`
`
`Mayer/Berkshire also states that Berkshire Fashions has significantly changed its
`
`marketing and advertising practices, and recites examples of actual confusion not
`
`previously experienced, citing Opryland USA Inc. v. Great American Music Show, lnc., 970
`
`F.2d 847, 853 (Fed. Cir. 1992) for its holding that the Board had improperly granted
`
`summaryjudgment where it had denied the non—moving party "the right, in accordance with
`
`Rule 56(f), to obtain evidence on the material facts of public perception and actual
`
`confusion." Viewing the proffered evidence in the light most favorable to Mayer/Berkshire,
`
`as the Board was required to do, sg Olde Tyme Foods Inc. v. Roundy's |nc., 961 F.2d
`
`200, 205 (Fed. Cir. 1992), Mayer/Berkshire presented evidence of changed circumstances
`
`in the five—year period after the district court's judgment that may be relevant to the issue
`
`of likelihood of confusion in the opposition proceeding, again rendering preclusion
`
`improper.
`
`§3_e_e Litton Industries Inc. v. Litronix |nc., 577 F.2d 709, 711 (CCPA 1978)
`
`("This court has previously held that res judicata and collateral estoppel are not applicable
`
`where ‘it
`
`is apparent that all the questions of fact and law involved [in the second
`
`proceeding] were not determined in the previous proceedings."') (quoting Universal Overall
`
`Co. v. Stoneggter Mills Corp., 310 F.2d 952, 956 (CCPA 1962)).
`
`Caution is warranted in the application of preclusion by the PTO, for the purposes
`
`of administrative trademark procedures include protecting both the consuming public and
`
`the purveyors. Thus the party objecting to a registration may raise grounds not only of
`
`commercial injury to itself, but of confusion or deception or mistake to the consumer. The
`
`public policy underlying the principles of preclusion, whereby potentially meritorious claims
`
`may be barred from judicial scrutiny, has led courts to hold that the circumstances for
`
`preclusion "must be certain to every intent." Russell v. Place, 94 U.S. (4 Otto) 606, 610
`
`04-1254
`
`9
`
`

`
`
`
`(1878) (denying preclusion in a patent infringement case, stating that "According to Coke,
`
`an estoppel must ‘be certain to every intent;' and if upon the face of a record any thing is
`
`left to conjecture as to what was necessarily involved and decided, there is no estoppel in
`
`it when pleaded, and nothing conclusive in it when offered as evidence.") §e_§ Foster v.
`
`Hallco Mfggg, 947 F.2d 469, 480 (Fed. Cir. 1991) (the proponent of claim preclusion
`
`bears the burden of showing that the cause of action in the two suits was the same); c_f.
`
`
`A/l_cNellis v. First Fed. Sav. And Loan Ass'n of Rochester New York, 364 F.2d 251, 251 (2d
`
`Cir. 1966) (‘''Finally, although the principles of res judicata should not be frugally applied,
`
`9; United S’tatgs_; v. Munsingwear, |nc., 340 U.S. 36, 38 (1950), a reasonable doubt as to
`
`what was decided in the first action should preclude the drastic remedy of foreclosing a
`
`party from litigating an essential issue.")
`
`The question of the likelihood of confusion presented sufficiently different issues
`
`and transactional facts to bar the application of preclusion. The summaryjudgment of the
`
`Board is vacated, and the case is remanded for further proceedings.
`
`)/ACATED AND REMANDED
`
`CERTlFlEt3 COPY
`lS DOCUMENT
`com!
`or THE ORIGINAL ON FILE.
`UNITED STATES courrr or APPEALS
`FOR TH FEDERAL ClRCU|T
`/
`1/
`to] BKD5
`ate.
`
`B .
`
`04-1254
`
`'
`
`10
`
`

`
`
`
`Appeal No. 04-1254
`AUG 1 0 2004
`(Opposition No. 91/080,606)
`
`& TRADEMARK orncs
`
`seucwoa
`
`flliniteh fitatez Qlnurt nf fqapealz
`
`FOR THE FEDERAL CIRCUIT
`
`
`
`MAYER/BERKSHIRE CORP.,
`
`BERKSHIRE FASHIONS , INC. ,
`
`Appellant,
`
`Appellee.
`
`ON APPEAL FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE,
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`REPLY BRIEF FOR APPELLANT
`
`
`JAMES B. SWIRE, ESQ.
`
`SANDRA EDELMAN, ESQ.
`DORSEY & WHITNEY LLP
`
`250 Park Avenue
`
`New York, New York 10177
`
`(212) 415-9200
`
`Attorneys for Appellant
`Mayer/Berkshire Corp.
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`I.
`
`BERKSHIRE FASHIONS DID NOT SATISFY ITS BURDEN
`OF PROOF ON THE SUMMARY JUDGMENT MOTION......................... 1
`The New Jersey Action Did Not Adjudicate a Claim Against
`the Registration of the BERKSHIRE Mark in Class 25 .......................
`The Issue ofLikely Confusion Adjudicated in the New Jersey
`Action Was Different From the Confusion Issue
`in the Opposition Proceeding.............................................................. ..
`
`2
`
`3
`
`A.
`
`B.
`
`C.
`
`II.
`
`III.
`
`Neither Res Judicata Nor Collateral Estoppel Bars
`a Likelihood of Confusion Claim in the Opposition
`Against Products Not Considered in the Prior Civil Action ................ 8
`CHANGES IN BERKSHIRE FASHIONS ’ MARKETING PRACTICES
`MADE RES JUDICATA AND COLLATERAL ESTOPPEL
`INAPPLICABLE .......................................................................................... 10
`THE DOCTRINE OF STARE DECISIS HAS BEEN WAIVED
`AS A BASIS FOR APPEAL AND IS IN ANY
`EVENT INAPPLICABLE ............................................................................ 15
`CONCLUSION ....................................................................................................... 18
`CERTIFICATE OF COMPLIANCE WITH RULE 32(A).....................................
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page(sg
`
`Alberto-Culver Co. v. Trevive, Inc.,
`199 F. Supp. 2d 1004 (C.D. Cal. 2002) ............................................... 8, 11
`
`Alfred Dunhill ofLondon, Inc. v. Dunhill Tailored Clothes, Inc.,
`130 U.S.P.Q. 412 (C.C.P.A. 1961) .......................................................... .. 2
`
`American Heritage Life Insurance Co. v. Heritage Life Insurance Co.,
`494 F.2d 3 (5th Cir. 1974) ......................................................................... 2
`
`American Hygienic Laboratories Inc. v. Tiflany & C0.,
`228 U.S.P.Q. 855 (T.T.A.B. 1986) ............................................................ 2
`
`Brown v. Quiniou,
`No. 02 Civ. 4630 (CBM), 2003 WL 1888743
`(S.D.N.Y. April 16,2003)........................................................................ 11
`
`Checkpoint System, Inc. v. Check Point System Techs., Ltd.,
`2002 WL 1181046 (T.T.A.B. May 31, 2002)........................................ 5, 6
`
`Ex parte Crown Beverage Corp,
`102 U.S.P.Q. 312 (Comm’r Pats. 1954) .................................................. 16
`
`Haymaker Sports, Inc. v. Turian,
`581 F.2d 257 (C.C.P.A. 1978) ................................................................. 12
`
`Jet, Inc. v. Sewage Aeration Systems,
`.223 F.3d 1360 (Fed. Cir. 2000) ............................................................. 3, 4
`
`Jet, Inc. v. Sewage Aeration Systems,
`2003 WL 355736 (T.T.A.B. Feb. 13, 2003) .................................. .. 4, 5, 16
`
`Jim Beam Brands Co. v. Beamish & Crawford Ltd.,
`937 F.2d 729 (2d Cir. 1991)....................................................................... 4
`
`Johns Hopkins University v. Cellpro, Inc.,
`152 F.3d 1342 (Fed. Cir. 1998) ............................................................. .. 15
`
`

`
`
`
`Cases
`
`Page(sg
`
`In re Multivox Corp,
`209 U.S.P.Q. 627 (T.T.A.B. 1981) .......................................................... 17
`
`National Cable Television Association, Inc. v. American Cinema
`Editors, Inc., 937 F.2d 1572 (Fed. Cir. 1991) ....................................... .. 14
`
`Nautilus Group Inc. v. ICON Health and Fitness, Inc.,
`71 U.S.P.Q. 2d 1173 (Fed. Cir. 2004) ..................................................... 13
`
`Novartis Pharmaceuticals Corp. v. Abbott Laboratories,
`Nos. ()3—1367,03-1393, 2004 WL 1516802 (Fed. Cir. July 8, 2004) ...... .. 1
`
`Old Grantian Co. v. William Grant & Sons,
`150 U.S.P.Q. 58 (C.C.P.A 1966) ........................................................... .. 12
`
`Opryland USA Inc. v. Great American Music Show, Inc.,
`970 F.2d 847 (Fed. Cir. 1992) ........................................................... .. 1, 14
`
`Phonometrics, Inc. v. Westin Hotel Co.,
`319 F.3d 1328 (Fed. Cir. 2003) ............................................................... .. 8
`
`Plus Products v. Natural Organics, Inc.,
`223 U.S.P.Q. 27 (N.D.N.Y 1984) .......................................................... .. 12
`
`Save the Children Federation Inc. v. Larry Jones International
`Ministries Inc., 38 U.S.P.Q. 2d 1495 (D. Conn. 1996) ........................... .. 2
`
`Scooper Dooper, Inc. v. Kraftco Corp,
`494 F'.2d 840 (3d Cir. 1974)................................................................... .. 14
`
`In re Tarczy-Hornoch,
`397 F'.2d 856 (C.C.P.A. 1968) ............................................................... .. 15
`
`Ton/"ca Corp. v. Rose Art Industrial, Inc. ,
`836 F. Supp. 200 (D.N.J. 1993) ............................................................... .. 2
`
`

`
`
`
` Cases
`
`Page(s)
`
`Treazdwell ’s Drifters, Inc. v. Marshak,
`18 U.S.P.Q. 2d 1318 (T.T.A.B. 1990) ....................................................... 2
`
`Universal Overall Co. v. Stonecutter Mills Corp.,
`135 U.S.P.Q. 437 (C.C.P.A. 1962) ............................................................ 8
`
`The William Carter Co. v. H. W. Carter & Sons, Inc.,
`2004 WL 506139 (T.T.A.B. Feb. 27, 2004) .............................................. 9
`
`RULES
`
`Fed. R. Civ. P. 56(f) ................................................................................ 10, 14
`
`MISCELLANEOUS
`
`18 Moore ’s Federal Practice, § 134.01[1] (3d ed. 2004)............................. 15
`
`18 illoore ’s Federal Practice, §§ 134.01[5], 134.04[2], 134.05 [3]
`(3d ed. 2004) .......................................................................................... ..
`
`16
`
`iii
`
`

`
`
`
`I.
`
`BERKSHIRE FASHIONS DID NOT SATISFY
`ITS BURDEN OF PROOF ON
`THE SUMMARY JUDGMENT MOTION
`
`In its opposition brief, Appellee misconceives the burden ofproof it
`
`carried on the motion for summary judgment below and, in so doing, further
`
`demonstrates why the Board committed legal error when it granted the motion.
`
`earlier civil action should be resolved against Mayer/Berkshire, which had the
`
`burden ofproof as the plaintiff in the civil action. (Appellee Brief at 1, 16-18.)
`
`While there is no doubt that Mayer/Berkshire, as the plaintiff in the prior New
`
`Jersey Action, had the burden ofproof on its infiingement claims, on a motion for
`
`summary judgment on the grounds of claim and issue preclusion in the opposition
`
`proceeding, it was Berkshire Fashions that had the burden to prove that the claims,
`
`issues and transactional facts were the same. See, e.g., Novartis Pharms. Corp. v.
`
`Abbott Labs., Nos. 03-1367, 03-1393, 2004 WL 1516802, at *4 (Fed. Cir. July 8,
`
`2004) (citation to official reporter not yet available). Berkshire Fashions also had
`
`the burden to establish the absence of any genuine issue of material fact and that it
`
`was entitled to judgment as a matter of law. Opryland USA Inc. v. Great Am.
`
`Music Show, Ir.:c., 970 F.2d 847, 850 (Fed. Cir. 1992).
`
`

`
`
`
`The Board below committed legal error when it granted the summary
`
`judgment motion because Berkshire Fashions had not met its burden ofproof that
`
`(A) a claim against the registration ofthe BERKSHIRE mark in Class 25 had been
`
`adjudicated in the civil action; (B) the issue of likelihood of confusion in the New
`
`Jersey Action was the same as the issue of likely confusion presented in the
`
`opposition proceeding; and (C) all fourteen of the products identified in the Class
`
`25 Application were before the court in the prior civil action.
`
`A.
`
`The New Jersey Action Did Not Adjudicate a Claim Against the
`Re_gi_s_t_ration of the BERKSHIRE Mark in Class 25
`
`Noticeably absent from Berkshire Fashions’ arguments with respect to
`
`the Board's application of resjudicata below (Appellee Brief at 14-19) is any
`
`attempt to address many of the cases cited by Mayer/Berkshire holding that a claim
`
`against a registration of a mark and a claim for infiingement are different claims
`
`for resjudicata purposes. (See Appellant Brief at 24-25, citing Treadwell ’s
`
`Drifters, Inc. v. Marshak, 18 U.S.P.Q.2d 1318 (T.T.A.B. 1990); American
`
`Hygienic Labs. Inc. v. Tzflany & Co., 228 U.S.P.Q. 855 (T.T.A.B. 1986); American
`
`Heritage Life Ins. Co. v. Heritage Lz'fe Ins. Co., 494 F.2d 3 (5th Cir. 1974); Alfred
`
`Dunhill ofLondon, Inc. v. Dunhill Tailored Clothes, Inc., 130 U.S.P.Q. 412
`
`(C.C.P.A. 1961); Save the Children Fed ’n Inc. v. Larry Jones Int ’l Ministries Inc.,
`
`38 U.S.P.Q.2d 1495 (D. Conn. 1996); and Tonka Corp. v. Rose Art Indus., Inc.,
`
`836 F. Supp. 200 (D.N.J. 1993)).
`
`

`
`
`
`Berkshire Fashions does aclmowledge this Court’s dispositive holding
`
`in Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360 (Fed. Cir. 2000), which held
`
`that a claim against the registration of a mark is not barred by a claim for
`
`infringement in a prior civil action, but contends that Jet is distinguishable because
`
`the district court in that case denied a motion to amend the pleadings to add a claim
`
`for cancellation against the registration that was the subject of the later proceeding
`
`before the T.T.A.B. (Appellee Brief at 18-19.) However, in this case as well,
`
`there was no adjudication of a claim against the registration of the BERKSHIRE
`
`mark for any apparel product in the New Jersey Action. As the Board below
`
`correctly observed (A4), Berkshire Fashions deleted the Class 25 goods from its
`
`application originally filed in Class 18 and 25, leaving only a pending Class 18
`
`application at issue in the civil action. Thus, a claim against the registration ofthe
`
`mark in Class 2.5 was not and could not have been adjudicated in the New Jersey
`
`Action. Accordingly, under this Court’s decision in Jet as well as the other cases
`
`cited above, the Board erred as a matter of lawin holding that resjudicata barred
`
`Mayer/Berkshire’s likelihood of confusion ground of opposition.
`
`B.
`
`The Issue of Likely Confusion Adjudicated in the New Jersey Action
`Was Different From the Confusion Issue in the Qpposition Proceeding
`
`Berkshire Fashions argues on appeal that the Board properly held that
`
`Mayer/Berkshi:re’s opposition was barred by collateral estoppel because the
`
`opposition and the New Jersey Action both involved the issue of likelihood of
`
`

`
`
`
`confusion. (Appellee Brief at 10-1 1.) However, as this Court has clearly held,
`
`when either claim or issue preclusion is considered, the mere finding that an
`
`infringement action and a registration action both involve the issue of likely
`
`confusion is only the starting point of the inquiry, not the end of the analysis. See
`
`Jet, 223 F.3d at 1364 (“[T]he only common ground between the two causes of
`
`action appears to be that, in some cases at least, both infringement and cancellation
`
`will involve a “likelihood of confusion’ analysis. But even this superficial
`
`similarity provides no support for the operation of claim preclusion.”); see also Jim
`
`Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729, 734 (2d Cir. 1991)
`
`(“Though worded similarly, the issue oflikelihood of confusion in a cancellation
`
`proceeding may be different from the issue of likelihood of confusion in an action
`
`for infringement.’’).
`
`On remand following this Court’s decision in Jet, the Board explained
`
`the significant differences between the adjudication of likelihood of confusion in a
`
`prior civil infringement action and a cancellation proceeding. See Jet, Inc. v.
`
`Sewage Aeration Sys., 2003 WL 355736 (T.T.A.B. Feb. 13, 2003) (designated as
`
`not citable as precedent)‘:
`
`In this cancellation proceeding, we determine the issue of
`likelihood of confusion only as to the mark depicted in
`
`1 By Order dated July 1, 2004 in this appeal, the Court confirmed that non-
`precedential opinions from other fora may be cited and that the merits panel
`may determine the relevance, if any, of such decisions.
`
`4
`
`

`
`
`
`the registration for the goods identified therein,
`regardless of the context of actual usage. If there are no
`limitations or restrictions as to trade charmels or classes
`of purchasers in either petitioner’s or respondent’s
`identification of goods, the Board presumes that the
`parties’ respective goods are sold in all nonnal trade
`channels and to all normal classes of purchaser for such
`goods, regardless of what the evidence might show the
`parties’ actual trade channels and classes of customers to
`be. However, in an infringement action, the context of
`actual use of the marks is relevant and may be crucial.
`Thus, the standards and factual inquiries by which
`likelihood of confusion is judged in a cancellation
`proceeding “can be different” from those in an
`infringement action.
`
`Id. at *5. Under similar circumstances in Checkpoint Sys., Inc. v. Check Point Sys.
`
`Techs., Ltd., 2002 WL 1181046 (T.T.A.B. May 31, 2002) (designated as not
`
`citable as precedent), the Board likewise held that a prior civil infringement action
`
`in which no lik:elihood of confusion was found would not bar a confusion claim
`
`involving the same marks in a subsequent opposition proceeding. In particular, the
`
`Board in Checkpoint found that the finding ofno infringement in the prior civil
`
`action was based on the “context of actual use” and “actual market conditions”
`
`which showed that the defendant was