Appeal No. 04-1254
`U
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`(Opposition No. 91/080,606) '3' ”"E*iT.8s15ennaem¢:mcs
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`flflrtiteh $121125 Qlnurt nf C_Z\pp2aI2I
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`FOR THE FEDERAL CIRCUIT
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`
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`MAYER/BERKSHIRE CoRP.,
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`“"—
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`BERKSHIRE FASHIONS, INC.,
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`Appellant,
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`Appellee.
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`oN APPEAL FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE,
`TRADEMARK TRIAL AND APPEAL BOARD
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`
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`BRIEF FOR APPELLANT
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`;
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`3
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`.5
`i
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`2
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`JAMES B. SWIRE, ESQ.
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`SANDRA EDELMAN, EsQ.
`DoRsEY & WHITNEY LLP
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`250 Park Avenue
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`New York, New York 10177
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`(212) 415-9200
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`Attorneys for Appellant
`Mayer/Berkshire Corp.
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`U
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`(Opposition No. 91/080,606) '3' ”"E*iT.8s15ennaem¢:mcs
`
`flflrtiteh $121125 Qlnurt nf C_Z\pp2aI2I
`
`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
`
`
`
`BRIEF FOR APPELLANT
`
`
`;
`
`3
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`.5
`i
`
`2
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`JAMES B. SWIRE, ESQ.
`
`SANDRA EDELMAN, EsQ.
`DoRsEY & WHITNEY LLP
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`250 Park Avenue
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`New York, New York 10177
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`(212) 415-9200
`
`Attorneys for Appellant
`Mayer/Berkshire Corp.
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`
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`APPENDIX. or Forms
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`Fonn 6.
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`certificate of Interest
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`
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`No.
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`Certificate of Interest
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`Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
`M-3Y€1E'/Belfkshire C0rP- certifies the following (use “None” if applicable; use extra sheets if
`necessary):
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`
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`I.
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`The full name of every party or amicus represented by me is:
`Mayer/Berkshire Corp.
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`The name of the real party in interest (if the party named in the caption is not the real
`2.
`party in interest) represented by me is:
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` 3.
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`All parent corporations and any publicly held companies that own 10 percent or more of
`the stock of the party or amicus curiae represented by me are:
`None
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`4. Q There is no such corporation as listed in paragraph 3.
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`The names of all law firms and the partners or associates that appeared for the party or
`5.
`amicus now represented by me in the trial court or agency or are expected to appear in this court
`are:
`.
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`Townley t‘. Updike: James B." Swire and "Sandra Ekielman
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`
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`
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`Dorsey & Whitney LLP: ‘James B. Swireand Sandra Edelman
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`Printed name of counsel
` 7 Counsel for Appellant
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`I08
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`TABLE OF CONTENTS
`
`STATEMENT OF RELATED CASES .................................................................. .. 1
`
`STATEMENT OF JURISDICTION ....................................................................... .. 1
`
`STATEMENT OF THE ISSUES ............................................................................ .. 1
`
`STATEMENT OF THE CASE ............................................................................... .. 3
`
`STATEMENT OF THE FACTS ............................................................................. .. 5
`
`A.
`
`Parties .................................................................................................. .. 5
`
`1. Mayer/Berkshire ........................................................................... .. 5
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`2. Berkshire Fashions ....................................................................... .. 6
`
`B.
`
`Prior Litigation Between the Parties ................................................... .. 6
`
`1. The First Opposition Proceeding Against the Class 18
`Application ................................................................................... .. 6
`
`2. The New Jersey Action ................................................................ .. 7
`
`3. The Jury Verdict ........................................................................... .. 8
`
`4. Evidence Considered by the Jury ............................................... .. 10
`
`5. Subsequent History of the Class 18 Application After Trial ..... .. 10
`
`C.
`
`The Class 25 Application.................................................................. .. 11
`
`D. Mayer/Berkshire’s Second Opposition to the Class 25
`Application ........................................................................................ .. 14
`
`E.
`
`Changes in Berkshire Fashions’ Marketing Practices ...................... .. 16
`
`SUMMARY OF ARGUMENT............................................................................. .. 19
`
`ARGUMENT ........................................................................................................ .. 21
`
`
`
`
`
`I.
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`APPLICABLE STANDARD OF REVIEW ............................................... .. 21
`
`II.
`
`THE TTAB ERRED AS A MATER OF LAW IN HOLDING THAT
`
`RES JUDICATA BARRED MAYER/BERKSHIRE’S LIKELIHOOD
`
`OF CONFUSION GROUND OF OPPOSITION ....................................... .. 23
`
`A.
`
`The New Jersey Action and the Opposition Proceeding Did Not
`Involve the Same Claims .................................................................. .. 26
`
`Res Judicata is Inapplicable to Products Not At Issue in the
`New Jersey Action ............................................................................ .. 28
`
`III.
`
`THE BOARD ERRED AS A MATTER OF LAW IN HOLDING THAT
`
`COLLATERAL ESTOPPEL BARRED MAYEWBERKSHIRE’S
`
`LIKELIHOOD OF CONFUSION GROUND OF OPPOSITION ............. .. 30
`
`A.
`
`The Issues of Likelihood of Confusion in the New Jersey Action
`and In the Opposition Were Different .............................................. .. 32
`
`Factual Determinations of Trademark Use and Priority Necessary
`to the Opposition Proceeding Were Not Actually Decided In the
`New Jersey Action ............................................................................ .. 38
`
`IV.
`
`LIKELIHOOD OF CONFUSION BETWEEN THE PARTIES’ MARKS
`
`AND PRODUCTS SHOULD HAVE BEEN RE-ASSESSED IN LIGHT
`
`OF CHANGES IN BERKSHIRE FASHIONS’ MARKETING
`
`PRACTICES ............................................................................................... .. 42
`
`A.
`
`B.
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`Summary Judgment Should Have Been Denied Pursuant to
`Federal Rule of Civil Procedure 56(i) .............................................. .. 44
`
`The Board Erred as a Matter of Law in Not Re-Evaluating
`Likelihood of Confusion in Light of Berkshire Fashions’
`Changed Marketing Practices ........................................................... .. 47
`
`CONCLUSION ..................................................................................................... .. 52
`
`CERTIFICATE OF COMPLIANCE WITH RULE 32(A) ................................... .. 53
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`1_’££!:LS2
`
`.A & H Sportswear Inc. v. Victoria ’s Secret Stores, Inc.,
`166 F.3d 191 (3d Cir. 1999)................................................................... .. 37
`
`.Alberto-Culver Co. v. Trevive, Inc.,
`199 F. Supp. 2d 1004 (C.D. Cal. 2002) ................................................. .. 44
`
`Alfred Dunhill ofLondon, Inc. v. Dunhill Tailored Clothes, Inc.,
`130 U.S.P.Q. 412 (C.C.P.A. 1961) ........................................................ .. 25
`
`American Heritage Life Insurance Co. v. Heritage Life Insurance
`Co., 494 F.2d 3 (5th Cir. 1974) .............................................................. .. 24
`
`American Hygienic Laboratories, Inc. v. Tiffany & Co.,
`228 U.S.P.Q. 855 (T.T.A.B. 1986) ............................................ .. 24, 27, 34
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 210 (1986) ....................... .. 49
`
`Aris--Isotoner Gloves, Inc. v. Berkshire Fashions, Inc.,
`792 F. Supp. 969 (S.D.N.Y. 1992) .................................................. .. 18, 19
`
`Berkshire Fashions, Inc. v. Sara Lee Corp.,
`725 F. Supp. 790 (S.D.N.Y. 1989) ........................................................ .. 18
`
`Brown v. Felsen,
`442 U.S. 127, 99 S. Ct. 2205, 60 L. Ed. 2d 767 (1979) ......................... .. 40
`
`Biyson v. Guarantee Reserve Life Insurance Co.,
`520 F.2d 563 (8th Cir. 1975) ................................................................. .. 30
`
`Canadian Imperial Bank of Commerce v. Wells Fargo Bank, National
`Association, 811 F .2d 1490 (Fed. Cir. 1987) ......................................... .. 36
`
`Celotex Corp. v. Catrett,
`4'77 U.S. 317, 106 S. Ct. 2548, 91 L. Ed. 265 (1986) ............................ ..46
`
`iii
`
`
`
`
`
`Cases
`
`Pag_e.Ls2
`
`E.I. du Pont de Nemours & Co. v. Berkshire Fashions, Inc.,
`No. 84-4350 (D.N.J. 1984) .................................................................... .. 19
`
`Dunkin ’ Donuts ofAmerica, Inc. v. Metallurgical Exoproducts Corp.,
`840 F.2d 917 (Fed. Cir. 1988) ............................................................... .. 47
`
`Foster v. Hallco Manufacturing Co., Inc.,
`947 F.2d 469 (Fed. Cir. 1991) ............................................................... .. 22
`
`Hoult v. Hoult,
`157 F.3d 29 (1st Cir. 1998) .................................................................... .. 22
`
`In re Infinity Broadcasting Corp. ofDallas,
`60 U.S.P.Q. 2d 1214 (T.T.A.B. 2001) ................................................... .. 33
`
`Jet, Inc. v. Sewage Aeration Systems,
`223 F.3d 1360 (Fed. Cir. 2000) ......................... ..19, 21, 23, 24, 30, 31, 34
`
`Jim: Beam Brands Co. v. Beamish & Crawford Ltd.,
`937 F.2d 729 (2d Cir. 1991)........................................... .. 32, 33, 34, 36, 37
`
`Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd.,
`774 F.2d 1144 (Fed. Cir. 1985) ....................................................... .. 13, 36
`
`Levi Strauss & Co. v. Blue Bell, Inc.,
`778 F.2d 1352 (9th Cir. 1985) ............................................................... .. 29
`
`Levy v. Kosher Overseers Association ofAmerica, Inc.,
`104 F.3d 38 (2d Cir. 1997) ......................................................... .. 22, 33, 34
`
`Los Angeles Bonaventure Co. v. Bonaventure Associates,
`4 U.S.P.Q. 2d 1882 (T.T.A.B. 1987) ..................................................... .. 42
`
`MasterCard International, Inc. v. American Express Co.,
`14 U.S.P.Q. 2d 1551 (T.T.A.B. 1990) ................................................... .. 29
`
`McNellis v. First Federal Savings and Loan Association ofRochester,
`New York, 364 F.2d 251 (2d Cir. 1966) ................................................. .. 22
`
`iv
`
`
`
`
`
`Qfiii
`
`1112962
`
`Miss Universe, Inc. v. Kidney Foundation ofNew York, Inc.,
`214 U.S.P.Q. 199 (S.D.N.Y. 1981) .................
`..................................... .. 43
`
`Montana v. United States,
`4-40 U.S. 147, 99 S. Ct. 970, 59 L. Ed. 2d 210 (1979) ..................... .. 31, 42
`
`Mother ’s Restaurant, Inc. v. Mama ’s Pizza Inc.,
`723 F.2d 1566 (Fed. Cir. 1983) ............................................................. ..41
`
`National Cable Television Association, Inc. v. American Cinema
`Editors, Inc., 937 F.2d 1572 (Fed. Cir. 1991) ....................................... .. 22
`
`Octocom System, Inc. v. Houston Computer Services, Inc.,
`918 F.2d 937 (Fed. Cir. 1990) ......................................................... .. 22, 36
`
`Old Grantian Co. v. William Grant & Sons Ltd.,
`150 U.S.P.Q. 58 (C.C.P.A. 1966) .................................................... .. 23, 43
`
`Olde Tyme Foods Inc. v. Roundy ’s Inc.,
`961 F .2d 200 (Fed. Cir. 1992) ............................................................... .. 31
`
`Opryland USA Inc. v. Great America Music Show, Inc.,
`97'O F.2d 847 (Fed. Cir. 1992) ......................................................... .. 46, 49
`
`Peterson v. Clark Leasing Corp.,
`451 F.2d 1291 (9th Cir. 1971) ............................................................... .. 37
`
`Plus Products v. Natural Organics, Inc.,
`223 U.S.P.Q. 27 (N.D.N.Y. 1984) ................................................... .. 43, 47
`
`Recot, Inc. v. MC. Becton,
`214 F.3d 1322 (Fed. Cir. 2000) ............................................................. .. 37
`
`Russell v. Place,
`94 U.S. 606, 24 L. Ed. 214 (1876) ......................................................... .. 40
`
`Save the Children Federation Inc. v. Larry Jones International
`Ministries Inc., 38 U.S.P.Q. 2d 1495 (D. Conn. 1996) ................... .. 25, 33
`
`
`
`
`
`_Ctl_ses_
`
`lllggm
`
`Smith v. Tobacco By—Products & Chemical Corp.,
`243 F.2d 188 (C.C.P.A. 1957) ............................................................... .. 50
`
`Tonka Corp. v. Rose Art Industrial, Inc.,
`836 F. Supp. 200 (D.N.J. 1993) ....................................................... .. 25, 27
`
`Treadwell ’s Drifters, Inc. v. Marshak,
`18 U.S.P.Q. 2d 1318 (T.T.A.B. 1990) ............................................. .. 24, 34
`
`Universal Overall Co. v. Stonecutter Mills Corp.,
`135 U.S.P.Q. 437 (C.C.P.A. 1962) ........................................................ .. 41
`
`Wells Fargo & Co. v. Stagecoach Properties, Inc.,
`685 F.2d 302 (9th Cir. 1982) ................................................................. .. 50
`
`Zip Dee, Inc. v. Dometic Corp,
`886 F. Supp. 1427 (ND. 111. 1995) ................................................. .. 30, 40
`
`STATUTES
`
`1.5 U.S.C. § 1071(a)....................................................................................... ..1
`
`28 U.S.C. § 1295(a)(4)(B) ............................................................................ .. 1
`
`1:5 U.S.C. § 1063 ........................................................................................... .. 1
`
`15U.S.C. § 1114 ........................................................................................... ..7
`
`15 U.S.C. § 1125 ........................................................................................... .. 7
`
`15 U.S.C. § 1052 ......................................................................................... .. 38
`
`vi
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`
`
`
`
`RULES
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`Fed. R. Civ. P. 54(b) ..................................................................................... .. 3
`
`Fed. R. Civ. P. 56(f) ........................................................................ .. 16, 46, 47
`
`MISCELLANEOUS
`
`J .T. McCarthy, McCarthy on Trademarks and Untair Comgetition,
`§ 32:82 (4th ed. 2004) ............................................................................ .. 25
`
`J .T. McCarthy, McCarthy on Trademarks and Unfair Comgetition,
`§ 20:15 (4th ed. 2004) ............................................................................ .. 50
`
`Wright, Miller & Cooper, Federal Practice and Procedure:
`Jurisdiction 2d, § 4417 (2d ed. 2002) .................................................... .. 37
`
`Wright, Miller & Cooper, Federal Practice and Procedure:
`Jurisdiction 2d, § 4420 (2d ed. 2002) .................................................... .. 42
`
`vii
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`
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`STATEMENT OF RELATED CASES
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`No other appeal in or from the same civil action or proceeding in the
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`lower court or body was previously before this or any other appellate court.
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`Counsel knows of no case pending in this or any other court that will directly affect
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`or be directly affected by this Court’s decision in the pending appeal.
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`STATEMENT OF JURISDICTION
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`This appeal arises from a decision of the Trademark Trial and Appeal
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`Board (the “Board”) in a trademark opposition proceeding initiated under Section
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`13 of the Lanham Act, 15 U.S.C. § 1063. This Court has jurisdiction over the
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`appeal pursuant to 15 U.S.C. § l07l(a) and 28 U.S.C. § l295(a)(4)(B).
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`STATEMENT OF THE ISSUES
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`1.
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`Did the Trademark Trial and Appeal Board err as a matter of
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`law in holding, on a motion for summary judgment, that the doctrine of res
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`judicata barred opposer Mayer/Berkshire Corp. from asserting a likelihood of
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`confusion against the application by Berkshire Fashions, Inc. to register the mark
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`BERKSHIRE in connection with fourteen apparel products where: (a) the prior
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`civil infringement action between the parties did not adjudicate a claim against the
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`registration of the BERKSHIRE mark on such apparel products; and (b) Berkshire
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`Fashions did. not satisfy its burden of proof that all of the fourteen products
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`identified in its application were at issue in the prior civil action?
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`2.
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`Did the Trademark Trial and Appeal Board err as a matter of
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`law in holding, on a motion for summary judgment, that the doctrine of collateral
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`estoppel barred opposer Mayer/Berkshire from asserting a likelihood of confusion
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`against the application by Berkshire Fashions to register the mark BERKSHIRE in
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`connection. with fourteen apparel products where: (a) the issues of likelihood of
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`confusion in the prior civil infringement action and in the opposition proceeding
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`below were different; and (b) factual determinations of trademark use and priority
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`essential to the opposition were not actually made in the prior civil infringement
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`action?
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`3.
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`Did the Trademark Trial and Appeal Board err as a matter of
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`law in holding, on a motion for summary judgment, that the doctrines of res
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`judicara and collateral estoppel barred Mayer/Berkshire’s opposition where
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`significant changes in Berkshire Fashions’ marketing practices that increased the
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`likelihood of confusion had occurred since the prior civil infiingement action, and
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`where the Board denied Mayer/Berkshire the opportunity to take relevant
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`discovery and resolved factual inferences against Mayer/Berkshire on the issue of
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`these changed marketing practices?
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`STATEMENT OF THE CASE
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`On May 31, 1989, Mayer/Berkshire, the owner at that time of seven
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`federal registrations in Class 25 for the mark BERKSHIRE for hosiery and related
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`apparel products, filed a Notice of Opposition against Application Serial No.
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`625,450 filed by Berkshire Fashions to register the mark BERKSHIRE in Class 25
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`for fourteen items of apparel (hereinafter referred to as the “Class 25
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`Application”). Mayer/Berkshire opposed the Class 25 Application based on
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`allegations of likelihood of confiision, fraud and lack of pre-filing trademark use.
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`A27-33.
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`This appeal is from a decision of the Trademark Trial and Appeal
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`Board in that opposition dated August 31, 1990, dismissing on a motion for
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`summary judgment Mayer/Berkshire’s First Ground of Opposition based on
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`likelihood. of confusion. The Board’s Order denied Berkshire Fashions’ motion for
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`summary judgment with respect to Mayer/Berkshire’s remaining grounds of
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`opposition based on fraud and lack of pre-filing trademark use. A1-13. By
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`subsequent Order of January 18, 1991, the Board denied Mayer/Berkshire’s motion
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`pursuant to Fed. R. Civ. P. 54(b) to certify for appeal the decision of August 31,
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`1990 granting partial summary judgment against Mayer/Berkshire, holding that an
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`appeal could not be brought until the remaining claims in the opposition were
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`adjudicated. A14-18.
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`Between 1991 and 2003, the parties made a number of efforts to reach
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`a settlement that would resolve the issue of confiision arising from their respective
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`uses of the designation BERKSHIRE in connection with apparel and accessories.
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`During this period, the proceedings were suspended and/or discovery and trial
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`dates extended by mutual consent of the parties in the hope that a settlement could
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`be achieved, thus preserving the status quo in which a Class 25 registration did not
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`issue to Berkshire Fashions. A289-91.
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`In November 2003, with no settlement reached, Mayer/Berkshire took
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`the step of accepting entry ofjudgment against it on the remaining Second, Third
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`and Fourth. Grounds of Opposition based on fraud and lack of pre-filing trademark
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`use so that it could finally appeal the dismissal of the First Ground of Opposition
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`based on likelihood of confusion. Id. As Mayer/Berkshire stated in its submission
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`to the Board, “given the failure of settlement discussions, the long pending
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`remaining grounds of opposition based on allegations of fraud and lack of pre-
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`filing trademark use serve no further purpose since they would not resolve the
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`underlying dispute concerning likelihood of confusion in any event.”1 A290.
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`Accordingly, by Order dated December 17, 2003, the Board entered judgment
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`against: Mayer/Berkshire on its Second, Third and Fourth Grounds of Opposition
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`1 Even had Mayer/Berkshire prevailed on its claims of fraud and lack of pre-
`filing trademark use, Berkshire Fashions could thereafter have filed a new
`“clean” application for the same goods.
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`4
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`and made final its dismissal of the First Ground of Opposition in its August 31,
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`1990 decision. A19-20.
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`STATEMENT OF THE FACTS
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`A-
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`L1_r£L=§
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`1 .
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`Mayer/Berkshire
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`Mayer/Berkshire (and its predecessors-in-interest) have used
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`the designation “Berkshire” as part of their trade name since 1906. Since 1925,
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`Mayer/Berkshire has used the designation BERKSHIRE as part of a trade name
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`and as a trademark in connection with the sale of a variety of apparel and accessory
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`products, including socks and hosiery, underwear, gloves, lingerie, nightgowns,
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`pajamas, t-shirts, leotards and down vests. A194. At the time the Board decided
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`the summary judgment motion in 1990, Mayer/Berkshire was using the designation
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`BERKSHIRE as a trademark on pantyhose, hosiery, socks and panty-garter
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`products, and as part of its trade name in connection with the sale of underwear.
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`Mayer/IBerl<:shire’s retail outlet store also offered a full range of men’s, women’s
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`and children’s clothing under the trade name “Mayer/Berkshire Company Store.”
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`A194, 199-‘E03.
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`As of 1990, Mayer/Berkshire owned eight registrations in Class
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`25 on the Principal Register comprised of or including the word BERKSHIRE in
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`connection with hosiery and related apparel items. A194-95.
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`2.
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`Berkshire Fashions
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`In the Class 25 Application that was the subject of the
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`opposition below, Berkshire Fashions sought registration of the designation
`BERKSHI]RE‘as a trademark on fourteen different items of apparel: raincoats,
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`sweaters, pocket squares, scarves, mantillas, gloves, hats, earmuffs, tops, blouses,
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`shirts, pants, vests and uniforms, alleging first use of the mark on such goods
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`dating back to 1946. According to the application, the only federal registration
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`owned at that time by Berkshire Fashions for the mark BERKSHIRE was in Class
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`18 for umbrellas, tote bags and umbrella and scarf sets sold as a unit. A151-52,
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`165.
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`B.
`
`Erior Litigation Between the Parties
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`1.
`
`The First Opposition Proceeding
`Against the Class 18 Application
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`On September 1 1, 1981, Berkshire Fashions filed Application
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`Serial No. 327,675 to register the BERKSHIRE mark for clothing and accessories
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`in Classes 18 and 25. In a final action, the Examiner refused registration of Serial
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`No. 327,675 based on Mayer/Berkshire’s prior Registration No. 598,238 for the
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`mark BE
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`SHIRE for women’s and children’s garments, namely, hosiery,
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`underwear, anklets, t-shirts, slips, panties and nightgowns. As a result of this
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`rejection, Berkshire Fashions deleted the Class 25 goods from the application and
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`the BERKSHIRE mark was published for opposition only for the Class 18 goods
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`
`
`
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`of umbrellas, tote bags and umbrella and scarf sets sold as a unit. (This application
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`will be referred to herein as the “Class 18 Application.”) A105, 115-17. On July
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`23, 1984, Mayer/Berkshire opposed Application Serial No. 327,675 as published
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`(the “First Opposition”), without the Class 25 clothing items included. A105.
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`2.
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`The New Jersey Action
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`In July 1982, Mayer/Berkshire filed suit against Berkshire
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`Fashions in federal district court for the district of New Jersey, claiming that
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`Berkshire Fashions’ use of the designation “Berkshire” constituted trademark
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`infiingement and unfair competition under §§ 32(1) and 43 (a) of the Lanham Act,
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`as well. as common law unfair competition. Mayer/Berkshire sought an injunction
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`enjoining Berkshire Fashions from using “Berkshire” as a trademark or trade name
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`and requiring Berkshire Fashions to withdraw the Class 18 Application. A105-06,
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`118-37. Berkshire Fashions asserted a counterclaim against Mayer/Berkshire
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`seeking, among other relief, an injunction enjoining Mayer/Berkshire from
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`opposing the Class 18 Application. A130-37. The opposition proceeding against
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`the Class 18 Application then pending in the Trademark Office was suspended
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`until the federal court action was concluded. The case was tried before a jury in
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`April 1985. A106.
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`At the time of trial of the New Jersey Action, there was no
`
`pending application by Berkshire Fashions to register the BERKSHIRE mark for
`
`
`
`
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`any Class 25 clothing items. Id.
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`In addition, on a number of the clothing items
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`that were submitted as evidence in the trial, the designation BERKSHIRE was not
`
`used as a ‘trademark. For example, on some of the trial exhibits, e.g., halter, tube
`
`and sun tops, the name “Berkshire” appeared only as part of a trade name on the
`
`inner label of the products in the form “By Berkshire Fashions.” See A195-96,
`
`204. «On other exhibits, e.g., earmuffs, hats, and gloves, the name “Berkshire”
`
`appeared only in small type or as part of the copyright notice on a side or back
`
`panel of the package. See A195-96, 204-07.2 Berkshire Fashions did not submit
`
`any contrary evidence on the summary judgment motion showing that the name
`
`“Berkshire” was used as a trademark on the products involved in the New Jersey
`
`Action.
`
`3.
`
`The Jury Verdict
`
`At the conclusion of trial, the judge instructed the jury that it
`
`must decide whether Berkshire Fashions had infringed Mayer/Berkshire’s
`
`BERKSHIRE trademark “by using the word BERKSHIRE as part of their trade
`
`name or trademark.” The jury verdict form asked the following three questions:
`
`1.
`
`Have defendants infringed plaintiffs trademark,
`i.e., is there a likelihood of confusion resulting
`from the use by defendants of the trademark and
`trade name “Berkshire”?
`
`2 Clearer depictions of these exhibits were included with the original declaration
`submitted in opposition to the motion and contained in the TTAB record in this
`matter.
`
`
`
`
`
`Yes
`
`No
`
`If No, answer no more questions; your
`deliberations are over.
`
`If Yes, go to question 2
`
`2.
`
`3.
`
`Have defendants infringed plaintiffs trademark by
`using the name Berkshire as part of their trade
`name on their products?
`
`Yes
`
`No
`
`Have defendants infringed plaintiff’ s trademark by
`using the name Berkshire as part of the names of
`their businesses?
`
`Yes
`
`No
`
`A106-0'7.
`
`Question 1 simply asked whether Berkshire Fashions’ then-use
`
`of the word “Berkshire” infringed Mayer/Berkshire’s trademark. It did not ask the
`
`jury to decide whether the uses in evidence represented trademark versus trade
`
`name use on any of the fourteen products identified in the Class 25 Application
`
`and it obviously did not ask the jury to consider whether there would be a
`
`likelihood of confusion occasioned by uses of the word “Berkshire” by Berkshire
`
`Fashions on products which had not been presented to it during the trial. The jury
`
`was also not asked to determine which company, Mayer/Berkshire or Berkshire
`
`Fashions, had prior rights to use and register the BERKSHIRE mark for the
`
`fourteen specific clothing items identified in its Class 25 Application.
`
`9
`
`
`
`
`
`The jury answered “no” to Question 1 and did not reach
`
`Questions 2 or 3. Id.
`
`4.
`
`Evidence Considered by the Jury
`
`In support of its motion for summary judgment in the
`
`opposition below, Berkshire Fashions did not specify which products were
`
`admitted into evidence in the New Jersey Action. A37-5 1. During ex parte
`
`proceedings on the Class 25 Application, however, Berkshire Fashions had
`
`attached a list of trial exhibits in the New Jersey Action. A138-44. The list did not
`
`include any sweaters, vests and pants, which are among the fourteen apparel items
`
`listed in the Class 25 Application. The exhibit list also did not show which
`
`products displayed BERKSHIRE as a trademark, rather than as a trade name, but
`
`as this Court can see from Exhibits 2 and 3 to the Mayer Declaration submitted in
`
`opposition to the motion for summary judgment, at least some of the products
`
`admitted into evidence at the trial used the “Berkshire” designation only as part of
`
`the trade name Berkshire Fashions. A204-207.
`
`5.
`
`Subsequent Histog of the Class 18 Application After Trial
`
`Following the conclusion of the New Jersey Action, Berkshire
`
`Fashions moved for judgment in Mayer/Berkshire’s First Opposition proceeding
`
`against the Class 18 Application, based on the outcome of the New Jersey civil
`
`10
`
`
`
`
`
`action. By Order of April 2, 1986, the Board granted Berkshire Fashions’ motion.
`
`A145-50.
`
`C.
`
`Lh_e Class 25 Application
`
`On October 16, 1986, Berkshire Fashions filed its Class 25
`
`Application. As originally filed, Berkshire Fashions sought registration of the
`
`BERKSHIRE mark for 16 different apparel products: raincoats, sweaters, pocket
`
`squares, scarves, mantillas, belts, gloves, hats, earmuffs, slippers, tops, blouses,
`
`shirts, pants, vests and uniforms. A151-52. The application was accompanied by a
`
`Preliminary Statement, in which Berkshire Fashions argued that the application
`
`should. be allowed based on the judgment in the New Jersey Action and the
`
`Board’s April 2, 1986 Order with respect to the prior Class 18 Application.
`
`Berkshire Fashions conceded that its Class 25 Application included belts and
`
`slippers, neither of which had been included in its Class 18 Application as
`
`originally filed. Nevertheless, it contended that since belts and slippers were
`
`related to other goods in the Class 25 Application, they should be allowed as well.
`
`A1l5—l7.
`
`In an initial office action of December 29, 1986, the Class 25
`
`Application. was refused based on six prior registrations of the BERKSHIRE mark
`
`owned by Mayer/Berkshire for “closely related goods.” Five of the
`
`Mayer/.Berl<:shire registrations had been pleaded in the New Jersey Action and the
`
`11
`
`
`
`
`
`sixth had issued subsequently. Examiner Richard Gordon stated that Berkshire
`
`Fashions’ ownership of a registration for Class 18 goods was irrelevant, since none
`
`of the goods in the Class 18 Application were the same as those in the new Class
`
`25 Application. In addition, the Examiner found that the clothing items for which
`
`Berkshire Fashions was seeking registration in the Class 25 Application were more
`
`closely related to Mayer/Berkshire’s goods than the Class 18 items for which
`
`Berkshire Fashions had previously obtained a registration — umbrellas, tote bags
`
`and umbrella/scarf sets sold as a unit. A153-65.
`
`After receiving a telephone call in March 1987 from Berkshire
`
`Fashions’ counsel, Examiner Gordon sent a memorandum to C.A. Sidoti, in which
`
`he inquired:
`
`Applicant claims that the five older [Mayer/Berkshire]
`registrations which I cited are out on the basis of res
`judicata and the newest is for the same or related goods.
`QUERY: Is the Board’s [April 2, 1986] Order mere dicta
`as to Class 25 goods? Does the US DCNJ order and the
`Board’s order preclude this office from protecting the
`public from the confusion of having two owners of
`BERKSHIRE registered marks for clothing?
`
`A note from C.A. Sidoti to Examiner Gordon responded as follows: “Since the Ct’s
`
`and Bd’s order pertained essentially to Class 18 goods (Class 25 having been
`
`deleted), resjudicata does not apply here. Go final.” A166-67.
`
`12
`
`
`
`
`
`A final refusal was issued on June 24, 1987. Examiner Gordon cited a
`
`number of “flaws” in Berkshire Fashions’ res judicata and collateral estoppel
`
`analysis, including:
`
`(1)
`
`(2)
`
`(3)
`
`All of the goods covered in the Class 25 Application, including
`belts and slippers, were likely to cause confusion with the six
`cited registrations belonging to Mayer/Berkshire. Any right
`which applicant might have to register a mark with respect to
`Class 18 goods would not give it the right, without independent
`examination, to add other goods related to the goods in
`Mayer/Berkshire’s registrations.
`
`The purpose of § 2(d) of the Trademark Act is not merely to
`protect prior registrants; it is also to protect the public from
`likelihood of confusion in the marketplace. “The U.S.
`Congress gave the responsibility of protecting the public from
`likelihood of confusion to the Patent and Trademark Office, not
`
`to the jury in the previous private litigation.”
`
`The court’s charge to the New Jersey jury is not likely to
`comport with decisions of the Trademark Trial and Appeal
`Board and the Court of Appeals for the Federal Circuit under
`which likelihood of confusion is a question of law, not fact, and
`would thus not be left to a jury. (citing Kimberly-Clark Corp. v.
`H. Douglas Enters., Ltd., 774 F.2d 1144 (Fed. Cir. 1985)).
`
`A168-71. Examiner Gordon concluded that the Trademark Office is “not helpless,
`
`and in fact is required by Section 2(d) of the Trademark Act to prevent likelihood
`
`of confusion of the public by registration of highly similar marks for closely
`
`related goods.” A171 .
`
`Berkshire Fashions filed a Notice of Appeal and a response to the
`
`Final Refusal. The Board remanded the application for consideration by the
`
`Examiner and, at the Examiner’s request, Berkshire Fashions submitted the
`
`13
`
`
`
`
`
`pleadings, jury charge, the New Jersey court’s final order and a list of trial exhibits
`
`from the New Jersey Action for the Examiner’s consideration. On August 19,
`
`1988, an Examiner’s amendment was entered, without discussion of the issues,
`
`withdrawing belts and slippers from the identification of goods in the Class 25
`
`Application, and withdrawing the refiisal of registration. A172. The mark was
`
`published for opposition on December 13, 1988.
`
`D.
`
`_M_ayer/Berkshire’s Qpposition to the Class 25 Application
`
`On May 31, 1989, Mayer/Berkshire filed its second Notice of
`
`Opposition, this one with respect to the Class 25
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