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`United States Court of Appeals for the Federal Circuit
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`04-1254
`(Opposition No. 91/080,606)
`
`SOUCWOR
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`OCT 1 7 2905
`
`MAYER/BERKSHIRE CORP.,
`
`v.
`
`BERKSHIRE FASHIONS, INC.,
`
`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
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`ENTERED BY ORDER OF THE COURT
`DATED:.____S:_EP22 2°05 __ .-
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`
`
`erk
`Jan Horbaly,
`CERTIFIED COPY
`RTIFY THIS DOCUMENT
`‘ HIEFEAND CORRECT cow
`OF THE 0RiG|NAL on FILE.
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`/!§%UED AE A MANDATEZ on 13 2005
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`‘g;‘: 3E;’m S,
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`3
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`Date
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`,¢’v
`Z
`United States Court of Appeals for the Federal Circuit
`
`04-1254
`(Opposition No. 91/080,606)
`
`SOUCWOR
`
`OCT 1 7 2905
`
`MAYER/BERKSHIRE CORP.,
`
`v.
`
`BERKSHIRE FASHIONS, INC.,
`
`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:.____S:_EP22 2°05 __ .-
`
`
`
`erk
`Jan Horbaly,
`CERTIFIED COPY
`RTIFY THIS DOCUMENT
`‘ HIEFEAND CORRECT cow
`OF THE 0RiG|NAL on FILE.
`
`/!§%UED AE A MANDATEZ on 13 2005
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`NS
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`N
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`‘g;‘: 3E;’m S,
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`3
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`Date
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`1
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`
`
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`United States Court of Appeals for the Federal Circuit
`
`04-1254
`
`(Opposition No. 91/080,606)
`
`MAYER/BERKSHIRE CORP.,
`
`Appellant,
`
`BERKSHIRE FASHIONS. |NC.,
`
`Appellee.
`
`James B. Swire, Dorsey & Whitney LLP, of New York, New York, argued for
`appellant. With him on the brief was Sandra Edelman.
`
`Ezra 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
`
`
`
`
`
`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 their trade names and as a trademark in
`
`association with various items of clothing and accessories. Mayer/Berkshire states that it
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`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,
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`underwear, gloves, lingerie, nightgowns, pajamas, t-shirts, leotards, and down vests, and
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`in their retail outlet store with a full range of men's, women's, and children's clothing. As
`
`of 1990 Mayer/Berkshire 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
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`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
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`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, E 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
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`goods from the application. The application with the remaining Class 18 goods was
`
`04-1254
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`2
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`
`
`
`
`United States Court of Appeals for the Federal Circuit
`
`04-1254
`
`(Opposition No. 91/080,606)
`
`MAYER/BERKSHIRE CORP.,
`
`Appellant,
`
`v.
`
`BERKSHIRE FASHIONS, |NC.,
`
`Appellee.
`
`DECIDED: September 22, 2005
`
`Before NEWMAN, . FRIEDMAN, Senior Circuit Judge, and BRYSON,
`Circuit Judge.
`
`NEWMAN, Qlcuit 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
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`l\_/Layer/Berkshire Corg. v. Berkshire Fashions, lnc.. Opposition No. 80,606
`1
`(TTAB Dec. 17, 2003).
`
`
`
`
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`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.
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`In 1982 Mayer/Berkshire had filed suit against Berkshire Fashions in the United
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`States District Court for the District of New Jersey, alleging trademark infringement and
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`unfair competition. The Board suspended the opposition proceeding in Class 18 until the
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`district court action was concluded.
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`In April 1985 the district court case went to the jury,
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`with the following question:
`
`‘I.
`
`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"?
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`If No, answer no more questions; your deliberations are over.
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`The jury answered "No," and the district court entered judgment for Berkshire Fashions.
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`The Board then dismissed Mayer/Berkshire's opposition, and the registration in Class 18
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`issued to Berkshire Fashions for use of the mark BERKSHIRE with umbrellas, tote bags,
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`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
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`appeal, seeking registration for the apparel items in Class 25 that it had removed from the
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`earlier application. The trademark examiner rejected the application based on six of
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`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
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`Fashions submitted a list of trial exhibits in the New Jersey action that included most but
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`not all of the kinds of items in Berkshire Fashions Class 25 application. Thereafter, after
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`deleting belts and slippers from the list of goods in the application, the examiner passed
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`the Class 25 application to publication. Mayer/Berkshire duly filed a notice of opposition,
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`04- 1 254
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`3 j
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`
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`alleging likelihood of confusion between the BERKSHIRE mark applied to the Berkshire
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`Fashions items in Class 25 and the items subject to Mayer/Berkshire's registered
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`BERKSHIRE marks.
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`The Board granted summaryjudgmentin favor of Berkshire Fashions, ruling that the
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`issue of likelihood of confusion had been decided in the New Jersey civil action and could
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`not be re—lltigated, applying res judicata and collateral estoppel. The Board held that
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`Mayer/Berkshire was estopped to challenge the registration of BERKSHIRE for the
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`fourteen kinds of goods in Berkshire Fashions‘ Class 25 application. The TTAB entered
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`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
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`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
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`genuine issue as to any material fact and that the moving party is entitled to a judgment
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`as a matter of law." Fed. R. Civ. P. 56(c). The Board has adopted the Federal Rules for
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`inter partes proceedings. 37 C.F.R. §2.116(a) (2005). The Board's summaryjudgment is
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`reviewed in accordance with the requirements of Federal Rule 56. See Lincoln Logs Ltd.
`
`v. Lincoln fig-_cut Log Homes, |nc., 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
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`04-1254
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`l
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`based on evidence showing that much of Berkshire Fashions‘ use of the word BERKSHIRE
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`was in its trade name,
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`in usages such as the label "By Berkshire Fashions" or on
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`packages, but not in trademark use; and that this presentation explains thejury verdict that
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`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/Berkshire 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
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`district court. Mayer/Berkshire urges that preclusion was improperly applied by the Board.
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`Res judicata, or claim preclusion, protects against re-litigation of a previously
`
`adjudicated c:laim between the same parties or their privies. As discussed in Parklane
`
`Hosiegg Qoflg , 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 or their 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
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`
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`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 geL_|_rLg 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 of goods 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 of dilution 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 oftransactional 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. &
`
`in_c._, 223 F.3d at 1364-65.
`
`04-1254
`
`'
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`6
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`4;
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`
`
`
`
`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 _t§e_ 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 Lnr_e
`
`fljlgrigdcasting Corp. of Dallas, 60 _USPQgd 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." _S_ee gggergfly J.T. McCarthy, McCarthy on Trademark and
`
`LJ__r_1_fgr_Qmg=ti_t19_n_, §32:82 at 32:143 (4th ed. 2004) ("A claim for infringement is not the
`
`same as an inter partes 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 or the 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
`
`summary judgment inapplicable, for the Board did not consider the separate goods in the
`
`04-1254
`
`7
`
`__L__.________
`
`
`
`
`
`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 summaryjudgment, Berkshire Fashions’ earlier inconspicuous marking of some
`
`goods with labels bearing only the trade name, has evolved into major marketing activity
`
`promoting the trademark 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 ofthe 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 dial 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.
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`04-1254
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`8
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`
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`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 Opgland 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
`
`summaryjuclgment 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." Wewing the proffered evidence in the light most favorable to Mayer/Berkshire,
`
`as the Board‘ was required to do, fl , 961 F.2d
`
`200, 205 (Fed. Cir. 1992), MayerlBerkshire 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.
`
`§_e=§_ , 577 F.2d 709. 711 (CCPA 1978)
`
`("This court has previously held that resjudicata 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. Sto_n__e_gu_tter 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
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`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
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`04-1254
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`9
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`
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`
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`(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.") fie Foster v.
`
`Ll_a_ll&Mg;._lQ, 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.
`
`
`McNellis 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,
`
`of. United States v. Munsingwear, lnc., 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.
`
`VACATED ANQ REMANDED
`
`CERTlFlED COPY
`CERTIFY THlS DOCUMENT
`‘ HERE‘¥uE AND CORRECT cow
`'5 3F THE ORIGINAL ON FILE.
`UN|TED STATES counr or= APPEALS
`FORTH FEDERAL CIRC IT
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`5/
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`o4-1254
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`1o
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