Goods Differences Prevent Infringement Preclusion before the TTAB

In Mayer/Berkshire Corp. v. Berkshire Fashions, Inc. (Fed. Cir.; September 22, 2005), the court concluded that the question of the likelihood of confusion before the trial (distict) court presented sufficiently different issues and transactional facts to bar the application of preclusion before the Trademark Trial and Appeal Board:

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 (1878). . . . The question of the likelihood of confusion presented sufficiently
different issues and transactional facts to bar the application of preclusion. The summary judgment of the Board is vacated, and the case is remanded for
further proceedings.

In this case, 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 the opposition proceeding the question of likelihood of confusion required 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 disputed the extent to which Berkshire Fashions' application embraced a broader statement of goods than those before the district court. According to the Federal Circuit, "this aspect alone rendered summary judgment inapplicable, for the Board did not consider the separate goods in the Class 25 application, but stated that all "garments" were included in the district court judgment. Precedent and practice require a more detailed analysis."