One case we are following that is being argued next week is In re FCA US LLC. This case presents the question of whether the Trademark Trial and Appeal Board erred in holding a mark was likely to cause confusion given that in a separate proceeding a district court determined confusion was unlikely.
FCA argues in its opening brief that “the Board Ruling . . . (a) undercuts the rationale for the Board’s long-standing suspension procedures under 37 C.F.R. § 2.67 and 37 C.F.R. § 2.117(a); (b) encourages the routine joinder of the USPTO as a party to trademark infringement litigation in the courts; and (c) wastes judicial resources of Article III courts.”
In its response brief, the U.S. Patent and Trademark Office argues the district court decision did not provide controlling authority because “the district court had considered a more limited universe of goods and trade channels than those identified in FCA’s application.” It further points out that, despite employing the same test, the district court and Board faced different facts: “That the legal tests are fundamentally the same does not answer the question of whether the factual issues are identical for preclusion purposes.”
In its reply brief, FCA argues that the U.S. Patent and Trademark Office “Director does not offer a persuasive rationale as to why the Board Ruling should prevail. Instead, the Director stakes out a position under which the USPTO can never be bound by the results of trademark infringement litigation, and can simply ignore those results as the USPTO sees fit. Such an outcome is counterintuitive, hampers judicial economy, and merits reversal.”
Notably, Moab Industries, LLC, “the current owner of the federally registered service mark . . . cited by the United States Patent and Trademark Office . . . as grounds for denying Appellant FCA US LLC’s application,” filed an amicus brief supporting the U.S. Patent and Trademark Office.
Parallel proceedings seem to be the norm in intellectual property disputes these days. In patent disputes, for example, district courts routinely address invalidity arguments also raised in inter partes review proceedings. It will be interesting to see how the court rules in this trademark case, and to see if there are any takeaways for patent cases.