Docket No. 2012-1495, -1496
LOURIE, O’MALLEY, TARANTO
June 18, 2013
Brief summary: Neither issue preclusion nor claim preclusion found to barr PTO trademark opposition proceedings because litigation was based on different transactional facts (product-specific litigation).
Summary: Levi Strauss appealed PTO TTAB decision that district court litigation precluded its challenges in the PTO relating to its jeans stitching-design mark due to issue preclusion. Levi Strauss opposed Abercombie’s registration of “mirror image stitching” on “[c]lothing, namely, jeans, skirts, pants and jackets” and then sued in the Northern District of CA after learning Abercrombie was selling products including the mark. The jury decided that Abercrombie’s products did not infringe Levi Strauss’ mark and the DC later found no dilution. Additional litigation followed but ulitimately the case was dismissed and opposition and cancellation proceedings at the PTO resumed. The Board granted SJ to Abercrombie on the ground of issue preclusion (not claim preclusion) and Levi Strauss appealed. The FC panel found neither issue to bar Levi Strauss’ challenges. For a suit to be barred by issue preclusion, four conditions must be met: 1) identity of the issues in a prior proceeding; 2) the issues were actually litigated; 3) the determination of the issues was necessary to the resulting judgment; and 4) the party defending against preclusion had a full and fair opportunity to litigate the issues (citing Jet, Inc. (FC 2000)). The “key” for issue preclusion in a second suit is that “there must have been an earlier determination of that issue in a first suit and the earlier determination must have been necessary to the resulting judgment in that suit.” Claim preclusion is not dependent “on an earlier court’s resolution of a particular issue, but prevents a litigant, in certain circumstances, from pressing issues in a second suit that it could and should have raised in earlier litigation even if it did not” (Brown, US 1979; Parklane Hosiery, US 1979 (same parties or their privies based on same cause of action, same set of transactional facts (added by FC: “identified ‘pragmatically'”)). Because the “PTO proceedings involve a much broader set of issues than were presented to, or therefore adjudicated in” the DC, issue preclusion did not apply (e.g., litigation only related to particular product line, not “all of the items for which registration is sought”). Claim preclusion was also held not to apply because, while the parties were the same, the transactional facts, “pragmatically judged”, were not (e.g., “product-specific transactional facts”). Accordingly, it was concluded that the Board erred in its decision which was, therefore, reversed and remanded.