The determination by the Trademark Trial and Appeal Board, or TTAB, as to whether or not a mark creates a likelihood of confusion with another mark has historically not been binding upon a federal court in any subsequent trademark litigation. However, the United States Supreme Court has been asked to decide whether federal courts are bound by the findings of the TTAB related to the likelihood of confusion matters. This petition is the result of federal district court and Eighth Circuit Court of Appeals rulings that were contrary to what the TTAB had found. It will be interesting to see whether or not the Supreme Court entertains the issue in changes the binding of that, or lack thereof, in TTAB likelihood of confusion matters.
Trademark attorneys know that when there is a potential for likelihood of consumer confusion, the matter can be addressed via an opposition proceeding or a cancelation proceeding before the TTAB. Unfortunately, trademark lawyers have to advise their clients that the TTAB decision may lead to federal trademark litigation, and the result of that federal trademark litigation may be different from what the TTAB had found. Therefore, it is not out of the ordinary for trademark owners, or those subject to a trademark dispute, to choose to go directly to a federal court. Should the United States Supreme Court change precedent, the TTAB may become a more attractive option, especially since any TTAB ruling would have binding effect on federal court.
The TTAB is sometimes seen as a better option since it typically can cost less and lead to a faster resolution. That said, that is not always the case and a tradmark attorney should be consulted in order to identify whether a TTAB or federal trademark litigation is the best course of action. Among the considerations is obviously the fact that the TTAB does not afford damages but instead simply makes the determination as to whether or not a mark is registered. As such, a plaintiff looking to recover statutory damages, attorney's fees, or other injunctiive relief may look directly to federal court. Regardless, this trademark development is something worth keeping an eye on, both for trademark owners as well as trademark attorneys.