Partner Dyan Finguerra-DuCharme Authors Article About U.S. Supreme Court Decision in B&B Hardware, Inc. on Likelihood of Confusion

January 18, 2013

Partner Dyan Finguerra-Du Charme, a member of Pryor Cashman’s Litigation and Intellectual Property Groups, has authored the article “Supreme Court Trademark Decision Creates More Questions Than Answers” for the April/May 2015 edition of the New York Intellectual Property Law Association (NYIPLA) Bulletin.

In the article, Finguerra-DuCharme discusses the March 14, 2015 decision of the U.S. Supreme Court in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). In a 7-2 ruling, the Court held that an adjudication of likelihood of confusion by the Trademark Trial and Appeal Board (TTAB) can constitute issue preclusion in a federal district court case involving the same trademarks. Although the Supreme Court recognized that district courts and the TTAB often consider different factors, the Court ruled that the confusion standards are essentially the same. Acknowledging concerns raised by amicus briefs, the Supreme Cout further held that “if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.”

Finguerra-DuCharme, who is Co-Chair of the Trademarks Committee of NYIPLA, was Counsel of Record for the NYIPLA’s amicus brief submitted to the Supreme Court in the B&B Hardware, Inc. case.

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