In a trademark infringement suit in the Southern District of New York, the U.S. district court granted plaintiff’s motion for summary judgment, ruling that issue preclusion applied to the issue of likelihood of confusion based on a 2004 TTAB decision [pdf here]. The court found defendant’s mark LIANA for wine confusable with plaintiff’s previously registered mark LIANO for wine. Defendants argued that “their actual marketplace usage of LIANA is materially different from that with the TTAB adjudicated,” but the court disagreed. Did the court properly apply B&B HardwareCesari S.R.L. v. Peju Province Winery L.P. et al., Civil Action No. 17 Civ. 873 (NRB) (S.D.N.Y.  Dec. 11, 2017).

According to B&B Hardware, issue preclusion applies to TTAB adjudications, the Court concluding that “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.”

Defendants pointed out that their actual usage is limited to wines from grapes grown in Northern California, wines purchased by sophisticated customers, new world wines, wines priced between $40 and $60 per bottle, and wines sold on specific websites and at specific wineries.

The court, however, found this to be a “distinction without a difference in this context.”

The specific trade channels and classes of consumers that purportedly characterize the LIANA mark’s usage are among the “reasonable trade channels” and “usual classes of consumers” the TTAB considered. In other words, the marketplace usage the TTAB considered, wines, entirely encompasses the narrower usages defendants proffer in this litigation. Wines purchased by sophisticated consumers, after all, are still wines. Because defendants have not offered any evidence that LIANA is used with respect to goods other than wines (bicycles or soda, for instance), there are no “non-disclosed” usages that might necessitate a successive adjudication. See B&B Hardware, 135 S. Ct. at 1307-08.

The court therefore granted plaintiff’s motion for summary judgment against the one defendant involved in the prior TTAB proceeding, but not to the other defendants because plaintiff failed to proved that they controlled the applicant in the TTAB proceeding or in this litigation.