High Court Denies 2nd Petition on Preclusive Effect of TTAB Likelihood of Confusion Ruling

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By Tony Dutra

April 27 — The Supreme Court chose not to remand a case that presented a question similar to the one the court decided March 24 in B&B Hardware v. Hargis.

The court denied David Escamilla's petition for writ of certiorari on the preclusive effect of a Trademark Trial and Appeal Board decision.

The court also denied a petition related to ownership of copyrights in the works of the Godfather of Soul, James Brown.

Escamilla v. M2 Tech., Inc.

In 2010, the TTAB determined that M2 Technology Inc. could not register an “M2” design mark or the “M2 Technology” word mark because of a likelihood of confusion with the marks owned by M2 Software Inc., of which Escamilla is an individual owner.

Nevertheless, in 2014, the U.S. Court of Appeals for the Fifth Circuit affirmed that Escamilla had failed to show any likelihood of confusion based on M2 Technology's use of the M2 mark (Escamilla v. M2 Tech., Inc., 581 Fed. Appx. 449, 2014 BL 250550 (5th Cir. 2014).

The B&B Hardware case came to the Supreme Court under similar circumstances. The court held that, so long as the usual conditions for issue preclusion or collateral estoppel have been met, a likelihood of confusion ruling by the TTAB might have preclusive effect in district court (B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, 2015 BL 80363, 113 U.S.P.Q.2d 2045 (U.S. March 24, 2015).


The first question presented in Escamilla's Jan. 10 petition was:

Is a final judgment of the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board sustaining allegations of likelihood-of-confusion afforded preclusive effect under ordinary preclusion principles (and, in the alternative, are decisions by the Commissioner for Trademarks and the USPTO's expert examiners entitled to deference)?


The Fifth Circuit also affirmed, on Oct. 20, a district court's order that Escamilla pay M2 Technology $75,000 in reasonable attorneys' fees under the Lanham Act (M2 Tech., Inc. v. M2 Software, Inc., 589 Fed. Appx. 671, 2014 BL 294228 (Oct. 20, 2014). The problem for Escamilla in that case was based on his repeated attempts to appear pro se and avoid joining his company, because corporations must be represented by counsel.

That was the basis for Escamilla's second question presented:

Does an Article III controversy exist in a declaratory judgment suit that seeks a declaration of non-infringement of a federal trademark (15 U.S.C. §1114(1)) but which does not name the federal trademark owner, where the sole declaratory defendant is a non-exclusive licensee with no legally-cognizable interest or any ability to sue pursuant to the terms of its license?


Richard C. King Jr. of the King Law Group PLLC, Dripping Springs, Texas, represented Escamilla. M2 Technology was represented by John T. Gabrielides of Brinks Gilson & Lione, Chicago.

Pope v. James B.

The question presented in the copyright case was essentially an offshoot of a family inheritance squabble:

Can a manifestly unjust state spousal determination made without due process notice and hearing or equal protection under law for children, incarcerated children, and others, can bind heirs, creditors, charitable foundations and others and be used to subvert termination rights under the Federal Copyright Act?


In an unpublished opinion, the Supreme Court of South Carolina affirmed the trial court's order denying a motion to alter an order from the underlying omitted spouse claim against James Brown's estate.

Charles E. Carpenter Jr. of Carpenter Appeals & Trial Support LLC, Columbia, S.C., represented claimant Adele Pope. J. Brian King of Donsbach & King LLC, Atlanta, responded on behalf of Brown's son Terry.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Anandashankar Mazumdar at amazumdar@bna.com


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