Will B&B preclusion become typical?

Buzz Seating, Inc. v. Encore Seating, Inc., No. 16-cv-1131
(S.D. Ohio Jun. 16, 2017)
This case suggests that B&B
is quite a broad decision, despite some cautionary statements in the Court’s
opinion—you can avoid B&B
preclusion if you sell goods other than
those in the refused registration
, but otherwise, watch out. 
Buzz, a maker of office chairs under the mark FLITE, sued
Encore, which also makes an executive chair under the mark FLITE for trademark
infringement and related claims. They allegedly advertise in the same
publications, attend the same trade shows, and hire the same dealers and  sales representatives.
Encore applied to register FLITE for “Office furniture,
including chairs” in 2011; Buzz opposed and filed its own application in
2013.  The TTAB sustained Buzz’s
opposition because the marks were identical and the goods and channels of trade
were legally identical (describing Buzz’s use as “for stacking or side
chairs”).  Instead of appealing, Encore
abandoned its first application and filed for a concurrent use application,
allowing use in 24 states and concurrent use by Buzz in Ohio.  Buzz sued, and Encore answered and
counterclaimed seeking a declaration of noninfringement and an order directing
the PTO to reject Buzz’s application.
B&B preclusion
applied to likely confusion, given that Encore had already argued before the
TTAB that “there is no likelihood of confusion because Buzz Beating’s FLITE
stacking chairs are vastly different from Encore’s FLITE executive chairs, are
not sold to the same customers, and do not compete in the marketplace.” Encore
argued that the TTAB considered only whether the broad category of goods identified
in its application were likely to cause confusion, but here it was arguing that
the specific executive chairs actually sold under the FLITE mark are not likely
to cause confusion when compared to Buzz’s side chairs. But B&B says that preclusion will apply
“[i]f a mark owner uses its mark in ways that are materially the same as the
usages included in its registration application.”  The description of the class of goods
encompassed the specific goods, executive chairs, Encore was selling, and thus
there were no material differences between the usage identified in the
application and actual usage.  Comment:
under this reasoning, it’s hard to see why B&B
wouldn’t always demand preclusion in this posture. 
The court pointed out that the TTAB already rejected this
nonconfusion argument; Encore to told the TTAB that its chairs were “premium
executive chairs sold to corporate customers for use  behind a desk or in a conference room,” and
that “a person purchasing a stacking chair such as [Buzz Seating’s] Flite chair
would not buy an executive chair and vice-versa.”  Of course, a “crucial” fact in the TTAB’s
rejection was that Encore didn’t limit its identification of goods to executive
chairs, but the TTAB also held that the differences didn’t avoid a likelihood
of confusion, because the question was not whether the chairs would be confused
but rather whether there’d be source confusion, and the evidence showed that
executive chairs and side chairs were closely related, and sold by the same
dealers or distributors to the same customers. 
Indeed, Buzz sold both executive chairs and side chairs, and used the
same mark at least once.
Even if the court found the differences material under B&B, Encore’s claim would still be
barred under claim preclusion, because the issue could have been raised before
the PTO.  Encore offered to limit its identification
of goods, but the TTAB found it had done so too late.  And this holding further expands B&B—if one can imagine limiting the
registration in a way that avoids likely confusion, one should have done so
already.  Thus, the noninfringement
counterclaim was dismissed.
The court declined to rule on Encore’s counterclaim about
priority of registration because it doubted it had jurisdiction over a
registration issue for a registration that had yet to issue; the court sought
more briefing.

The court also struck affirmative defenses that concerned
the same issues, including Encore’s abandonment defense, but it did not strike
the defense that Buzz hadn’t used Flite, or made more than de minimis use, in
certain regions of the US and that therefore Encore was the senior user in
those regions.  The TTAB held that Buzz
could succeed in its opposition without proving priority of use on a
state-by-state basis, as long as there was prior use in the US, and thus the
TTAB didn’t resolve that priority question. 

from Blogger http://ift.tt/2srtA5c

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