Trademark Proceedings Do Not Preclude Infringement Claims Over Band Name; 3rd Circuit

Beasley v Howard, 14 F4th 226 [3d Cir 2021]

In a long in a long-running dispute over the rights to the band name “Ebonys,” the 3rd Circuit held that proceedings to cancel a trademark before the TTAB did not have claim preclusive effect against trademark infringement lawsuits in federal district court. The plaintiff had filed two petitions in the TTAB to cancel the EBONYS trademark, which were dismissed. He then sued in federal court, alleging infringement. The lower court dismissed the claims on the basis of the TTAB proceedings, but the appellate court reversed.

Beasley appeals, so we now consider whether trademark cancellation proceedings before the TTAB have claim preclusive effect against trademark infringement lawsuits in federal district courts. We hold that they do not. The TTAB's limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies in proceedings before it. Because the judgments of tribunals with limited jurisdiction have limited preclusive effect, we will reverse and remand in part the District Court's order so that the District Court may determine the scope and plausibility of Beasley's claims. But we will affirm the District Court's order to the extent it dismisses any claim that Howard defrauded the U.S. Patent & Trademark Office (“PTO”).

“Different Strokes” Copyright Case Subject to Claim Preclusion; 7th Cir.

Johnson v. UMG Recordings, No. 16-2943 (7th Cir. Oct. 31, 2016).

Plaintiff’s copyright infringement case against some publishers concerning samples of his song “Different Strokes” was precluded by settlement of an earlier suit, holds the 7th Circuit in affirming that the Plaintiff should have moved before the original Judge to vacate the judgment on the alleged basis of fraud rather than commencing a new action.  The Appellate Court stated: “a judgment in civil litigation is not subject to collateral attack.  Fraud is a basis for setting aside a judgment, but that is done by motion…in the original case rather than by separate suit.”  Because the plaintiff had not attempted to re-open his earlier suit, his effort to obtain collateral review was properly dismissed.  The Court also noted that plaintiff was not entitled to split his claim into multiple pieces under the “merger and bar” doctrine.  “He must instead litigate all closely related claims at once.”