California businesses and owners who are obligated to submit to the discretion of the Trademark Trial and Appeal Board may not have the right to undertake further litigation once a decision has been handed down, according to a ruling from the United States Supreme Court. In a 7-2 decision, the Court held that a precedent exists for the TTAB to hold ultimate discretionary authority concerning certain trademark law decisions.

The decision, which involved a case concerning intellectual property and unfair competition practices, bolsters the authority of the TTAB to render administrative and binding judgment in certain cases. This is known as issue preclusion, in which a decision rendered administratively on a particular point of law by a duly authorized body such as the TTAB may not be challenged in further litigation. Writing for the majority, one justice argued that the notion of issue preclusion eliminated the plaintiff’s right to pursue court-based civil action on the matter once the TTAB’s decision was made.

Two justices disagreed, arguing that the constitutional questions raised by the majority decision that the TTAB had primary authority in adjudicating the private-rights portion of the case required further scrutiny by the Supreme Court. They also argued that case law did not properly consider this issue and no appropriate statutory exclusion existed.

In a trademark dispute, an attorney may begin by studying the history of the respective claimants to the trademark and whether the similarities are such as to warrant a complaint of unfair competition or infringement. The attorney might then petition for a cease-and-desist order on the offending party and request compensation for reasonable damages arising from the infringement. If a settlement is not possible or practical, the case may be pursued in litigation.

Source: Courthouse News Service, “SCOTUS Says Trademark Ruling Blocks Litigation,” Dan McCue, March 24, 2015