Intellectual Property News and Reports

Musicians David Beasley and William Howard are embroiled in a long-running dispute over the rights to the band name “Ebonys.” Beasley filed two petitions before the Trademark Trial and Appeal Board (“TTAB”) to cancel Howard’s registered THE EBONYS mark. The TTAB dismissed them both. Beasley then filed a lawsuit against Howard for trademark infringement in federal court. The District Court relied on claim preclusion to dismiss Beasley’s complaint. 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”).

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