On June 13, 2016, the U.S. Court of Appeals for the Fourth Circut affirmed the ruling of the U.S. District Court for the District of Maryland [TTABlogged here], which had dismissed Keith A. Ashe's suit for trademark infringement on the ground of issue preclusion based on a prior decision of the TTAB [TTABlogged here] on the issue of priority of use. Ashe v. PNC Financial Services Group, Inc., Appeal No. PWG-15-144 (4th Cir. June 13, 2016).

The district court applied the Supreme Court's holding in B&B Hardware v. Hargis that "a court should give preclusive effect to [Trademark Board] decisions if the ordinary elements of issue preclusion are met." Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November 17, 2015).

The district court found that the determination of priority of use by the TTAB in an opposition is the same as the determination of priority of use for purposes of an infringement claim. Furthermore, that issue was resolved in the TTAB proceeding, the issue was critical and necessary to the TTAB's judgment, the judgment was final, and Ash has a full and fair opportunity to litigate the issue before the Board. Thus all five requirements for issue preclusion were met.

The appellate court, in a four-page per curiam opinion, concluded that the district court did not in dismissing as barred by collateral estoppel.

The district court concluded, and PNC argues on appeal, that the issue of priority in a trademark opposition case before the TTAB is always identical to the issue of priority in a federal trademark infringement case. In contrast, Ashe argues that the Supreme Court in B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1299 (2015), held that the issue of priority will, at least sometimes, be different.

Even assuming that B & B Hardware stands for the proposition that, when considering the issue of priority, courts must determine whether the actual use of a mark is the same as the use stated in a trademark application, Ashe has alleged no actual use of the mark other than those uses described in his trademark application. Consequently, in this case, the issue of priority decided by the TTAB was identical to the issue of priority presented to the district court.

Therefore, the Fourth Circuit affirmed the district court 's decision.