United States Court of Appeals for the Federal Circuit 

04-1254 

(Opposition No. 91/080,606) 

MAYER/BERKSHIRE CORP., 

Appellant, 

v. 

BERKSHIRE FASHIONS, INC., 

Appellee. 

James B. Swire, Dorsey & Whitney LLP, of New York, New York, argued for 

appellant. With him on the brief was Sandra Edelman. 

Ezra Sutton, Ezra Sutton, P.A., of Woodbridge, New Jersey, argued for appellee. 

Appealed from: United States Patent and Trademark Office, Trademark Trial and 

 Appeal Board 
United States Court of Appeals for the Federal Circuit

 04-1254 

(Opposition No. 91/080,606) 

 MAYER/BERKSHIRE CORP., 

Appellant, 

 v. 

BERKSHIRE FASHIONS, INC., 

Appellee. 

__________________________ 

DECIDED: September 22, 2005 

__________________________ 

Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and BRYSON, 

Circuit Judge. 

NEWMAN, Circuit Judge. 

Mayer/Berkshire Corp. appeals the decision of the United States Patent and 

Trademark Office, Trademark Trial and Appeal Board,1

 dismissing its opposition to the 

registration by Berkshire Fashions, Inc. of the mark BERKSHIRE for various categories of 

 

1 Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., Opposition No. 80,606 

(TTAB Dec. 17, 2003). 
04-1254 2 

clothing. The Board held that the opposition is barred by res judicata and collateral 

estoppel arising from prior district court infringement litigation. We conclude that the Board 

erred in its application of these doctrines. The dismissal is vacated and the case is 

remanded to the PTO for further proceedings. 

 BACKGROUND 

Both parties use the word BERKSHIRE in their trade names and as a trademark in 

association with various items of clothing and accessories. Mayer/Berkshire states that it 

and its predecessor companies have used BERKSHIRE since 1906 in their trade name and 

since 1925 as a trademark in association with apparel including socks, hosiery, underwear, 

gloves, lingerie, nightgowns, pajamas, t-shirts, leotards, and down vests, and in their retail 

outlet store with a full range of men's, women's, and children's clothing. As of 1990 

Mayer/Berkshire had eight registrations for BERKSHIRE in Class 25 for use in connection 

with hosiery and apparel items. 

Berkshire Fashions states that it has used BERKSHIRE in its trade name since 

1945, and as a trademark for various goods. In September 1981 Berkshire Fashions filed 

an application to register the mark BERKSHIRE as applied to articles in Classes 18 and 25. 

 The Class 18 goods included umbrellas, tote bags, and umbrella and scarf sets sold as a 

unit. The Class 25 goods included sixteen kinds of apparel, viz. raincoats, sweaters, 

pocket squares, scarves, mantillas, belts, gloves, hats, earmuffs, slippers, tops, blouses, 

shirts, pants, vests, and uniforms. The examining attorney refused registration in Class 25 

because of Mayer/Berkshire's prior registrations of BERKSHIRE in Class 25 for various 

items of women's and children's garments. Berkshire Fashions then deleted the Class 25 

goods from the application. The application with the remaining Class 18 goods was passed 
04-1254 3 

to publication, and Mayer/Berkshire filed an opposition in July 1984 under Section 13 of the 

Lanham Trademark Act, 15 U.S.C. §1063. 

In 1982 Mayer/Berkshire had filed suit against Berkshire Fashions in the United 

States District Court for the District of New Jersey, alleging trademark infringement and 

unfair competition. The Board suspended the opposition proceeding in Class 18 until the 

district court action was concluded. In April 1985 the district court case went to the jury, 

with the following question: 

1. Have defendants infringed plaintiff's trademark, i.e., is there a 

likelihood of confusion resulting from the use by defendants of 

the trademark and trade name "Berkshire"? 

If No, answer no more questions; your deliberations are over. 

The jury answered "No," and the district court entered judgment for Berkshire Fashions. 

The Board then dismissed Mayer/Berkshire's opposition, and the registration in Class 18 

issued to Berkshire Fashions for use of the mark BERKSHIRE with umbrellas, tote bags, 

and umbrella and scarf sets. That registration is not here at issue. 

In October 1986 Berkshire Fashions filed the application that is the subject of this 

appeal, seeking registration for the apparel items in Class 25 that it had removed from the 

earlier application. The trademark examiner rejected the application based on six of 

Mayer/Berkshire's prior registrations in Class 25. Berkshire Fashions appealed to the 

Board, who remanded to the examiner to consider the New Jersey litigation. Berkshire 

Fashions submitted a list of trial exhibits in the New Jersey action that included most but 

not all of the kinds of items in Berkshire Fashions Class 25 application. Thereafter, after 

deleting belts and slippers from the list of goods in the application, the examiner passed the 

Class 25 application to publication. Mayer/Berkshire duly filed a notice of opposition, 
04-1254 4 

alleging likelihood of confusion between the BERKSHIRE mark applied to the Berkshire 

Fashions items in Class 25 and the items subject to Mayer/Berkshire's registered 

BERKSHIRE marks. 

The Board granted summary judgment in favor of Berkshire Fashions, ruling that the 

issue of likelihood of confusion had been decided in the New Jersey civil action and could 

not be re-litigated, applying res judicata and collateral estoppel. The Board held that 

Mayer/Berkshire was estopped to challenge the registration of BERKSHIRE for the fourteen 

kinds of goods in Berkshire Fashions' Class 25 application. The TTAB entered final 

judgment denying the opposition to the Class 25 registration. 

 DISCUSSION 

This appeal is from the Board's grant of summary judgment in reliance on res 

judicata and collateral estoppel based on the district court judgment in the infringement 

litigation. When an administrative agency governed by the Federal Rules grants a motion 

for summary judgment, the pleadings and record evidence must "show that there is no 

genuine issue as to any material fact and that the moving party is entitled to a judgment as 

a matter of law." Fed. R. Civ. P. 56(c). The Board has adopted the Federal Rules for inter 

partes proceedings. 37 C.F.R. §2.116(a) (2005). The Board's summary judgment is 

reviewed in accordance with the requirements of Federal Rule 56. See Lincoln Logs Ltd. v. 

Lincoln Pre-cut Log Homes, Inc., 971 F.2d 732, 734 (Fed. Cir. 1992) (court gives de novo

review to the grant of summary judgment in an opposition proceeding). 

Mayer/Berkshire states that the decision of the infringement case in the district court 

does not control federal trademark registration, on principles of either res judicata or 

collateral estoppel. Mayer/Berkshire states that the decision in the infringement trial was 
04-1254 5 

based on evidence showing that much of Berkshire Fashions' use of the word BERKSHIRE 

was in its trade name, in usages such as the label "By Berkshire Fashions" or on packages, 

but not in trademark use; and that this presentation explains the jury verdict that there was 

not a likelihood of confusion between Berkshire Fashions' and Mayer/Berkshire's identical 

marks. Thus Mayer/Berkshire argues that the evidence presented to the district court does 

not warrant the summary judgment in the opposition proceeding. Mayer/Berkshire also 

states that the Board is required to consider issues of priority of use and the scope of the 

goods in the Class 25 application, issues that were not before the district court. 

Mayer/Berkshire urges that preclusion was improperly applied by the Board. 

Res judicata, or claim preclusion, protects against re-litigation of a previously 

adjudicated claim between the same parties or their privies. As discussed in Parklane 

Hosiery Company, Inc. v. Shore., 439 U.S. 322, 326 n.5 (1979), "Under the doctrine of res 

judicata, a judgment on the merits in a prior suit bars a second suit involving the same 

parties or their privies based on the same cause of action." In Jet, Inc. v. Sewage Aeration 

Systems, 223 F.3d 1360, 1362 (Fed. Cir. 2000) this court on reviewing a cancellation 

proceeding on appeal from the Board, elaborated that "a second suit will be barred by claim 

preclusion if: (1) there is identity of parties (or their privies); (2) there has been an earlier 

final judgment on the merits of a claim; and (3) the second claim is based on the same set 

of transactional facts as the first." 

In the absence of res judicata, the related principle of collateral estoppel or issue 

preclusion can also bar relitigation of the same issue in a second action. In Parklane, 439 

U.S. at 326 n.5, the Court explained that "[u]nder the doctrine of collateral estoppel, on the 

other hand, the second action is upon a different cause of action and the judgment in the 
04-1254 6 

prior suit precludes re-litigation of issues actually litigated and necessary to the outcome of 

the first action." In Montana v. United States, 440 U.S. 147, 153-55 (1979) the Court 

summarized the requirements of collateral estoppel as (1) identity of an issue in a prior 

proceeding, (2) the identical issue was actually litigated, (3) determination of the issue was 

necessary to the judgment in the prior proceeding, and (4) the party defending against 

preclusion had a full and fair opportunity to litigate the issue in the prior proceeding. 

In Jet, Inc. the court explained that a trademark infringement action in the district 

court is not automatically of preclusive effect in a cancellation proceeding in the PTO, for a 

claim for trademark infringement may not be based on the same transactional facts as a 

petition to cancel a registered mark, or the facts relevant to infringement may not be 

sufficiently applicable to trademark registration to warrant preclusion. In a trademark 

infringement action, the owner of a registered mark sues for relief from the injury caused by 

the defendant's actual sale, offering for sale, or advertising of goods or services bearing the 

challenged mark, whereas an opposition to registration is based on the content of the 

registration application. Although to succeed in an opposition proceeding the opposer must 

show that "he would be damaged by the registration of a mark upon the principal register, 

including as a result of dilution under section 43(c) . . . .", 15 U.S.C. §1063, the opposer 

need not show actual injury, and is benefitted by prior registration and prior use. These 

different causes of action may involve different sets of transactional facts, different proofs, 

different burdens, and different public policies. Registrability is not at issue in infringement 

litigation, and although the likelihood of confusion analysis presents a "superficial 

similarity," differences in transactional facts will generally avoid preclusion. Jet, Inc., 223 

F.3d at 1364-65. 
04-1254 7 

The Board emphasized this rule in American Hygienic Labs., Inc. v. Tiffany & Co., 

228 USPQ 855, 857 (TTAB 1986), explaining that in an opposition proceeding "a claim of 

infringement before the court and a claim of priority and likelihood of confusion before this 

Board are different claims. The former claim is, in essence, a claim of injury resulting from 

applicant's use of its mark in commerce; the latter claim, in essence, is a claim that opposer 

believes it would be damaged by registration of applicant's mark." Again in In re Infinity 

Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001) the Board stated that 

"in Board proceedings, likelihood of confusion is determined independent of the context of 

actual usage. In an infringement action, on the other hand, the context of the use of the 

mark is relevant." See generally J.T. McCarthy, McCarthy on Trademark and Unfair 

Competition, §32:82 at 32:143 (4th ed. 2004) ("A claim for infringement is not the same as 

an inter partes claim for opposition or cancellation against another's registration of a mark. 

Thus, an opposer would not necessarily be barred by the rule of claim preclusion when it 

lost a previous infringement claim in court.") 

The issue litigated in the district court action was whether the marketing by Berkshire 

Fashions of specific products with either the BERKSHIRE mark or the Berkshire Fashions 

trade name was likely to cause confusion with Mayer/Berkshire's registered BERKSHIRE 

trademarks. In an opposition proceeding the question of likelihood of confusion requires 

consideration not only of what the applicant has already marketed or has stated the 

intention to market, but of all the items for which registration is sought. The parties dispute 

the extent to which Berkshire Fashions' application embraces a broader statement of goods 

than those before the district court; this aspect alone rendered summary judgment 

inapplicable, for the Board did not consider the separate goods in the Class 25 application, 
04-1254 8 

but stated that all "garments" were included in the district court judgment. Precedent and 

practice require a more detailed analysis. 

In the opposition proceeding, Mayer/Berkshire proffered evidence of actual 

confusion which it states arose from materially changed marketing practices by Berkshire 

Fashions after the district court's judgment. A change in trademark usage can constitute a 

change in transactional facts that avoids preclusion based on the earlier non-infringement 

decision. It is not irrelevant if, as Mayer/Berkshire asserted in opposing the grant of 

summary judgment, Berkshire Fashions' earlier inconspicuous marking of some goods with 

labels bearing only the trade name, has evolved into major marketing activity promoting the 

trademark BERKSHIRE in a manner that has, according to Mayer/Berkshire, caused 

significant actual confusion. Mayer/Berkshire presented sufficient evidence on this aspect 

to negate the grant of summary judgment based on preclusion. 

Mayer/Berkshire also argues that the issues were not identical because the 

infringement action was based on Berkshire Fashions' use of the BERKSHIRE mark with 

the goods in evidence, showing that the trial exhibit list did not include any sweaters, vests, 

or pants, all of which are included in the Class 25 application. Mayer/Berkshire points out 

that the registration would not be limited to the specific articles in evidence in the district 

court. Berkshire Fashions responds that the items were the same in both proceedings. 

The Board did not resolve the question of what was in evidence at the infringement trial, but 

held that it sufficed that "garments" were before the district court. However, this term does 

not correlate with the specificity of the trademark classification, and does not establish 

preclusion as to the specific items for which registration is sought and opposed. 
04-1254 9 

Mayer/Berkshire also states that Berkshire Fashions has significantly changed its 

marketing and advertising practices, and recites examples of actual confusion not 

previously experienced, citing Opryland USA Inc. v. Great American Music Show, Inc., 970 

F.2d 847, 853 (Fed. Cir. 1992) for its holding that the Board had improperly granted 

summary judgment where it had denied the non-moving party "the right, in accordance with 

Rule 56(f), to obtain evidence on the material facts of public perception and actual 

confusion." Viewing the proffered evidence in the light most favorable to Mayer/Berkshire, 

as the Board was required to do, see Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 

200, 205 (Fed. Cir. 1992), Mayer/Berkshire presented evidence of changed circumstances 

in the five-year period after the district court's judgment that may be relevant to the issue of 

likelihood of confusion in the opposition proceeding, again rendering preclusion improper. 

See Litton Industries, Inc. v. Litronix, Inc., 577 F.2d 709, 711 (CCPA 1978) ("This court has 

previously held that res judicata and collateral estoppel are not applicable where 'it is 

apparent that all the questions of fact and law involved [in the second proceeding] were not 

determined in the previous proceedings.'") (quoting Universal Overall Co. v. Stonecutter 

Mills Corp., 310 F.2d 952, 956 (CCPA 1962)). 

Caution is warranted in the application of preclusion by the PTO, for the purposes of 

administrative trademark procedures include protecting both the consuming public and the 

purveyors. Thus the party objecting to a registration may raise grounds not only of 

commercial injury to itself, but of confusion or deception or mistake to the consumer. The 

public policy underlying the principles of preclusion, whereby potentially meritorious claims 

may be barred from judicial scrutiny, has led courts to hold that the circumstances for 

preclusion "must be certain to every intent." Russell v. Place, 94 U.S. (4 Otto) 606, 610 
04-1254 10 

(1878) (denying preclusion in a patent infringement case, stating that "According to Coke, 

an estoppel must 'be certain to every intent;' and if upon the face of a record any thing is 

left to conjecture as to what was necessarily involved and decided, there is no estoppel in it 

when pleaded, and nothing conclusive in it when offered as evidence.") See Foster v. 

Hallco Mfg. Co., 947 F.2d 469, 480 (Fed. Cir. 1991) (the proponent of claim preclusion 

bears the burden of showing that the cause of action in the two suits was the same); cf.

McNellis v. First Fed. Sav. And Loan Ass'n of Rochester, New York, 364 F.2d 251, 251 (2d 

Cir. 1966) ("Finally, although the principles of res judicata should not be frugally applied, cf.

United States v. Munsingwear, Inc., 340 U.S. 36, 38 (1950), a reasonable doubt as to what 

was decided in the first action should preclude the drastic remedy of foreclosing a party 

from litigating an essential issue.") 

The question of the likelihood of confusion presented sufficiently different issues and 

transactional facts to bar the application of preclusion. The summary judgment of the 

Board is vacated, and the case is remanded for further proceedings. 

VACATED AND REMANDED