An interesting battle ground may be brewing in light of the United States Supreme Court’s recent ruling in the B&B Hardware case which Duetsblog authors have previously commented on extensively. Now that the Court has essentially expanded the scope of collateral estoppel applicable to trademark registration decisions made by the United States Patent and Trademark Office, a logical question is whether this expansion is going to apply to trademark registration decisions made in foreign jurisdictions. There is legal support for the notion that judgments rendered in courts outside our fine nation can have collateral estoppel effect within the United States, but I am unaware of any authority applying collateral estoppel to trademark registration decisions made by foreign courts.
I expect this issue will come up sometime in the near future, and potentially in a case involving Skype and the European broadcasting company, Sky. A European Court recently rejected Microsoft’s efforts to register the Skype mark in Europe based on the conclusion that the mark was confusingly similar to Sky. Microsoft has vowed to appeal the decision, but at least for now, there exists a judgment in a foreign court holding that there is confusing similarity between Skype and Sky. Assuming this holding stands up, could Sky somehow attempt to transform this holding into an attack on Skype’s United States registration?
There are likely significant facts outside my knowledge that would affect the possibility of this happening. Among other things, I don’t presently know the details of the European Court’s decision, I do not know what, if any, opposition was made by Sky to the U.S. registration of Skype, and I do not know the specific legal standard under which likelihood of confusion is judged in the European courts. Nonetheless, the Supreme Court’s expansion of the collateral estoppel effect given to trademark registration decisions at least requires that this question be asked.