Levy v. Kosher Overseers Association Of America, Inc

104 F.3d 38 (2nd 1997)

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Nature of the Case

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Facts

Ps sued D alleging that D was using a certification mark confusingly similar to theirs. The plaintiffs' mark, an encircled 'K' (the 'Circle-K'), has been used by OK Labs or its predecessors in interest since 1936. The Circle-K mark has been registered in the United States Patent and Trademark Office ('PTO') since 1965. Since at least 1979, D, a competing kosher certification agency, has used a stylized encircled 'half-moon' or 'circle-crescent' K (the 'encircled half-moon K') to signify that a product complies with its kosher standards. On May 26, 1989, D applied to the PTO to register its encircled half-moon K mark. P filed an 'opposition' to the registration with the PTO's Trademark Trial and Appeal Board ('TTAB'). P claimed before the TTAB that D's encircled half-moon K was too similar to its Circle-K and would, therefore, be likely to cause confusion among consumers. TTAB considered depositions, exhibits, and briefs, and compared the visual appearances of the two marks. It refused D's application for registration. D did not appeal and continued to use the mark. P brought this action to permanently enjoin D from using the mark. After discovery, Ps moved for summary judgment on three of the six counts in their complaint. Counts I, II, and VI alleging violations of the Lanham Act, 15 U.S.C. §§ 1114 (providing cause of action for trademark infringement) and 1125(a) (providing cause of action for false or misleading use of a trademark), and of state unfair competition laws. Ps asserted the collateral estoppel effect of the TTAB decisions. P's motion was granted. D filed a motion for reargument. D then submitted two motions for summary judgment, in which it claimed that P had no ownership interest in the Circle-K mark and that they had improperly used it as a trademark in violation of 15 U.S.C. § 1064(5)(B) and (C). D was permanently enjoined. D appealed. D argues that collateral estoppel is inappropriate because the issues litigated in the two fora were not identical--it asserts that there was no finding by the TTAB of similarity based on commercial or actual use, as is necessary to find a violation of the Lanham Act or state unfair competition laws.