In its 2015 decision in B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), the Supreme Court held that a decision regarding trademark likelihood of confusion (which is the standard for trademark infringement under U.S. federal law) by the Trademark Trial and Appeal Board (the “Board”) of the United States Patent and Trademark Office can be “issue-preclusive” in subsequent litigation. In other words, the issue of likelihood of confusion cannot be relitigated, but only when the uses of the marks at issue before the Board are materially the same as those later presented to a district court.
A recent decision by the Second Circuit illustrates the limits of B&B Hardware, particularly as it relates to applications for marks that are not yet in use. In Peju Province Winery L.P. v. Cesari S.R.L., No. 24-1903 (2d Cir. June 8, 2026), the Second Circuit reversed a district court decision holding that the Board’s prior finding of a likelihood of confusion between Cesari’s LIANO mark and Peju’s LIANA mark, both for wines, precluded further litigation on the likelihood of confusion issue. The Second Circuit found that, in fact, the Board’s decision did not have an issue-preclusive effect because it was based only on the limited information in the parties’ respective trademark registration and application records, rather than evidence of how the marks were actually used in the marketplace.
Because Peju had filed the LIANA application based on an intent to use the mark and had not yet filed evidence of use, the Board did not compare how the marks were used in the marketplace. This is typical in Oppositions, where the Board generally focuses on information within the “four corners” of the challenged application. Peju at 8. As such, the Board did not consider Peju’s argument that there was no likelihood of confusion between its LIANA mark and Cesari’s LIANO mark because the LIANA mark would be used for a dessert wine. Id. at 9. The Second Circuit determined that this marketplace usage was important to the likelihood of confusion analysis, and therefore reversed and remanded the district court’s decision under B&B Hardware.
In practical terms, the Peju decision reaffirms that B&B Hardware did not create a rule that Board decisions absolutely preclude future trademark infringement litigation. Rather, a Board decision may not have a preclusive effect if the Board’s record does not include marketplace evidence that is important to the likelihood of confusion issue, such as the parties’ actual trade channels and classes of consumers. Therefore, parties in a Board dispute should understand what evidence of trademark use is available to both sides, and should be prepared to develop the evidentiary record before the Board with an eye towards potential further litigation in a federal district court, where the district court will consider material marketplace evidence.