Trademark litigation is as unpredictable as it is expensive. The Trademark Trial and Appeal Board (“Board”) considers as many as thirteen different factors when evaluating whether a trademark causes a “likelihood of confusion.” Federal courts use many of the same factors, though which factors are chosen differ by jurisdiction, and, do not necessarily overlap with the Board. Further, a party can litigate for a time before the Board, then in federal court, and then back before the Board. And, if this were not enough, the Board’s decisions have little if any preclusive effect on the court, and, a court’s decision is not necessarily binding on the Board. The natural consequences of this chaos are forum shifting, highly unpredictable outcomes, and inflated costs of litigation. What trademark law needs is a framework to provide structure, guidance and expedience, and to eliminate redundancy. This is precisely what employment law is predicated on.
Robert A. Kearney, What Trademark Law Could Learn From Employment Law, 12 J. Marshall Rev. Intell. Prop. L. Rev. 118 (2012)