On November 17, 2015, the U.S. District Court for the District of Maryland ruled in favor of Finnegan client PNC, prohibiting a mobile application developer from pursuing a trademark infringement claim against PNC for its use of the mark SPENDOLOGY. Since 2010, PNC has used the mark SPENDOLOGY for online budgeting tools. In 2011, the plaintiff filed an application to register SPENDOLOGY with the U.S. Patent & Trademark Office. PNC filed an opposition to the plaintiff’s application and in 2013, the Trademark Trial and Appeal Board (TTAB) found that PNC had in fact been using the mark before the plaintiff. More than a year after the deadline to appeal the TTAB decision had passed, the plaintiff filed a trademark infringement claim against PNC.
During that time, the Supreme Court handed down its decision in B&B Hardware, ruling that TTAB decisions on issues of likelihood of confusion could have issue preclusive effect. Given that decision, PNC filed a motion to dismiss the lawsuit on collateral estoppel grounds, arguing that the TTAB’s determination on priority should be accorded preclusive effect. The district court agreed, and dismissed the plaintiff’s lawsuit in its entirety. The decision is the first to apply the B&B Hardware ruling to issues of trademark priority.