Alternative, Independently Sufficient Findings Have Preclusive Effect

Adopting the view advanced by the First Restatement of Judgments and sustained by other courts of appeals, the U.S. Court of Appeals for the Third Circuit applied collateral estoppel to bar a party from relitigating an alternate, though independently sufficient, holding of the Trademark Trial and Appeal Board’s (the Board) decision rendered in a prior cancellation action. Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc., Case No. 05-4321 (3rd Cir., Aug. 14, 2006) (Rendell, J.).

In 1988, L’Oreal USA, Inc.’s predecessor-in-interest began use of its original SHADES EQ mark in connection with hair-care products. In 1990, Jean Alexander Cosmetics began use of the EQ SYSTEM mark, which it registered in 1993. In 1996, L’Oreal sought to register a modernized, 1992 version of its SHADES EQ mark. However, the trademark examiner refused registration based on a likelihood of confusion with Jean Alexander’s registered EQ SYSTEM mark.