The question presented is whether and when a decision of the Trademark Trial and Appeal Board of the United States Patent and Trademark Office should have collateral estoppel effect in a lawsuit claiming violations of the Lanham Act. We consider this question in a case involving conflicting claims with respect to marks used to designate food products as “kosher” — that is, prepared in compliance with Jewish dietary laws.
The defendant Kosher Overseers Association of America, Inc. (“defendant” or “KOA”) appeals from an order of the United States District Court for the Southern District of New York (Lawrence M. McKenna, Judge) granting the motion for summary judgment of the plaintiffs Rabbi Dоn Yoel Levy and Eliezer Levy, d.b.a. Organized Kashruth Laboratories (“plaintiffs” or “OK Labs”), and entering an injunction prohibiting the defendant from using certain certification marks. We conclude that the district court erred in granting summary judgment on collateral es-toppel grounds and, accordingly, we vacate the judgment and the injunction and remand for further proсeedings consistent with this opinion.
Background
This action, alleging the wrongful use of a trademark by the defendant, concerns two similar kosher “certification marks,” also known as hechshers.
In their complaint in this lawsuit, the plaintiffs alleged that the defendant was using a certification mark confusingly similar to theirs. The plaintiffs’ mark, an encircled “K” (the “Cirele-K”), has been used by OK Labs or its predecessors in interest sincе 1936:
[[Image here]]
(OK Labs’Circle-K certification mark)
The Circle-K mark has been registered in the United States Patent and Trademark Office (“PTO”) since 1965. Since at least 1979, KOA, a competing kosher certificá*40 tion 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:
[[Image here]]
(KOA s encircled half-moon K)
On May 26, 1989, KOA applied to the PTO to register its encircled half-moon K mark. OK Labs filed an “opposition” to the registration with the PTO’s Trademark Trial and Appeal Board (“TTAB”). An application for registration may be refused if the mark
[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office ... as to be likely, when used on or in connection with thе goods of the applicant, to cause confusion, or to cause mistake, or to deceive....
15 U.S.C. § 1052(d). OK Labs claimed before the TTAB that defendant KOA’s encircled half-moon K was too similar to its Circle-K and would therefore be likely to cause confusion among consumers. As part of its deliberations, the TTAB considered depositions, exhibits, аnd briefs, and compared the visual appearances of the two marks. In an initial decision dated December 11, 1991, the TTAB sustained the opposition of OK Labs and refused KOA’s application for registration. In doing so, the TTAB rejected KOA’s argument that the Circle-K mark was not entitled to protection under the Lanham Act because it is generic аnd has not acquired secondary meaning, see 15 U.S.C. § 1127; see also L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co.,
KOA did not appeal these findings or decisions to the United States Court of Appeals for the Federal Circuit, see 15 U.S.C. § 1071, but did continue to use its encircled half-moon K mark. As a result, the plaintiffs brought this action to permanently enjoin KOA from “using a certification mark that the [TTAB had] found to be confusingly similar to the plaintiffs’ certification mark.” Following discovery, the plaintiffs 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. The plaintiffs based their summary judgment motion on the asserted collateral estoppel effect of the TTAB decisions. Following briefing and oral argument, the district court granted the plaintiffs’ motion in a Memorandum and Order dated July 7, 1994, and invited the parties to submit a proposed permanent injunction.
On July 18, 1994, defendant KOA filed a motion for reargument. While that motion was pending before the district court, the defendant submitted two motions for summary judgment, in which it claimed, inter alia, that the plaintiffs 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).
In a Memorandum and Order dated April 6, 1995, the district court denied KOA’s motion for reargument, and noted that in light of the denial of the motion for reargument, KOA’s summary judgment motions could only apply to the counts in the complaint on which summary judgment for the plaintiffs had not already been granted.
We vacate the district court’s order granting summary judgment for the plaintiffs and the injunction entered by the court in favor of the plаintiffs and therefore do not reach the defendant’s other claims on appeal.
Discussion
Where a district court enters summary judgment barring claims under the doctrine of collateral estoppel, we review the decision de novo. Valley Disposal, Inc. v. Central Vt. Solid Waste Management Dist.,
The doctrine of collateral estoppel, or issue preclusion, provides that “[w]hen an action between two parties terminates in a valid judgment, a later action between the parties may be affected[,] [and possibly barred,] even thоugh it involves a different claim or cause of action.” Fleming James, Jr., Geoffrey C. Hazard, Jr., John Leubsdorf, Civil Procedure § 11.17, at 607 (4th ed. 1992); see also Parklane Hosiery Co. v. Shore,
(1) the issues in both proceedings must be identical, (2) the issue in the prior proceeding must have been actually litigated and actually decided, (3) there must have been a full and fair opportunity for litigation in the prior proceeding, and (4) the issue previously litigated must have been necessary to support a valid and final judgment on the merits.
Gelb v. Royal Globe Ins. Co.,
For collateral estoppel to apply, the issue in the earlier proceeding must be identical to the issue in the later one. Gelb,
In a proceeding seeking the cancellation of a trademark or opposing an аpplication for registration, “likelihood of confusion is determined only as to the registrability of the applicant’s mark exactly as shown in the application and only as to the goods listed, regardless of actual usage. Similarly, if [the party contesting the registration] relies on its own federal registration, its*42 rights are determined as of the format and goods in that registration, regardless of the reality of actual usage. ... Thus, an intеr partes decision of the Trademark Board, whether reviewed by the [Court of Appeals for the Federal Circuit] or not, must be carefully examined to determine exactly what was decided and on what evidentiary basis. Many such oppositions and cancellations are decided only upon a limited comparison of the registerеd or applied-for format and goods without regard for their marketplace manner of use.”
Id. at 734 (emphasis added) (quoting 2 J. Thomas MoCabthy, MoCarthy on Trademarks and Unfair Competition § 32:31, at 737-38 (2d ed. 1984)).
In a trademark infringement action, on the other hand, eight non-exclusive factors — the so-called Polaroid factors, see Polaroid Corp. v. Polarad Elecs. Corp.,
1) the strength of the plaintiff’s mark, 2) the degree of similarity between the plaintiffs and the defendant’s marks, 3) the proximity of the products, 4) the likelihood that the plaintiff will “bridge the gap” between the two products, 5) actual confusion between the two marks, 6) the defendant’s good faith in adopting its mark, 7) the quality of the defendant’s produces), аnd 8) the sophistication of buyers of the plaintiffs and defendant’s goods or services.
The Sports Authority, Inc. v. Prime Hospitality Corp.,
The Federal Circuit decision we considered in Beam only compared the typewritten names and sounds of the two trademarks, and we held that the district court in the later infringement action should have, at least, “examine[d] the visual appearance of each mark in the context of its use.” Beam,
of the firm belief that consumers will be likely to confuse the source of the respective certification services. Not only is applicant’s mark insufficiently different from opposers’, but also both marks, consisting of the letter K within a circle, are displayed in relatively small size on the products so marked. Only after very careful examination would a consumer be able to*43 discern the slight difference in applicant’s mark.
We do not believe that these passing references to consumers, standing alone, are sufficient to show that the TTAB performed a comparison of commercial use identical to that required in a trademark infringement actiоn. Moreover, we have held that “no single Polaroid factor is determinative.” Plus Prods. v. Plus Discount Foods, Inc.,
In sum, the TTAB decision is not the sort of decision contemplated in Beam — a decision that required examination of the “entire marketplace context” оf the trademarks in dispute, Beam,
Inasmuch as the application of collateral estoppel requires that “the issues in both proceedings be the same,” Gelb,
Conclusion
For the reasons stated above, we vacate the district court’s judgment and its permanent injunction in favor of the plaintiffs and we remand the cause to the district court for further proceedings consistent with this opinion.
Notes
. "Hechsher" means "the testimonial by a recognized religious authority, generally a rabbi, that an article, principally food, is 'kosher or fit, from the standpoint of traditional religious law (Kashruth) for use by Orthodox Jews." 5 The Universal Jewish Encyclopedia 288 (Isaac Land-man ed., 1941).
. The term "certification mark" is defined in 15 U.S.C. § 1127 as "any word, name, symbol, or device, or any combination thereof ... [that is used to] certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of ... goods or services_” is U.S.C. § 1054 provides, in pertinent part, as follows:
Subjеct to the provisions relating to the registration of trade-marks, so far as they are applicable, ... certification marks ... shall be registrable ... in the same manner and with the same effect as are trade-marks ... and when registered they shall be entitled to [the same] protection provided ... in the case of trademarks. ... Applicatiоns and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trade-marks.
. 15 U.S.C. § 1064 provides, in pertinent part, as follows:
A petition to cancel a registration of a mark ... may ... be filed as follows
(5) At any time in the case of a certification mark on the ground that the registrant ... (B) engages in the production or markеting of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify....
. The remaining counts in the complaint included Count III (Violation of Exclusive Rights to Use a Trademark in United States Commerce Under Section 33 of the Lanham Act, 15 U.S.C. § 1115(b)); Count IV (Importation of Gоods Bearing a Mark that Simulates the Circle-K Mark in Violation of Section 42 of the Lanham Act, 15 U.S.C. § 1124); and Count V (Importa
. The appellees also call attention to two decisions of other circuits that have deаlt with this issue. See EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc.,