## Facts

- Rabbi Don Yoel Levy and Eliezer Levy, doing business as Organized Kashruth Laboratories (OK Labs), operated a kosher certification agency using a registered certification mark featuring a stylized “K” encircled (in use since the 1930s; registered in 1965).
- Kosher Overseers Association of America, Inc. (KOA) operated a competing kosher certification agency and used a similar “K” design within a partial or half-moon circle, beginning around 1979.
- Kosher certification marks are used on food products to indicate that a certifying body has verified compliance with Jewish dietary laws; consumers may rely on particular agencies and their marks.
- KOA applied to register its certification mark in 1989.
- OK Labs opposed KOA’s application before the Trademark Trial and Appeal Board (TTAB), which found a likelihood of confusion with OK Labs’ registered mark and sustained the opposition.
- KOA did not appeal the TTAB decision but continued using its mark in commerce.
- OK Labs filed a Lanham Act action in federal district court seeking to enjoin KOA’s continued use of the mark.
- The district court granted summary judgment to OK Labs, treating the TTAB’s likelihood-of-confusion finding as issue-preclusive, and entered a permanent injunction barring KOA’s use of certain certification marks.

## Issues

1. Whether a TTAB likelihood-of-confusion finding in a registration opposition collaterally estops relitigation of likelihood of confusion in a later federal Lanham Act infringement action.
2. Whether summary judgment and a permanent injunction were proper where the district court relied on the TTAB ruling without conducting an independent marketplace-based likelihood-of-confusion analysis.

## Decision

- The Second Circuit vacated the summary judgment and vacated the injunction.
- The court held that the TTAB decision did not have collateral estoppel effect on likelihood of confusion in the federal infringement action.
- The case was remanded for the district court to conduct its own likelihood-of-confusion analysis, including consideration of relevant marketplace factors.

## Legal Principles

- Collateral estoppel applies only when (1) the identical issue was raised previously, (2) actually litigated and decided, (3) the party had a full and fair opportunity to litigate, and (4) the issue’s resolution was necessary to a final judgment on the merits.
- In Lanham Act infringement litigation, likelihood of confusion is assessed in marketplace context using the Polaroid factors, not solely by comparing the marks in the abstract.
- A TTAB registration proceeding typically evaluates marks as presented in the application record and may not address key marketplace evidence (e.g., channels of trade, consumer sophistication, actual confusion) central to a Polaroid analysis.
- Because the TTAB’s registration-focused confusion inquiry may differ from the infringement-focused marketplace inquiry, a TTAB likelihood-of-confusion finding does not automatically satisfy the “identical issue” requirement for issue preclusion.

## Conclusion

The Second Circuit required an independent, marketplace-based likelihood-of-confusion determination in the Lanham Act action and rejected automatic preclusive effect for the TTAB’s registration-opposition confusion finding, vacating both summary judgment and the permanent injunction.


Levy v. Kosher Overseers Ass'n of Am., Inc., 104 F.3d 38 (2d Cir. 1997)