Real-World Marketplace Conditions Must Be Considered in Confusion Analysis

On June 8, 2026, the Second Circuit Court of Appeals issued its opinion in Peju Province Winery L.P. v. Cesari S.R.L..¹ The long-running trademark battle centered on whether a 2004 Trademark Trial and Appeal Board (TTAB) decision regarding trademark registrability should dictate the outcome of a subsequent federal trademark infringement lawsuit.

The issue was whether, under Section 2(d) of the Lanham Act, the likelihood of confusion statute, the doctrine of collateral estoppel, or issue preclusion, from the first, administrative proceeding, prevented the second, federal court judgment. The Second Circuit reversed, holding that issue preclusion did not apply because the TTAB’s 2004 decision failed to examine actual marketplace usage of the marks.

More than twenty years ago, TTAB blocked Peju from registering a mark based purely on the file histories of the applications, expressly ignoring how the rival brands behaved in the actual market. Years later, Cesari attempted to use the TTAB win in federal court, arguing that the court had to blindly accept under the doctrine of collateral estoppel.

Because the TTAB explicitly refused to look at real-world, marketplace distinctions, it was never determined whether Peju’s mark was confusingly similar to Cesari’s. This case aligns with the U.S. Supreme Court’s ruling in B&B Hardware, Inc. v. Hargis Industries, Inc.,² in which the Court held that a court should give preclusive effect to a TTAB decision if the ordinary elements of issue preclusion are met – meaning both legal forums must evaluate the same issues and evidence. It remains unclear what the effects of this case will have on the trademark registration practice before the USPTO, which has yet to update its post-ruling examination guidelines.³

This blog posting is for informational purposes only. If you have a specific issue or question related to this case, trademark, likelihood of confusion, or I.P. in general, please contact Yonaxis I.P. Law Group.