IP Law Daily, TRADEMARK NEWS—U.S.: Winemaker asks High Court to review standard for giving preclusive effect to Board decisions, (Oct 22, 2026)

By Brian Craig, J.D.

The winemaker argues the Second Circuit created a new rule for factual identity making preclusion under B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015) impossible.

An Italian winemaker, Cesari S.R.L., has filed a petition seeking review by the U.S. Supreme Court of a decision by the U.S. Court of Appeals for the Second Circuit concerning the preclusive effect of Trademark Trial and Appeal Board decisions on the likelihood of confusion determination for a trademark in a subsequent lawsuit. In the petition, the Italian winewaker argues that the Second Circuit created a new rule for factual identity making preclusion under the U.S. Supreme Court’s holding B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015) impossible and strips the law of certainty. Cesari argues the Second Circuit should have given preclusive effective to the Board’s decision that the LIANA mark owned by Peju Province Winery L.P. is likely to cause confusion with Cesari’s LIANO mark for wines (Cesari S.R.L. v. Peju Province Winery L.P., No. 26-527 (U.S. Oct. 16, 2026)).

Background. Cesari, an Italian winemaker, has sold wine globally under the name “Liano” since 1989. In 2003, it obtained a U.S. trademark registration for LIANO for the sale of wine in International Class 33. Peju, a California winemaker, subsequently sought to register the trademark LIANA with the USPTO in connection with the sale of wines. Cesari filed an opposition to Peju’s application, based on likelihood of confusion. In a 2004 decision, the Board determined that Peju’s LIANA mark was likely to cause confusion with Cesari’s LIANO mark. The Board conducted its analysis exclusively on Peju’s identification of goods, without considering the “marketplace usages” of the parties’ respective products.

Over a decade later, Cesari brought an action for trademark infringement against Peju in the federal district court in New York. The district court granted summary judgment to Cesari, holding that the Board’s likelihood of confusion determination was preclusive such that Peju was collaterally estopped from litigating that issue. After the district court held a subsequent bench trial on the remaining elements of Cesari’s claim and its request for damages, leading to a judgment for Cesari, Peju appealed to the Second Circuit. In the June 2026 decision, the Second Circuit concluded that the district court erred by giving preclusive effect to the Board’s findings concerning likelihood of confusion. The Second Circuit concluded that the Board conducted its analysis based exclusively on how Peju identified its goods in its trademark application, without considering the nature of Peju’s goods, the marketplace usages of the parties’ respective products, or other factors relating to the “context” of trade for the products. The Second Circuit held that the Board’s decision—on its face—did not consider the parties’ “actual usage in the marketplace” required by the U.S. Supreme Court’s previous holding in B&B Hardware. Following the Second Circuit decision, Cesari filed a petition for a writ of certiorari with the U.S. Supreme Court.

Questions presented. The Italian winemaker’s petition submitted two questions to the U.S. Supreme Court. The first question asks whether the Second Circuit’s pre-B&B Hardware rule conditioning issue preclusion on a case-by-case comparison of how tribunals apply their respective multifactor tests conflicts with B&B Hardware’s holding that the likelihood-of-confusion standard for registration and infringement under the Lanham Act is the same. The second question asks whether the Second Circuit’s new rule conflicts with the “included-usages” test under B&B Hardware.

Different standards. The petition argues that the Second Circuit decision revived different standards that the U.S. Supreme Court’s ruling in B&B Hardware rejected. The Second Circuit opinion has now revived its abrogated precedent word for word, according to Cesari’s petition.

The petition contends that the grounds the Second Circuit gave for applying two previous Second Circuit decisions as good law defy vertical stare decisis. The Italian winemaker suggests that taking the “marketplace usage” out of context resurrects a previous Second Circuit decision that the U.S. Supreme Court abrogated in B&B Hardware. Furthermore, the petition argues the Second Circuit’s new rule of factual identity conflicts with B&B Hardware and violates the party presentation principle by creating a new rule of preclusion and a new defense that no party raised. The Second Circuit’s practice strips the law of certainty, denies courts and litigants alike the repose that preclusion under B&B Hardware secures, and inflicts immense costs on all parties, according to the petition. Finally, the Italian winemaker contends that certiorari is necessary to enforce vertical stare decisis and restore the right to preclusion that B&B Hardware secured.

The Case is No. 26-527.

Judge: NA.

Attorneys: Valeria Calafiore Healy (Healy LLC) for Cesari S.R.L. Joel Geoffrey MacMull (Mandelbaum Barrett PC) for Peju Province Winery L.P.

Companies: Cesari S.R.L.; Peju Province Winery L.P.

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