Jean Alexander Cosmetics v. L'Oreal USA
United States Court of Appeals for the Third Circuit
458 F.3d 244 (2006)
L'Oreal (defendant) began using a modernized version of its "Shades EQ" mark in 1992, while Jean Alexander (plaintiff) began using its similar "EQ System" mark in 1990 and registered it in 1993. When L'Oreal tried to register its modernized mark, the examiner rejected it as confusingly similar; L'Oreal then petitioned the Trademark Trial and Appeal Board (TTAB) to cancel Jean Alexander's mark, arguing its modernized mark was legally the same as its 1988 mark and had priority. The TTAB rejected that priority argument, but separately added, "solely for completeness," that there was no likelihood of confusion between the marks anyway. When L'Oreal later registered the modernized mark and Jean Alexander opposed, the TTAB held issue preclusion barred the opposition based on its earlier no-confusion finding. Jean Alexander then sued for infringement in federal court, which dismissed the suit on issue-preclusion grounds; Jean Alexander appealed.
Whether an alternative, but independently sufficient, basis offered for a judgment is considered "necessary" to that judgment for the purposes of issue preclusion.