By Steven Abreu. A member of our Trademark Practice Group
In B&B Hardware, Inc. v. Hargis Industries, Inc., B&B opposed Hargis’s attempt to register its trademark SEALTITE, arguing that it would create confusion with its own SEALTIGHT mark. The Trademark Trial and Appeal Board (TTAB) agreed and refused to register the mark. Hargis did not appeal this ruling.
B&B Hardware then sued Hargis for trademark infringement. It asked the federal district court to preclude Hargis from arguing that the mark SEALTIGHT was not similar to SEALTITE because likelihood of confusion had already been decided in B&B’s favor by the TTAB.
The district court denied B&B’s request, and on appeal the Eighth Circuit Court of Appeals agreed because, it said, the courts use different criteria from the TTAB in evaluating likelihood of confusion. In March 2015, the Supreme Court reversed, ruling that TTAB decisions could have a preclusive effect on other trademark proceedings, including those in federal courts.
The Supreme Court held that if the TTAB has materially considered all factors relevant to the federal court’s determination and the normal elements of issue preclusion are also present, then the TTAB’s decision on an issue may preclude further litigation of the same issue in federal court. (MORE)
B&B Hardware then sued Hargis for trademark infringement. It asked the federal district court to preclude Hargis from arguing that the mark SEALTIGHT was not similar to SEALTITE because likelihood of confusion had already been decided in B&B’s favor by the TTAB.
The district court denied B&B’s request, and on appeal the Eighth Circuit Court of Appeals agreed because, it said, the courts use different criteria from the TTAB in evaluating likelihood of confusion. In March 2015, the Supreme Court reversed, ruling that TTAB decisions could have a preclusive effect on other trademark proceedings, including those in federal courts.
The Supreme Court held that if the TTAB has materially considered all factors relevant to the federal court’s determination and the normal elements of issue preclusion are also present, then the TTAB’s decision on an issue may preclude further litigation of the same issue in federal court. (MORE)
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