Certiorari Petition Seeks Clarification of Preclusive Effect of TTAB Likelihood of Confusion Determination
On September 18, 2013, B&B Hardware, Inc. filed with the U.S. Supreme Court a petition for writ of certiorari (here), seeking review of the Eighth Circuit's decision in B & B Hardware, Inc. v. Hargis Industries, Inc., 106 USPQ2d 1660 (8th Cir. 2013). [TTABlogged here]. B & B sued Hargis Industries for trademark infringement, unsuccessfully claiming that defendant's use of the mark "Sealtite" for "self-drilling and self-taping screws" infringed B&B's mark "Sealtight" for fasteners used in the aerospace industry. The appellate court affirmed, in a split decision.
The TTAB had sustained B&B's opposition to registration of the "Sealtite" mark on the ground of likelihood of confusion with B&B's mark. The district court rejected B&B's contention that the TTAB decision should be given preclusive effect on the likelihood of confusion issue, and the United States Court of Appeals for the Eight Circuit agreed. The panel majority ruled that because the TTAB is not an Article III court, its decision on the issue of likelihood of confusion is not entitled to preclusive effect in a subsequent trademark infringement action between the parties.
The appellate court further ruled that the TTAB decision was not entitled to deference, and that the district court did not abuse its discretion in excluding the evidence of the TTAB decision before the jury. Hargis had argued that this evidence would be too prejudicial.
On January 13, 2014, the Supreme Court invited the Solicitor General "to file a brief in this case expressing the views of the United States." In its petition, B&B presents the following questions:
1. Whether the TTAB’s finding of a likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation, in which likelihood of confusion is an element.
2. Whether, if issue preclusion does not apply, the district court was obliged to defer to the TTAB’s finding of a likelihood of confusion absent strong evidence to rebut it.
Read comments and post your comment here. Also see comments here on the Eighth Circuit ruling.
Text Copyright John L. Welch 2014.