Wednesday, December 24, 2014

Recommended Reading: Two Trademark Reporter Commentaries on Trademark Use

The latest isssue of The Trademark Reporter is devoted to the topic of trademark use. Included in this valuable compilation are two "commentaries" that I want to call to your attention. A "commentary," according to TMR guidelines, "is intended to be a short essay (1,000–2,000 words) on trademark issues that shares an opinion, stimulates discussion, or responds to a previously published commentary or article. A commentary may be a musing on an aspect of trademark law, a policy issue, or a point of practice. It may be straightforward, provocative, or humorous in style." If you have something to say about trademarks, think about submitting a commentary to TMR (email to tmr at

In the first commentary, Lisa Pearson, of Kilpatrick Townsend & Stockton, LLP, discusses Fluid Trademarks and Dynamic Brand Identities.

As they strive to humanize their brands and keep them relevant, more and more brand owners challenge trademark fundamentals by rejecting static marks in favor of marks that change frequently—and sometimes constantly. Logos increasingly function as brand ambassadors rather than mere signatures to engage consumers. Trade dress escapes the confines of products and packaging, becoming ever more instrumental in brand identification. These changing source identifiers have come to be known as “fluid marks.” Currently, the law on fluid marks remains nascent. This article offers practical ideas for brand owners and trademark lawyers seeking to keep pace with the brave new world of fluid branding.

In the second commentary, TMR Editor-in-Chief Jonathan E. Moskin considers the B&B v. Hargis case now awaiting a decision by the Supreme Court, in a commentary entitled Will There Be Any Repose at This B&B? The Supreme Court Weighs Collateral Estoppel from the TTAB.

After 18 years of litigation, including one trademark infringement action in federal court, a cancellation action and an opposition proceeding in the Trademark Trial and Appeal Board (“TTAB”) and then a second trademark infringement action (and three appeals to the Eighth Circuit), the Eighth Circuit refused, in B&B Hardware, Inc. v. Hargis Industries,1 to give collateral estoppel effect to the prior TTAB finding that Hargis’s mark SEALTITE for self-drilling and self-tapping screws was likely to be confused with B&B’s mark SEALTIGHT for fasteners used in the aerospace industry. The purpose of collateral estoppel, of course, is to give finality to previously decided issues by preventing their relitigation in a second suit. By ensuring finality, the rule also prevents needless conflict between tribunals asked to adjudicate the same issue. For almost two decades, however, this B&B is one where rest and repose thus far have proven entirely elusive.

TTABlog notes: The INTA's amicus brief in B&B v. Hargis may be found here. INTA takes that position that "Although preclusion should not apply, district courts should be able to decide whether to give any deference to a prior determination of the Trademark Trial and Appeal Board on individual factors that might be considered in the broader analysis of whether confusion is likely."

Once again, I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).

Text Copyright John L. Welch 2014.


At 9:55 AM, Anonymous Joe Dreitler said...

Be careful what you wish for, you might just get it. Board proceedings were never intended to substitute for a civil lawsuit, they were, in my view, intended to be a (relatively) quick and efficient way to determine if a term was registrable. I have yet to see a civil Complaint that did not contain an unfair competition count as well as one or more state claims for unfair competition. Given the various limitations in Board jurisdiction, available remedies and procedural issues (Board looks solely at the mark and goods in the description), a holding that Board decisions are binding on a federal court will certainly give parties pause if they are serious about another person using a similar trademark.

At 10:19 AM, Blogger John L. Welch said...

In my view, a Section 2(d) proceeding before the Board looks at what the defendant MIGHT do with the challenged mark, under the full scope of the identification of goods or services. An infringment suit, on the other hand, looks at what the defendant is ACTUALLY doing in the real world, taking into account how the mark looks, the trade dress, the actual channels of trade, etc. Those are vastly different approaches.
I can see how the Board's decision on some factors might merit a preclusive effect: for example, the inherent (as opposed to the marketplance) strength of the plaintiff's mark.


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