Recommended Reading: Alexandra Bistline, Trademark LItigation After B&B v. Hargis
The latest issue of The Trademark Reporter includes a terrific article by Alexandra H. Bistline, entitiled "Raising the Stakes: Trademark Litigation in the Wake of B&B Hardware, Inc. v. Hargis Industries, Inc." Ms. Bistline's povides a comprehensive, highly-readable review of the issues involved in, and the ramifications of, the Supreme Court's decision.
Ms. Bistline discusses the state of the doctrine of issue preclusion before B&B v. Hargis, details the "labyrinthine" history of the case, suggests why litigants (and Congress) should agree with the dissent, and points out some of the difficulties to be expected when the courts try to implement the ruling.
In light of the fundamental procedural and substantive differences between the determinations made in Federal courts and those made before the TTAB, this article suggests that the Supreme Court’s decision is at least partially incorrect and should be remedied by congressional action. In the meantime, however, trademark owners and practitioners must assess and address the decision and its impact on trademark practice. While the Supreme Court provided little guidance on when these ordinary factors of issue preclusion would be met, the typical procedures followed by the TTAB suggest that preclusion is likely to apply to TTAB decisions unless the issue is likelihood of confusion. This threat of preclusion, even if rarely realized in likelihood-of-confusion determinations, significantly raises the stakes (and the corresponding costs) of an opposition or cancellation proceeding before the TTAB. Although as of yet unclear, it seems likely that this decision will drive more litigants directly to federal court rather than to the TTAB, where they risk the adjudication of issues concerning both registration and use of a trademark in a forum with significant evidentiary and procedural limitations.
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TTABlog comment: Once again, I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2015 the International Trademark Association and is reprinted with permission from The Trademark Reporter®, 105 TMR 867 (July-August 2015).
Text Copyright John L. Welch 2015.