During its next term, which begins in October 2014, the U.S. Supreme Court will continue to decide important intellectual property cases.
In B&B Hardware, Inc. v. Hargis Industries, Inc., the Court will tackle an issue that has long vexed trademark owners and their lawyers: ‘how much deference to give determinations by the Trademark Trial and Appeal Board (TTAB) on the issue of likelihood of confusion, when a subsequent infringement action is brought in federal court?’. In other words, must a court accept the TTAB’s decision on likelihood of confusion, even though the TTAB’s jurisdiction is limited to a trademark’s registrability?To simplify a case that has been litigated in one form or another for 14 years, in B&B Hardware, B&B opposed Hargis’ attempt to register SEALTITE based on its registration for SEALTIGHT. The TTAB found that there was a likelihood of confusion and refused to register Hargis’ mark. While the TTAB case was underway, B&B sued Hargis in federal court for trademark infringement. After the TTAB ruling in its favor, B&B sought a judgment in court, arguing that the TTAB decision should control. The court disagreed and even prevented evidence of the TTAB decision from going to the jury. Ultimately, the jury found no infringement. The Circuit Court of Appeals for the Eighth Circuit upheld the decision, reasoning that the TTAB’s standard for “likelihood of confusion” was different from the Eighth Circuit’s test for infringement, so the TTAB decision could not have a preclusive effect. Other circuit courts have held otherwise.
The Supreme Court ruling here not only may clarify the effect of TTAB rulings, but it may alter trademark enforcement strategies. Updates will follow.