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Cert Alert: Is the Trademark Trial and Appeal Bound (TTAB) Decision on Likelihood of Confusion Preclusive?

B&B Hardware, Inc. v. Hargis Industries, Inc.

The U.S. Supreme Court has agreed to review a decision of the U.S. Court of Appeals for the Eighth Circuit (in turn affirming a district court decision) finding the mark “Sealtight” (as used in connection with aircraft assembly components) to be merely descriptive, notwithstanding that in the Trademark Trial and Appeal Bound (TTAB) had rejected an attempt (by Hargis Industries) to cancel the registration for that mark (owned by B&B Hardware).  The TTAB found the registration to be incontestable.

In its decision, the TTAB had addressed the issue of likelihood of confusion, but the 8th Circuit concluded that likelihood of confusion in the context of a registration does not equate to a likelihood of confusion in the context of an infringement action.

The questions presented are:

  1. Whether the TTAB’s finding of a likelihood of confusion precludes Hargis from re-litigation 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 obligated to defer to the TTAB’s finding of likelihood of confusion absent strong evidence to rebut it.

B&B Hardware, Inc. v. Hargis Industries, Inc., Case No. 13-352 (Supr. Ct., July 1, 2014).

© 2022 McDermott Will & EmeryNational Law Review, Volume IV, Number 215
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About this Author

Paul Devinsky, Intellectual Property Attorney
Partner

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  He focuses his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.

202-756-8369
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