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Supreme Court Holds TTAB Ruling May Preclude Re-litigation of Trademark Issues

In B&B Hardware, Inc. v. Hargis Ind. Inc., No. 13–352 (Mar. 24, 2015) the Supreme Court held that a finding by the Trademark Trial and Appeal Board that a proposed trademark should not be registered because of a likelihood of confusion can preclude the losing party from subsequently litigating that same issue before a federal court.  The Court held that the same elements that apply to determine the preclusive effect of a prior judicial finding can apply when the initial determination is made in the first instance by an agency rather than a judge or jury.

In this case, Hargis tried to register its trade­mark in the United States Patent and Trademark Office.  B&B filed an opposition proceeding in the TTAB, which is an arm of the Patent and Trademark Office.  The TTAB rejected the registration based upon a likelihood of confusion with B&B’s trademark. Hargis did not appeal the decision.

At the same time, Hargis had sued B&B in federal court for trademark infringement under the Lanham Act.  A likelihood of confusion is one of the issues to prove trademark infringement.  Hargis argued that B&B was bound by the TTAB’s finding on that issue under the doctrine of collateral estoppel.  The Supreme Court agreed.

Importantly, the majority opinion expressly stated that the constitutional issues of whether application of collateral estoppel would deprive Hargis of its right to a jury trial or its right to have the issue determined by an Article III court were not before the Court.  Justice Thomas, joined by Justice Scalia, dissented, in part because the Court’s holding raised a question on these constitutional concerns.  Thus, B&B Hardware may not have put to rest this issue.     

© 2022 Honigman Miller Schwartz and Cohn LLP National Law Review, Volume V, Number 112
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William Berndt  Honigman Miller trade secrets false advertising trade secret law
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 Mr. Berndt is a trial lawyer with substantial experience in state and federal courts across the country. He focuses his practice on trade secret and false advertising claims. He represents businesses and senior executives in disputes relating to noncompetition agreements, trademark and copyright, fraud, professional liability, internal investigations, and general business and commercial litigation. Mr. Berndt has first-chair experience in trials, arbitrations and other proceedings.

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David L. De Bruin appellate attorney patent litigation USPTO Honigman Chicago
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Mr. De Bruin is a seasoned first-chair trial and appellate attorney. He concentrates his practice on patent litigation and related proceedings before the United States Patent and Trademark Office. Mr. De Bruin successfully argues legal issues, as well as explain the most complex technology to judges and juries.

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Marcus D. Fruchter lawyer Honigman Chicago office litigation specialist
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Mr. Fruchter defends or initiates litigation when it is inevitable and avoids lawsuits where possible. He provides zealous and creative representation that protects his clients’ legal rights and advances their strategic objectives. Mr. Fruchter litigates in state and federal courts across the country, and he has handled matters involving international and cross-border issues.

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Mr. Gowen represents companies, individuals and law firms in disputes, including those involving intellectual property, trade secrets, unfair competition, employment matters and other business litigation matters. He approaches litigation with an eye toward results; understanding that advancing his clients’ litigation strategies should fit within their overall business interests.

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Steven A Weiss Litigation attorney Honigman Law firm Chicago ediscovery
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Mr. Weiss provides advice on a wide variety of business litigation for companies and business people. He is focused on resolving business disputes with particular experience handling intellectual property, breach of contract, trade secret, employment and covenant not to compete matters. Local and national companies and individuals retain Mr. Weiss to handle a full range of business disputes because they trust his judgment and litigation skills.

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