On March 24, 2015, the Supreme Court decided the case of B&B Hardware v. Hargis Indus.
This case represented a long-standing trademark battle brought in both
federal court and before the Trademark Trial and Appeal Board (TTAB).
The TTAB is an administrative agency charged with hearing and
deciding certain kinds of cases involved the trademarks. This includes
appeals from decisions from trademark examiners denying registration of
marks, opposition proceedings--where one party attempts to stop the
registration of another party's trademark-- and cancellation
proceedings. The marks at issue in B&B Hardware were SEALTITE
v. SEALTIGHT. However, the Supreme Court was not tasked with finding
whether these marks were likely to be confused in the marketplace--the
standard for determining trademark infringement.
Instead, the Court was tasked with determining whether a TTAB
decision could prohibit a party from bringing a lawsuit later on in
federal court. Parties cannot bring the same lawsuit against the same
party-or different parties in some circumstances-more than once. The
Supreme Court held that a TTAB decision could stop a party from filing a
trademark infringement suit against the same party late down the line.
In deciding this, the Supreme Court split with the law as it previously stood. Prior to the B&B Hardware decision,
federal courts did not give TTAB decisions any preclusive effect on the
later filed federal lawsuit. Importantly, the Supreme Court did not lay
down any bright line rule on this issue. Rather, it simply held the
TTAB decision could be used to prohibit a party from filing a second lawsuit in federal court.
What this means to you
To the average trademark owner, this probably sounds like a bunch of
legal jargon that is not applicable to everyday situations and concerns.
However, this decision can--and most likely will--affect a trademark
A trademark owner has a duty to police and enforce its trademark
rights against infringing uses of a mark. TTAB actions, such as an
opposition or cancellation proceeding, are typically considered to be
less expensive measures of enforcing one's trademark rights.
Additionally, there other strategic advantages in a TTAB action that are
not always available in a later federal infringement action. Prior to
the B&B Hardware decision, a trademark owner could bring both
a TTAB action and infringement action either separately or
contemporaneously to attack an infringer and know that the TTAB decision
would not affect the federal court action. In effect, trademark owners
had the unique ability to have two-bites at the apple. After B&B Hardware, this is not necessarily the case.
Now, a trademark owner now must heavily consider--in some circumstances--whether
bringing a TTAB action will prejudice its chances later down the road
at stopping the same party from infringing its trademark. Importantly,
the Court left this somewhat open by using open-ended language, such as
"should" or "may." The practical effect being that how a court will rule
on this issue will be hard to predict and add a level of uncertainty to
Of course, the situation has to be right in order for the TTAB
decision to have preclusive effects on a later filed federal lawsuit.
However, this is a consideration that trademark owners now must think
about when enforcing and policing their trademarks.
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