Intellectual property is an increasingly disputed and contentious aspect of commerce. The U.S. Supreme Court’s second trademark decision in 2015 in B&B Hardware, Inc. v. Hargis Industries, Inc., affirms that Trademark Trial and Appeal Board (TTAB) rulings on the likelihood of confusion of trademarks may have a binding, preclusive effect on later Federal Court trademark infringement proceedings.
During the dispute over the Sealtite®™ trademark, B&B contested that the TTAB's decision should be given preclusive effect under the Lanham Act. Although, rejected by the district court, B&B's appeal to the Circuit Court of Appeals was affirmed then subsequently reversed by the High Court. The Court did not rule that all TTAB decisions are preclusive; only that preclusion was possible in some cases. Hence, subsequent decisions will be decided independently. The definition, however, of 'materially the same' remains unclear.
This decision is significant for trademark opposition and litigation strategy. TTAB proceedings could become more costly and less streamlined, where the losing party might be compelled to seek a review of the decision to avoid the preclusive effect of the ruling.
There are various ways for litigants to avoid preclusion. For example, material differences between how a trademark is depicted when registered and how it is used in commerce may be sufficient to avoid preclusion. Meanwhile, it may be prudent to treat TTAB proceedings only as potentially preclusive of federal infringement litigation, unless material differences in usage are beyond dispute.
The Knowledge Group has assembled a panel of key thought leaders and practitioners to provide a two-hour LIVE Webcast to review the most recent cases in trademark dispute and to discuss the TTAB Rulings on Trademark Infringement Cases, with emphasis on Preclusion. Speakers will explain the significance and possible repercussions of the rulings and how brand owners can safeguard their trademarks in the future. Speakers will also provide best practices in developing and implementing effective trademark protection strategies to protect against infringement.
Key issues that will be covered in this course are:
- Trademark Trial and Appeal Board (TTAB) Rulings
- The Lanham Act
- Preclusive Effect: An Overview
- Federal Trademark Infringement, B&B Hardware, Inc. v. Hargis Industries, Inc.
- Coverage and Limitation
- U.S. Trademark Application
- Likelihood of Confusion
- Changes and Implications for Practitioners
- Risks and Pitfalls in Trademarks
- Infringement Mitigation Strategies
- Course Level: Intermediate
- Prerequisite: None
- Method of Presentation: Group-Based-Internet
- Recommended CLE/CPE Hours: 1.75 - 2.0
- Advance Preparation: Print and review course materials
- Course Code: 145002
Course Fee: Registration is FREE courtesy of Stites & Harbison, PLLC.
Note: CLE/CPE/CE credit requires a minimal Certificate of Attendance processing fee of $49 per participant (normally paid by the attendee) if credit is needed to apply to the bar.
Complimentary passes are available for the first 30 registrants. Once all of the passes are used, attendees can register for the deeply discounted rate of $25 each courtesy of Stites & Harbison, PLLC.