March 24, 2015

The Saga Continues


Remember B&B Hardware, Inc. v. Hargis Industries, Inc., Case No. 13-352?

We last left our protagonist locked in a heated battle with its arch-nemesis[1] over trademarks used with fasteners. The case has hung in the balance√ʬ¶.. until now.

To recap:

Hargis sought registration of SEALTITE for construction industry fasteners;

It was thwarted when B&B, owner of federally-registered SEALTIGHT for aerospace fasteners, opposed on likelihood of confusion grounds at the TTAB;

In a one-two punch, B&B also sued Hargis for infringement in district court;

B&B emerged victorious at the TTAB and Hargis did not appeal;

BUT, the district declined to give preclusive effect to the TTAB's decision (which would have prevented Hargis from arguing that there is no likelihood of confusion). The jury found for Hargis;

B&B appealed to the Eight Circuit, which affirmed;

Undaunted, B&B petitioned the US Supreme Court for certiorari.

Finally, the results you've all been waiting for! (your gasps of anticipation are audible)

Today, the highest court in the land decided that a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met. What does this mean for our protagonist? (you ask with bated breath)

The Court remanded the case to the Eight Circuit for further proceedings, instructing it to determine whether issue preclusion applies in this case in light of the following rule: "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply."

What does this mean for our protagonist? (you ask again)

The parties haven't seen the last of each other yet! The Eighth Circuit must decide whether issue preclusion applies in this case. On remand, the court will have to determine whether the TTAB had all the same facts about how the marks are used in the marketplace that were presented in the district court case to make its assessment.

Just like the Supreme Court to end with a cliff hanger. (you sigh) Stay tuned to find out what happens next in this eternal battle for the ages!

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[1] Trademarkology takes no position on which party plays which role here. Choose your own adventure!

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