The Supreme Court will tell us soon, when it decides B&B Hardware, Inc. v. Hargis Industries, Inc., Case No. 13-352. B&B Hardware and Hargis Industries have been duking it out for over a decade.
In 2007, the Trademark Trial and Appeal Board (the "TTAB") ruled that Hargis could not register the mark SEALTITE for use with metal screws for buildings because it was likely to be confused with B&B Hardware's federal registration for the mark SEALTIGHT for use with metal screws in the aerospace industry.Note: this is NOT a screw of one of the parties. It's just a regular old screw.**
Handing Hargis a 1-2 punch, B&B sued Hargis for infringement in U.S. district court to stop Hargis Industries from using SEALTITE in the marketplace. The jury found in favor of Hargis, finding no likelihood of confusion. The verdict was affirmed on appeal, and B&B asked the US Supreme Court to hear the case.
How can a US district court find no likelihood of confusion when the TTAB had already found that there is a likelihood of confusion between the same two marks in a dispute involving the same two parties?
This question alone is confusing.
Now the Supreme Court must decide whether the TTAB decision should have had "preclusive effect." That is, whether the district court should have ruled that the TTAB decision prevented Hargis from arguing the absence of confusion.
This question seems simple, but it is not. TTAB cases are generally more narrowly focused on registrability than U.S. district court cases, which often revolve around the actual use of a mark. Then again, the TTAB uses a multi-factor analysis to determine likelihood of confusion that is similar -- if not identical -- to the one used by U.S. district courts.
This case will affect the analysis of what impact a TTAB decision has on future disputes. It may also affect mark owners' decisions about what forum to use to resolve their dispute.
Briefs are filed and arguments have been heard. It's the final round. The justices' comments and questions indicate that this may end up being a close call. There is no doubt that one party will feel like it got screwed. A decision is expected by June.
Until then, we just have to hang tight (or tite).
In case you were curious about preclusive effect, the George Washington University Law School Law Review put together this fun explanatory video:
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**A round metal screw (cropped version). Photo taken by Uwe Hermann and used with permission under the terms of a Creative Commons license.