As reported by SCOTUSblog, the U.S. Supreme Court heard oral arguments today in the pending trademark case of B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352. In this case, petitioner B&B owns and uses the registered mark SEALTIGHT® for sealing fasteners. Respondent Hargis is also in the sealing fastener business, and has used and sought federal registration for the phonetically identical mark SEALTITE. Hargis initiated a cancellation proceeding against B&B’s registered mark before the Trademark Trial and Appeal Board (TTAB), but the TTAB held that Hargis’s SEALTITE mark created a likelihood of confusion with B&B’s SEALTIGHT mark, and refused to cancel B&B’s mark or register Hargis’s mark. B&B then sued Hargis in federal court for trademark infringement, but, contrary to the TTAB’s finding, the jury found no likelihood of confusion and ruled against B&B. After the 8th Circuit Court of Appeals upheld the district court’s ruling, the Supremes agreed to hear the case.
The questions presented, as summarized by the Supreme Court, are (1) whether the TTAB’s finding of a likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation, in which likelihood of confusion is an element; and (2) whether, if issue preclusion does not apply, the district court was obliged to defer to the TTAB’s finding of a likelihood of confusion absent strong evidence to rebut it. SCOTUSblog distills the two issues into a single question: “how much deference does a district court owe to determinations that the [USPTO] makes in determining whether to register a trademark?”
As the article explains, B&B argues that “the [TTAB’s] determination of the likelihood of confusion between the marks, made in a proceeding in which both parties participated, should resolve the question once and for all,” in large part because of “the availability of appeal to federal district court: because Hargis had every opportunity to challenge the [TTAB’s] adverse ruling in the Federal Circuit or in a federal district court, its failure to do so should bring the litigation to a conclusion at last.” Hargis, on the other hand, “emphasizes the difference between the types of confusion at issue: the [TTAB] is considering similarity of the marks, while the court is considering similarity of use. In the terms of the Lanham Act, the Board is considering the likelihood that a proposed mark ‘so resembles’ an existing mark that it is likely to cause confusion; the court addressing the Lanham Act claim considers whether the defendant’s ‘use in commerce . . . is likely to cause confusion.’” It remains to be seen how the Court will rule in this case, but there are compelling arguments to be made on both sides, and the decision could significantly affect the strategies and practices of future litigants before both the TTAB and the federal courts. Read the full article here, and the transcript of today’s oral arguments here.
![By Steve Petteway, Collection of the Supreme Court of the United States (Roberts Court (2010-) - The Oyez Project) [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1417715853657-C52P7UGR5YJTP441YN7F/image-asset.jpeg)
