IP News

On March 24, 2015, the United States Supreme Court issued a 7-2 opinion, authored by Justice Alito, in B&B Hardware, Inc. v. Hargis Indus., Inc., Case No. 13-352. The majority held that “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB [Trademark Trial and Appeal Board] are materially the same as those before the district court, issue preclusion should apply.” Slip op. at 22. Justices Roberts, Kennedy, Ginsburg, Breyer, Sotomayor, and Kagen joined in the opinion. Justice Ginsburg filed a concurring opinion. Justice Thomas filed a dissenting opinion, in which Justice Scalia joined.

The case resulted from a nearly two-decade long dispute between B&B Hardware, Inc. (B&B) and Hargis Industries, Inc. (Hargis) regarding the federal courts' refusal to apply issue preclusion to the TTAB's decision that Hargis's SEALTITE mark is confusingly similar to B&B's SEALTIGHT. B&B argued in favor of issue preclusion, maintaining that the likelihood of confusion issue is the same before both the TTAB and federal courts. Hargis countered that registration proceedings and infringement actions resolve distinct issues and, therefore, prevent TTAB decisions from determining district court rulings. On writ of certiorari, the Supreme Court considered whether earlier findings by the TTAB on likelihood of confusion should be given preclusive effect in subsequent infringement litigation between the same parties, in which likelihood of confusion is an element.