<i>B&B</i> Offers Rest And Repose

Case Background

The decision follows 18 years of tortuous litigation, which in itself demonstrates the importance of the finality and repose collateral estoppel is meant to encourage. B&B registered its SEALTIGHT trademark in the United States Patent and Trademark Office (PTO) in 1993. When Hargis, in 1996, was refused registration by the PTO for its own mark, SEALTITE, it sought to cancel B&B's registration. While that proceeding was pending, B&B commenced infringement litigation in federal court, which B&B lost on grounds its mark was invalid as merely descriptive. In appeal number one in 2001, the Eighth Circuit affirmed. However, by the time the Board resumed consideration of the cancellation proceeding, B&B's registration had become “incontestable” and could no longer be challenged as merely descriptive, so that the cancellation proceeding against B&B's registration was dismissed. In 2003, B&B commenced an opposition challenging Hargis' application for SEALTITE (which by then had been approved by the PTO) as being likely to cause confusion with its prior mark (now incontestable). The Board agreed with B&B, finding the marks confusingly similar. (It was this TTAB decision that B&B contended merited preclusive effect.) Meanwhile, B&B had separately commenced a new infringement suit against Hargis in federal court.