Petition For Certiorari Filed Regarding Preclusive Effect Of Likelihood Of Confusion Findings By The Trademark Trial And Appeal Board; Supreme Court Invites Solicitor General To Submit Views

In advising clients and making strategic decisions about whether to bring or defend inter partes proceedings before the Trademark Trial and Appeal Board ("TTAB"), trademark practitioners need to consider carefully whether they are content having their clients' fates decided by the TTAB versus the courts. Traditionally, courts have not afforded TTAB decisions on likelihood of confusion more than "some weight" and certainly not preclusive effect, but in recent years there has been a growing amount of uncertainty. Well, the Supreme Court is one step closer to considering this issue and may decide whether likelihood of confusion determinations by the TTAB are entitled to preclusive effect in federal court and, if not, what level of deference such determinations should be accorded.

These issues were raised in a petition for certiorari filed by B&B Hardware, Inc. ("B&B"), a manufacturer of sealing fasteners sold under the registered mark SEALTIGHT. The respondent, Hargis Industries, Inc. ("Hargis"), also manufacturers sealing fasteners and does so under the name SEALTITE. In 2007, the TTAB denied Hargis's attempt to register its SEALTITE mark on the grounds that it was likely to cause confusion with B&B's SEALTIGHT mark. Based on the TTAB's determination, B&B sought summary judgment on the issue of likelihood of confusion in a concurrent trademark infringement and unfair competition action that B&B had commenced against Hargis in federal district court.

B&B's argument was unsuccessful in both the district court and the Eighth Circuit.[1] While the district court declined to give the TTAB's decision preclusive effect on the grounds that the TTAB is not an Article III court, the Eighth Circuit sidestepped that issue, concluding that the TTAB's determination was not entitled to preclusive effect because the likelihood of confusion issues decided by the TTAB were not the same as those raised in the action before the district court. More specifically, the Eighth Circuit held that the TTAB did not give sufficient weight to "marketplace context," i.e. whether or not the products bearing the two marks are sold to the same customers - a factor that the Eighth Circuit held was critical in trademark infringement actions. The Eighth Circuit also noted that the burden of persuasion differed between the two proceedings - Hargis's failure to overcome B&B's challenge to its mark before the TTAB did not establish that B&B could meets its burden of persuasion for...