When A District Court Must Confront A Trademark Trial And Appeal Board Opinion

B & B Hardware, Inc. v. Hargis Industries, Inc., 716 F.3d 1020 (8th Cir. 2013), petition for cert. filed, 2013 WL 5276022 (U.S. Sept. 18, 2013) (No. 13-352) and Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014)

Two recent cases in the news highlight the two different ways that an opinion by the Trademark Trial and Appeal Board ("TTAB") can wind up before a federal district court. And, in both contexts, the chief question is how much preclusive effect or deference is owed to the TTAB's holdings.

In the first case, B & B Hardware, Inc. v. Hargis Industries, Inc., 716 F.3d 1020 (8th Cir. 2013), petition for cert. filed, 2013 WL 5276022 (U.S. Sept. 18, 2013) (No. 13- 352), the Supreme Court currently is considering whether to grant certiorari in a civil infringement action brought by B&B Hardware. B&B Hardware owns a registration for SEALTIGHT for self-sealing nuts and bolts based on first use in 1990. It opposed an application filed by Hargis for the mark SEALTITE for another type of sealing fasteners made up of screws and washers based on a later first use date. After conducting a likelihood-of-confusion analysis using the so-called DuPont factors and finding, inter alia, that the marks were "substantially identical," the products were "closely related" and actual confusion had resulted, the TTAB sustained the opposition. B & B Hardware, Inc. v. Sealtite Building Fasteners, Opp. No. 91155687, 2004 WL 1776636 (T.T.A.B. Aug. 6, 2004); see also Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Hargis did not appeal.

B&B then turned to the district court, in which it had already initiated an infringement action. However, there, the jury found for defendant Hargis, including on the infringement claim. B&B failed to convince either the district court or the Court of Appeals for the Eighth Circuit that the TTAB decision should be given preclusive effect or, even, admitted into evidence. The district court refused to hold the TTAB decision had preclusive effect on the ground that the TTAB was not an Article III court. The district court would not admit into evidence the TTAB decision because the thirteen DuPont factors differed from the six factors that must be considered under Eighth Circuit law in determining likelihood of confusion. The Court of Appeals for the Eighth Circuit affirmed, pointing to the different (albeit overlapping) factors. 716 F.3d 1020, 1025 (8th Cir. 2013). One judge dissented.

The...