I’m happy to see that the Supreme Court will address whether the United States Patent and Trademark Office’s findings on the likelihood of confusion between two trademarks should be given deference in Federal Court. The Supremes granted cert. to fastener manufacturer B&B Hardware Inc., which won a TTAB fight and obtained a finding that a trademark from competitor Hargis Industries Inc.was confusingly similar to its mark. The victory was short-lived however, when B&B lost a lawsuit over the same issue after a federal court ruled that TTAB’s ruling should be given no preclusive effect, deference or even admittance into evidence.
A divided Eighth Circuit affirmed that ruling in May 2013, finding that TTAB’s test for trademark confusion was significantly different from that of a federal court, and that the board’s registration-minded approach did not give sufficient weight to real-world context for its ruling to be given deference.
The Supreme Court is taking the case because there is a split among the Circuits on this issue. For example, the Third and Seventh circuits, have given TTAB rulings preclusive effect when facts and analyses in the cases have lined up closely enough. The Second Circuit does so in cases where the TTAB considered evidence about confusion “in the entire marketplace context,” like a trial court would. Still, others have refused preclusion but given TTAB rulings varying amounts of deference. The Eighth Circuit’s position in B&B’s case against Hargis — refusing preclusion, deference or even admittance as evidence during the trial that eventually produced a verdict of non-infringement— was the farthest end of that continuum.
We will be watching this case with interest. Let me know if you have ever had to address this issue in federal court and how you think this should come out.
The case is B&B Hardware Inc. v. Hargis Industries Inc. et al., case number 13-352, in the U.S. Supreme Court.