One unusual aspect of trademark law is the existence of a dual legal system to resolve disputes. Litigants can choose to resolve their disputes through the United States Patent & Trademark Office’s Trademark Trial and Appeal Board (TTAB) or initiate an action in the Federal court system. The TTAB is an administrative court that makes determinations regarding registrations, while the Federal Courts rule over issues concerning infringement and rights to use trademarks. The results of the two systems can sometimes be inconsistent. However, this landscape could change soon because the U.S. Supreme Court has been asked to provide guidance on the issue, should Federal Courts be bound by TTAB rulings related to likelihood of confusion issues?
In a recently filed petition, B&B Hardware, Inc. claims that the lower district court and the Eighth Circuit did not defer to the TTAB holding that there was a likelihood of confusion between its registered mark SEALTIGHT and another similar mark (SEALTITE) for related goods. The district court did not even allow the TTAB decision into evidence for fear it would prejudice the jury. The Eighth Circuit also rejected the TTAB’s decision. See B&B Hardware, Inc., v. Hargis Industries, Inc., Appeal No. 11-1247 (8th Cir. May 1, 2013). In its petition to the U.S. Supreme Court, B&B Hardware, Inc. argues that the Eighth Circuit’s rejection of the TTAB findings bolsters the circuit split. B&B Hardware, Inc. further argues that the TTAB finding on likelihood of confusion should have been given preclusive effect.
If you have not been following this case, a brief overview of the facts follows: the prior user of the trademark SEALTIGHT, for fasteners in the aerospace industry (B&B Hardware, Inc.), argues that Hargis Industries’ mark SEALTITE for self drilling screws in the the construction industry causes a likelihood of confusion in the marketplace. The TTAB agrees with B&B Hardware, Inc. and rules that Hargis Industries can not register SEALTITE for self drilling screws. In the end, the current circuit split on the issue, should federal courts be bound by TTAB rulings related to likelihood of confusion, makes it ripe for supreme court adjudication. See B&B Hardware, Inc., v. Hargis Industries, Inc., Case No. 13-352 in the U.S. Supreme Court.