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Blog

Supreme Court to Determine Level of Deference Given to TTAB Decisions

July 2, 2014

Blog

Supreme Court to Determine Level of Deference Given to TTAB Decisions

July 2, 2014

Back to Fish's Trademark and Copyright Blog

 

On July 1, 2014, the United States Supreme Court granted certiorari in B&B Hardware, Inc., v. Hargis Industries, Inc., to decide what level of deference, if any, federal courts should give to likelihood of confusion findings by the USPTO’s Trademark Trial and Appeal Board (TTAB).

In B&B Hardware, defendant Hargis applied to register SEALTITE for construction fasteners and sheeting screws for use in the metal building industry.  B&B, owner of a federal trademark registration forSEALTIGHT, opposed the registration of Hargis’ SEALTITE application in the TTAB.  The TTAB found that there was a likelihood of confusion between the marks and refused registration of Hargis’ SEALTITE application.

B&B did not experience the same success, however, when it filed suit in federal court against Hargis for trademark infringement and was left with a jury finding that there was no likelihood of confusion between the two marks.  B&B appealed the judgment arguing that the TTAB’s decision on confusion should have been submitted into evidence.  The Eighth Circuit held that “[t]he simple fact that the TTAB addressed the concept of ‘likelihood of confusion’ when dealing with Hargis’s attempt to register the mark does not necessarily equate to a determination of ‘likelihood of confusion’ for purposes of trademark infringement.” B&B Hardware, Inc., v. Hargis Industries, Inc., 716 F.3d 1020, 1025 (8th Cir. 2013).  The Eighth Circuit also “reject[ed] B&B’s argument that the TTAB’s factual findings from a trademark registration case are entitled to deference by the district court.”  Id. at 1026.

As B&B Hardware shows, the Eighth Circuit does not give deference to TTAB decisions.  The Fifth and Eleventh Circuits afford TTAB decisions a heavy presumption of correctness, but no more.  The Second, Third, and Seventh Circuits have all previously determined that TTAB decisions do have a preclusive effect in trademark infringement suits.

The Supreme Court’s decision in B&B Hardware is expected to resolve the split among the circuits concerning what level of deference, if any, federal courts should give to TTAB orders on a likelihood of confusion.

Related Tags

trademark
TTAB

Blog Authors

Kristen McCallion | Principal

Kristen McCallion is a Principal in the New York office of Fish & Richardson and Chair of the firm’s Copyright Group. Ms. McCallion represents businesses in the consumer products, Internet, media, and interactive entertainment industries in copyright, trademark,...

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