April 24, 2015Published Article

U.S. Supreme Court ruling: Administrative trademark decisions may preclude infringement litigation

Milwaukee Biz Blog

Milwaukee Biz Blog published Attorney Katrina G. Hull's article "U.S. Supreme Court ruling: Administrative trademark decisions may preclude infringement" on April 24, 2015.

"The U.S. Supreme Court ruled on March 24 that Trial Trademark and Appeal Board (TTAB) decisions “can be weighty enough” to preclude a district court from litigating the likelihood of confusion between trademarks in a subsequent infringement suit. The decision in B&B Hardware, Inc. v Hargis Industries, Inc. may not settle the nearly 20-year dispute between the owners of the SEALTIGHT and SEALTITE marks; however, the ruling is likely to increase the importance of TTAB proceedings. In certain circumstances, federal district courts may be bound by TTAB determinations that trademarks are confusingly similar under the doctrine of issue preclusion. Issue preclusion prevents the same issues from being litigated more than once, saving time and resources.

As the Court explained, “[t]he full story [of the parties' dispute] could fill a long, unhappy book.” By 2003, the year B&B filed its opposition with the TTAB to stop Hargis from obtaining a federal trademark registration for a SEALTITE mark, the parties had been litigating trademark infringement claims for eight years. B&B, the owner of a federal registration for SEALTIGHT for metal fasteners used in the aerospace industry, asserted that Hargis' SEALTITE mark for fasteners used in building construction created a likelihood of confusion."

To read the full article, click here.

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