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

Last Updated: August 5 2014
Article by Leo Kittay

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 questions presented to the Supreme Court are, first, "[w]hether the TTAB's finding of likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation . . . ," and, second, if Hargis is not estopped from relitigating likelihood of confusion, what, if any, deference is due to the TTAB's finding. B&B argues that there is a four-way split on these issues among the U.S. circuit courts, which would indicate the need for the Supreme Court to step in and resolve the split. But, Hargis takes issue with this characterization, calling the split illusory. Hargis insists instead that circuit courts across the country are uniform in that they determine what, if any, preclusive effect is owed to TTAB decisions on the facts of each case, not based on a black-and-white rule.

Notably, on January 13, 2014, the Supreme Court invited the Solicitor General to file a brief in the case expressing its position. This invitation strongly suggests that the Court will grant certiorari. Any decision by the Supreme Court on the questions presented would undoubtedly affect strategic decisions concerning whether to pursue inter partes proceedings before pursuing an infringement action in federal court.

The second case, Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014), concerns appeals to the district court of TTAB final decisions brought pursuant to Section 21 of the Trademark (Lanham) Act, 15 U.S.C. § 1071(b). Under Section 21, a litigant in an inter partes or ex parte proceeding, who is "dissatisfied with the decision of the . . . Trademark Trial and Appeal Board" may seek "remedy by civil action." 15 U.S.C. § 1071(b). More often litigants challenge a TTAB decision by appealing to the Federal Circuit under 15 U.S.C. § 1071(a), which permits an appeal based solely on the record below. In stark contrast, appeals to the district court permit the parties to submit new evidence.

Before the Fourth Circuit's decision in Swatch, it was said that the district court would "sit in a dual capacity" for Section 1071 appeals. Skippy, Inc. v. Lipton Invs., Inc., 345 F. Supp. 2d 585, 586 (E.D. Va. 2002) aff'd, 74 F. App'x 291 (4th Cir. 2003). "On the one hand, the court [sat as] an appellate reviewer of facts found by the TTAB. On the other hand, the court [sat as] a fact-finder based on new evidence introduced to the court. Review of new evidence [was] de novo. The district court, . . . however, [was to] afford deference to the fact-findings of the TTAB." Id.

In Swatch, however, the Fourth Circuit overruled this precedent holding that "where new evidence is submitted, de novo review of the entire record is required because the district court 'cannot meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts.'" Swatch AG, 739 F.3d at 156 (quoting Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012)) (emphasis added).

The Fourth Circuit's holding enhances the allure of bringing an appeal to district courts in the Fourth Circuit, as opposed to the Federal Circuit, since the appellant can guarantee itself a "fresh look" at its case simply by supplementing the record with new evidence. It remains to be seen whether other circuit courts will follow the Fourth Circuit's lead or whether a split will emerge, potentially setting the stage for another trip to the Supreme Court.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.