United States: Eighth Circuit Court Of Appeals: On Remand From Supreme Court, Circuit Court Gives Preclusive Effect To Trademark Trial And Appeal Board Decision On Likelihood Of Confusion

B&B Hardware, Inc. v. Hargis Industries, Inc., __ F.3d __, 2015 WL 5011460 (8th Cir. Aug. 25, 2015)

In March 2015, the U.S. Supreme Court held in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct 1293 (2015), that a decision of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office ("TTAB") on the issue of likelihood of confusion may preclude a federal court from reaching a contrary conclusion on the issue in a subsequent infringement action.  The Supreme Court's ruling is summarized in the following sentence from that opinion:  "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply."  135 S. Ct at 1310.

Given that the TTAB does not typically look to real-world usages of the marks made by the parties (particularly by the defendant) in assessing likelihood of confusion, while such real-world marketplace conditions are critical to the likelihood of confusion analysis of district courts in infringement actions, many practitioners wondered whether the standard adopted by the Supreme Court in B&B Hardware would ever be met such that a TTAB decision could ever be given preclusive effect in federal court.  We now know the answer is "yes," as the U.S. Court of Appeals for the Eighth Circuit, in its re-examination of the B&B Hardware case following a remand from the Supreme Court, recently gave preclusive effect to the TTAB decision on likelihood of confusion.   

The Facts and Procedural History of the Case

The facts of the case as relevant here are relatively straightforward.  The plaintiff, B&B Hardware ("B&B"), has since 1993 owned a federal registration for the mark SEALTIGHT for metal fasteners used in the aerospace industry.  Meanwhile, the defendant, Hargis Industries ("Hargis"), uses the mark SEALTITE for metal fasteners in the construction industry, and in 2002 applied for federal registration of SEALTITE.  B&B opposed registration of SEALTITE before the TTAB, arguing that it was confusingly similar to SEALTIGHT.  After the parties engaged in discovery and trial, the TTAB concluded that SEALTITE was confusingly similar to SEALTIGHT and could not be registered.  Hargis did not exercise its statutory right to appeal the TTAB's decision to the U.S. Court of Appeals for the Federal Circuit or a federal district court. 

B&B then sued Hargis for infringement in federal district court, claiming that Hargis' use of SEALTITE infringed B&B's rights in SEALTIGHT.  In light of the TTAB's finding of a likelihood of confusion, B&B argued to the district court that the TTAB's decision precluded Hargis from arguing in the district court that there was no likelihood of confusion between the marks.  The district court, however, refused to give preclusive effect to the TTAB's determination.  Ultimately, a jury sided with Hargis, finding no likelihood of confusion between the marks.  B&B appealed to the U.S. Court of Appeals for the Eighth Circuit, arguing that the district court should have given preclusive effect to the TTAB's likelihood of confusion decision.  But the Eighth Circuit affirmed, holding that because the TTAB looks to different factors than do federal courts in making likelihood of confusion determinations, a federal court should never give preclusive effect to a TTAB decision on the likelihood of confusion issue. 

The Supreme Court accepted review of the case and reversed the Eighth Circuit, adopting the rule that a TTAB decision on likelihood of confusion can have preclusive effect so long as "the usages adjudicated by the TTAB are materially the same as those before the district court."  135 S. Ct. at 1310.  It then remanded the case back to the Eighth Circuit to determine in the first instance whether the usages of SEALTIGHT and SEALTITE by the parties adjudicated by the TTAB were materially the same as those before the district court.

The Eighth Circuit's Decision on Remand

In a short per curiam opinion, the Eighth Circuit on remand held that "the usages of the marks adjudicated before the TTAB were materially the same as the usages before the district court."  B&B Hardware, 2015 WL 5011460, at *1.  Specifically, the Eighth Circuit explained that "the TTAB compared the marks in question in the marketplace context when it determined the likelihood of confusion issue for purposes of trademark registration."  Id.  To support this statement, the Eighth Circuit cited to the dissenting opinion of one of the judges on the Eighth Circuit panel when the case was first before that Court, id., in which she stated that "[i]n reaching its decision on likelihood of confusion, the [TTAB] compared the marks in their entire marketplace context, discussing the companies' goods in relation to the fastener industry, the companies' channels of distribution, and the behaviors of consumers in the market for the companies' products."  B&B Hardware, Inc. v. Hargis Industries, Inc., 716 F.3d 1020, 1029 (Colloton, J., dissenting).

Accordingly, the Eighth Circuit remanded the case to the district court with the instruction to "give preclusive effect to the TTAB on the decision of likelihood of confusion" and to hold further proceedings to determine "what remedies may be awarded for infringement."  B&B Hardware, 2015 WL 5011460 at *1.

The Future of TTAB Proceedings After B&B Hardware

The upshot of the Supreme Court and Eighth Circuit decisions in B&B Hardware is that parties in the TTAB and their counsel must carefully consider and determine what types of evidence to solicit and introduce in TTAB proceedings.  Specifically, if the parties before the TTAB treat the proceeding like a federal court litigation, including asking for and introducing real-world evidence about the parties' marks, products, consumers, and trade channels—like the parties did in B&B Hardware—then it becomes more likely that the TTAB will base its decision on such real-world evidence and that a federal court, in turn, will give the decision preclusive effect. 

It would seem, however, that there are still categories of TTAB cases that generally should be ineligible for preclusive effect under B&B Hardware—namely, TTAB proceedings relating to intent-to-use applications or applications (or registrations) based on foreign registrations for marks that are not yet in use in the U.S., since neither of these types of applications involve any actual use by the defendant in the U.S. for the TTAB to examine. 

But even in those cases, litigants who are unhappy with the TTAB's decisions likely will now be more inclined to appeal the decisions to the U.S. Court of Appeals for the Federal Circuit or to a federal district court.  Litigants would be reluctant to forego review of a TTAB decision by a federal court now given the risk later down the road that a federal court then will hold that the TTAB decision has preclusive effect.  

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions