United States: New Dangers At The TTAB

The Trademark Trial and Appeal Board of the United States Patent and Trademark Office has recently become a more dangerous place.

The Trademark Trial and Appeal Board—usually referred to by its acronym "TTAB," which is spoken (most often) as four separate letters (tee, tee, ay, bee) rather than the obvious and more concise vocalization of "tee-tab"—is the tribunal where you can go on appeal if you do not like the examiner's rejection of your trademark application. It is also the tribunal that hears and adjudicates "Oppositions" filed by third party "opposers" against "applicants" seeking registration and "Petitions for Cancellation" where third party "petitioners" proceed against "respondents" registrations they feel were improvidently granted.

So TTAB is a busy place, even though it has a relatively circumscribed brief. TTAB decides only a single ultimate issue: whether any given applied-for mark is going to attain registration or any given registered mark is going to be stripped of registration.

TTAB does not get into granting injunctive relief against the use of a trademark, nor does it have the power to award money damages.

The only thing at stake is whether a given mark is going to get, or stay, registered.

Indeed, if adversaries A and B have brought this "registration" issue regarding mark X before TTAB, and the same parties are also litigating in federal district court about not only registration but also injunctions and damages, it is TTAB's policy to suspend the limited "Opposition" or "Cancellation" pending before it and to defer to the more global judicial lawsuit.

Sometimes the clash of two trademarks is so severe that the respective owners have no choice but to go to federal court and settle the issue of who gets to use his work and who, if anyone, has to stop.

But other times resolution of the sole issue of registration (yes or no) suffices to vindicate (or not) the opposer or petitioner's rights against the applicant or respondent.

If the oppose/petitioner loses in a TTAB proceeding, he may conclude he was overestimating the "likelihood of confusion" created by the applicant/respondent's mark; on the other hand, if the applicant/respondent is the loser, she may decide that she does not want to base her business on an unregistered mark and will proceed to choose another.

BUT, in all events, a TTAB proceeding was never a bet-the-ranch contest in which both right-to-use and possibly substantial money were at stake. Naturally, because of the lower level of intensity, if you will, parties to Oppositions or Cancellations could and sometimes would treat the proceeding as a major skirmish (still capable of consuming significant time and treasure) rather than as total trademark litigation/war (where the only two possible outcomes are victory or death). In short, it was neither irrational nor high-risk for a party before TTAB in an Opposition or Cancellation to adopt (colloquially speaking) a "hey, it was worth a shot" attitude. If the TTAB proceeding yielded the wrong result, or was simply too much of a drain on resources, the losing or flagging party could shrug, regroup, and live to fight another day (if so inclined) in federal court.

But no more. The U.S. Supreme Court, in B & B Hardware, Inc. v. Hargis Industries, Inc., a year-old decision that is still being digested farther down the judicial food chain, added immeasurably to the gravitas of TTAB and the risks of litigating there.

In Hargis, B&B owned the mark SEALTIGHT and successfully opposed, before TTAB, Hargis' application to register SEALTITE. The Opposition was pursued on the ground that Hargis' SEALTITE was likely to cause confusion with B&B's SEALTIGHT. At the same time, B&B and Hargis were joined in battle in federal district court over the same infringement issue, i.e., whether confusion was likely between B& B's SEALTIGHT and Hargis' SEALTITE.

The exact details of the federal court litigation are a muddle (as is so often the case), but suffice it to say that B&B took the (unconventional) position that Hargis' loss in TTAB precluded its relitigation of the confusion issue in federal court. The district court took the conventional view and ruled Hargis was entitled to retry the issue, notwithstanding the TTAB defeat. The case went to the jury, and the jury found for Hargis: no confusion.

B&B appealed to the federal appeals court, arguing that the confusion issue never should have reached the jury: the TTAB decision was final. The appeals court upheld the district court: the TTAB decision was neither final nor preclusive. B&B petitioned the Supreme Court for certiorari; the Supreme Court granted cert. and reversed and remanded. Bottom line: the district court should have treated the TTAB ruling that Hargis' SEALTITE infringed (was likely to be confused with) B&B's SEALTIGHT as final.

The foundations of legal practice before TTAB continue to shake, as is usually the case, when settled law is upended.

The conventional view—now rejected by the Supreme Court—was that TTAB was the appropriate forum to administer the trademark registration process, but, as a mere administrative agency, it should not be determining issues and remedies regarding infringement, which were historically reserved to the courts. So why the rejection of history? The ratio decidendi— no Latin-free articles for this author!—of the Supreme Court runs counter to what was just told to you about (a) registration (or not) being one thing, while (b) infringement, injunction, and damages were quite another. Justice Alito, who wrote the majority opinion, begs to differ with the author: he believes that the stakes for registration are not so much lower than for infringement that preclusion should never apply to TTAB decisions. In other words, TTAB may be both your first and last bites at the apple.

So, who are you going to believe? The author or Justice Alito? The author suggests that you go with the Justice and, given the time of year, that you treat TTAB proceedings henceforth as the World Series and not the litigation equivalent of spring training.

Originally published on March 11, 2016

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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.

In association with
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
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.


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.


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.


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.


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.


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.


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.