Earlier this year, the US Supreme Court held that a likelihood-of-confusion finding in a registration proceeding before the Trademark Trial and Appeal Board (TTAB) can have a preclusive effect in a subsequent trademark infringement action in federal court. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). Under the Court's ruling, issue preclusion applies on a case-by-case basis if the "ordinary elements of issue preclusion are met" and "the usages adjudicated by the TTAB are materially the same as those before the district court." The Court remanded the case to the Eighth Circuit to determine whether issue preclusion was appropriate under the circumstances. (For more information on the case background and the Supreme Court's decision, see our Trademark Alert on the case.)

After supplemental briefing, the Eighth Circuit on remand recently held that issue preclusion did apply "to the decision of the TTAB on likelihood of confusion." In a threeparagraph per curiam opinion hewing closely to the standard established by the Supreme Court, the court held that the "ordinary elements of issue preclusion have been met," noting that "the usages of the marks adjudicated before the TTAB were materially the same as the usages before the district court" and that "the TTAB compared the marks in question in the marketplace context" in reaching its likelihood-of-confusion determination.

The Eighth Circuit remanded the case to the district court for a determination of remedies. The brevity of the court's decision leaves for another day the difficult practical issues the Supreme Court's decision raises, including, for example, the extent to which parties should submit evidence of marketplace realities, the impact of B & B Hardware when marketplace evidence is submitted only with respect to some confusion factors, and the applicability of issue preclusion with respect to issues other than likelihood of confusion.

The case is B & B Hardware, Inc. v. Hargis Indus., Inc., 800 F.3d 427 (8th Cir. 2015) (per curiam).

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