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The US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), among other things, issues decisions on whether two marks are confusingly similar to the point where one of them shouldn’t be entitled to trademark registration.
But can the TTAB’s decision have preclusive effect on courts when the same two marks become the subject of a trademark infringement claim?
The Eighth Circuit recently tackled that issue in the case of B&B Hardware, Inc. v Hargis Industries, Inc. The decision gives guidance to brand owners figuring out their approach to trademark enforcement.
The TTAB can issue a decision on whether two marks are confusingly similar such that one of them shouldn't be entitled to registration. But the issue of whether one mark infringes another, which also looks at the likelihood of confusion, is beyond the scope of a TTAB proceeding and is instead left to the courts.
Here, B&B Hardware, the trademark owner, successfully fended off a trademark application filed by Hargis through the TTAB, which held that the two marks were confusingly similar.
Soon after the TTAB decision, B&B Hardware sued Hargis for trademark infringement and unfair competition.
But the district court rejected B&B Hardware's trademark infringement claims. By doing that, the court didn't give preclusive effect to the TTAB decision. In other words, the court didn't allow the TTAB decision to preclude the issue from being re-litigated.
B&B appealed to the Eighth Circuit, arguing the TTAB's determination that there was a likelihood of confusion should have been given preclusive effect by the district court. That would force the district court to find in B&B's favor on a trademark infringement claim.
But the Eighth Circuit sided with the district court.
Writing for the majority of the three-member panel, Judge Shepherd wrote that preclusive effect should not be given to the TTAB decision at issue because the TTAB test for confusingly similar marks serves a different purpose from the likelihood of confusion test for trademark infringement.
The likelihood of confusion test applied by the TTAB when considering B&B Hardware's opposition to Hargis' attempt to register the mark isn't the same as a determination of likelihood of confusion to analyze a claim for trademark infringement.
Because one is for registration, and the other is for infringement, there is no TTAB preclusion.
Judge Steven Colloton believed that when an administrative agency is acting in a judicial capacity and resolves factual disputes, the decision should have preclusive effect. If Colloton had his way, Hargis wouldn't have been able to re-litigate the dispute at the district court level after already going through the "confusingly similar" rigamarole before the TTAB.
At the end of the day, know that the TTAB may not necessarily have the final say on the likelihood of confusion between two marks. That being said, also know that the holding in this case may not be universally applied.
With the ambiguity of the decision, trademark owners should proceed with caution when pursuing a trademark infringement claim -- especially when the same marks were already the subject of a TTAB decision.