B&B Hardware, Inc. v. Hargis Indus., Inc.

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Hargis tried to register its trademark for SEALTITE with the U.S. Patent and Trademark Office. B&B opposed registration, claiming that SEALTITE is too similar to B&B’s SEALTIGHT trademark. The Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should not be registered because of the likelihood of confusion. Hargis did not seek judicial review. Later, in an infringement suit, B&B argued that Hargis was precluded from contesting likelihood of confusion because of the TTAB’s decision. The district court disagreed. The Eighth Circuit affirmed. The Supreme Court reversed. If the other elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before a court, issue preclusion should apply. When Congress authorizes agencies to resolve disputes, issue preclusion applies except when a contrary statutory purpose is evident. Neither the Lanham Act’s (15 U.S.C. 1051) text nor its structure rebuts a presumption in favor of preclusive effect. There is no categorical reason why registration decisions can never meet the ordinary elements of issue preclusion. That many registrations will not satisfy those elements does not mean that none will. The same likelihood-of-confusion standard applies to both registration and infringement. The factors that the TTAB and the courts use to assess likelihood of confusion are not fundamentally different; the operative statutory language is essentially the same. Congress’ creation of an elaborate registration scheme confirms that registration decisions can be weighty enough to ground issue preclusion. View "B&B Hardware, Inc. v. Hargis Indus., Inc." on Justia Law