Intellectual Property – Trademarks – issue preclusion

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U.S. Supreme Court

Civil

Intellectual Property – Trademarks – issue preclusion

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 a district court, issue preclusion should apply.

Hargis claims that the standards are different, noting that the registration provision asks whether the marks “resemble” each other, 15
U. S. C. §1052(d), while the infringement provision is directed towards the “use in commerce” of the marks, §1114(1). That the TTAB and a district court do not always consider the same usages, however, does not mean that the TTAB applies a different standard to the usages it does consider. If a mark owner uses its mark in materially the same ways as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation. For a similar reason, the Eighth Circuit erred in holding that issue preclusion could not apply because the TTAB relied too heavily on “appearance and sound.”

716 F. 3d 1020, reversed and remanded.

13-352 B&B Hardware, Inc., v. Hargis Industries, Inc.

Alito, J.; Ginsburg, J., concurring; Thomas, J., dissenting.

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