Share this e-Alert:

Polsinelli Intellectual Property & Technology Litigation


March 2015


SCOTUS Today: TTAB Decisions, Not Federal Courts Will Be Final Arbiter in Many Trademark Cases







For more information about this alert, please contact:


Todd A. Davidovits



Email | Bio


Intellectual Property & Technology Litigation Practice Leadership:


Keith J. Grady

Practice Area Chair


Email | Bio


Gary E. Hood

Practice Area Vice Chair


Email | Bio


To view a full list of our Intellectual Property & Technology Litigation professionals, click here.


For current Intelligence or to learn more about our Intellectual Property & Technology Litigation practice, click here.


View Polsinelli documents on JD Supra  


LinkedIn Twitter Facebook Inside Law Podcast Connect with us on LinkedIn. Connection with us on Twitter. Connect with us on Facebook.



Today the Supreme Court, in B&B Hardware Inc. v. Hargis Industries Inc. et al., case number 13-352, decided that Trademark Trial and Appeal Board ("TTAB") decisions preclude federal courts from ruling on issues that are "materially the same." The Supreme Court's decision could have a significant effect on the way TTAB proceedings are litigated. Until now, parties may have treated TTAB decisions lightly because they knew they had a second opportunity to defend their interests in court. Parties often withheld resources in TTAB proceedings to reflect this reality. Now, the TTAB will be the final arbiter in many trademark cases. As a result, parties will more adamantly defend their interests in TTAB decisions, likely increasing the resources they put toward that effort as a result of this new reality. Accordingly, the Supreme Court's B&B decision could turn TTAB proceedings into "mini trials."

The case involved a dispute over the SEALTITE mark, which B&B Hardware registered for self-fasteners in 1993. Hargis used the mark on sheeting screws and applied to register the mark in 1996, at which point litigation between the two parties ensued. In 2007, the TTAB refused to register Hargis' mark and found a "likelihood of confusion" between Hargis' mark and B&B's mark. Following the TTAB ruling, B&B filed a suit against Hargis for trademark infringement.

The case turned on whether the TTAB's decision was preclusive. The TTAB found a "likelihood of confusion" between Hargis' mark and B&B's mark. If the TTAB decision precluded the court from ruling in the alternative, then Hargis infringed. If, the TTAB decision was not preclusive, the court could find that Hargis did not infringe.

The U.S. Court of Appeals for the Eight Circuit in B&B held that the TTAB's ruling was not preclusive. B&B appealed to the Supreme Court, and in oral arguments, Hargis' counsel argued that the TTAB's decision should not be preclusive because the TTAB and courts consider different factors to determine "consumer confusion." The TTAB considers only whether marks overlap in goods and services listed in the trademark application, not "real world use" (which is closely considered by courts).

The government argued in support of B&B that the TTAB's inquiry is not "materially different" from that of the courts. The government's counsel explained that "issue preclusion generally depends on whether the analyses in question materially differed, and [Hargis] has not identified any material difference between the issue decided by the board and what was at issue in the infringement case[.]" In fact, "[t]he only actual difference between the two proceedings is that you are not allowed live testimony in front of the TTAB. That alone is insufficient reason to reject preclusion."

The Supreme Court found the Government's argument persuasive. Justice Alito wrote that "[w]hen usages adjudicated by the TTAB are materially the same as those before a district court, issue preclusion" applies. Justice Alito explained that "[t]he fact the TTAB and district courts use different procedures suggests only that sometimes issue preclusion might be inappropriate, not that it always is."

For More Information

For more information on this alert, please contact the author or your Polsinelli attorney.













Atlanta  Chattanooga  Chicago  Dallas  Denver  Edwardsville  Jefferson City  Kansas City  Los Angeles  New York
Overland Park  Phoenix  Raleigh  St. Joseph  St. Louis  San Francisco  Springfield  Topeka  Washington, D.C.  Wilmington








real challenges. real answers.SM  
Polsinelli is a first generation Am Law 100 firm serving corporations, institutions, entrepreneurs and individuals nationally. Our attorneys successfully build enduring client relationships by providing practical legal counsel infused with business insight, and with a passion for assisting General Counsel and CEOs in achieving their objectives. Polsinelli is ranked 18th in number of U.S. partners* and has more than 740 attorneys in 20 offices. Profiled by The American Lawyer and ranked as the fastest growing U.S. law firm over a six-year period**, the firm focuses on health care, financial services, real estate, life sciences and technology, energy and business litigation, and has depth of experience in 100 service areas and 70 industries. The firm can be found online at Polsinelli PC. In California, Polsinelli LLP.

* Law360, March 2014
** The American Lawyer 2013 and 2014 reports







Polsinelli provides this material for informational purposes only. The material provided herein is general and is not intended to be legal advice. The choice of a lawyer is an important decision and should not be based solely upon advertisements.

Copyright © 2015 Polsinelli PC.

Connect with us on LinkedIn. Connection with us on Twitter. Connect with us on Facebook. Intellectual Property & Technology Litigation Polsinelli