In advising clients and making strategic decisions about whether to bring or defend inter partes proceedings before the Trademark Trial and Appeal Board ("TTAB"), trademark practitioners need to consider carefully whether they are content having their clients' fates decided by the TTAB versus the courts. Traditionally, courts have not afforded TTAB decisions on likelihood of confusion more than "some weight" and certainly not preclusive effect, but in recent years there has been a growing amount of uncertainty. Well, the Supreme Court is one step closer to considering this issue and may decide whether likelihood of confusion determinations by the TTAB are entitled to preclusive effect in federal court and, if not, what level of deference such determinations should be accorded.
These issues were raised in a petition for certiorari filed by B&B Hardware, Inc. ("B&B"), a manufacturer of sealing fasteners sold under the registered mark SEALTIGHT. The respondent, Hargis Industries, Inc. ("Hargis"), also manufacturers sealing fasteners and does so under the name SEALTITE. In 2007, the TTAB denied Hargis's attempt to register its SEALTITE mark on the grounds that it was likely to cause confusion with B&B's SEALTIGHT mark. Based on the TTAB's determination, B&B sought summary judgment on the issue of likelihood of confusion in a concurrent trademark infringement and unfair competition action that B&B had commenced against Hargis in federal district court.
B&B's argument was unsuccessful in both the district court and the Eighth Circuit. While the district court declined to give the TTAB's decision preclusive effect on the grounds that the TTAB is not an Article III court, the Eighth Circuit sidestepped that issue, concluding that the TTAB's determination was not entitled to preclusive effect because the likelihood of confusion issues decided by the TTAB were not the same as those raised in the action before the district court. More specifically, the Eighth Circuit held that the TTAB did not give sufficient weight to "marketplace context," i.e. whether or not the products bearing the two marks are sold to the same customers – a factor that the Eighth Circuit held was critical in trademark infringement actions. The Eighth Circuit also noted that the burden of persuasion differed between the two proceedings – Hargis's failure to overcome B&B's challenge to its mark before the TTAB did not establish that B&B could meets its burden of persuasion for trademark infringement purposes.
Both the district court and the Eighth Circuit further held that B&B had not provided relevant authority for the proposition that a district court is obligated to defer to the TTAB's factual findings.
In support of its petition for certiorari, B&B makes four arguments: (1) that the Eighth Circuit's decision is inconsistent with the approach of the TTAB and Federal Circuit whereby district court determinations of likelihood of confusion are given preclusive effect; (2) that certiorari is necessary to resolve a circuit split, with the Second Circuit sometimes allowing for preclusion, the Seventh and Third Circuits always allowing for preclusion, and the Fifth and Eleventh Circuits not allowing for preclusion but according deference to the TTAB's determinations; (3) that the Eighth Circuit misapplied the law of preclusion by elevating its own approach over that of the TTAB; and (4) that potential alternative bases for sustaining the Eighth Circuit's judgment (i.e., differences in the burden of persuasion between the TTAB proceeding and the trademark infringement action in federal court and the TTAB's status as an administrative tribunal and not an Article III court) are meritless.
Hargis opposes B&B's petition arguing: (1) that there is nothing inconsistent about the TTAB and Federal Circuit giving preclusive effect to likelihood of confusion determinations by district courts, but district courts not giving preclusive effect to TTAB decisions because (a) one tribunal is an administrative agency whereas the other is an Article III court; (b) the likelihood of confusion issues addressed by these respective tribunals are not the same; and (c) these tribunals preside over different types of proceedings; (2) that the cases cited by B&B do not demonstrate a circuit split on the question of whether TTAB determinations are entitled to preclusive effect; (3) that the Eighth Circuit's decision was correct on the merits; and (4) that because of the alternative bases for affirming the Eighth Circuit's judgment, this case is a poor vehicle to address the issue of preclusion.
B&B's petition went to conference on January 10, 2014, and on January 13, 2014 the Supreme Court invited the Solicitor General to submit a brief expressing the views of the United States. Because Justices must vote to extend such an invitation to the Solicitor General and because available data shows that out of the cases in which the Supreme Court calls for the views of the Solicitor General a notable number are granted review, the Supreme Court's invitation may indicate a higher likelihood that B&B's petition will be granted.
Proskauer's False Advertising & Trademark attorneys will continue to monitor this important case and will continue to update our clients. The case is B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352. Stay tuned.
 See B&B Hardware, Inc. v. Hargis Indus., Inc., 736 F. Supp. 2d 1212 (E.D. Ark. 2010); B&B Hardware, Inc. v. Hargis Indus., Inc., 716 F.3d 1020 (8th Cir. 2013).
 See David C. Thompson and Melanie F. Wachtell, An Empirical Analysis of Supreme Court Certiorari Petition Procedures: The Call for Response and The Call For The Views of The Solicitor General, 16 Geo. Mason L. Rev. 237, 27-75 (2009).