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

Fitzpatrick Case Update
March 24, 2015

Today the Supreme Court concluded that a decision of the Trademark Trial and Appeal Board (“TTAB”) denying registration of a trademark on likelihood of confusion grounds can have preclusive effect in a later district court infringement action. Justice Alito delivered the opinion of the Court, in which Chief Justice Roberts, and Justices Kennedy, Ginsburg, Breyer, Sotomayor, and Kagan joined. Justice Ginsburg filed a concurring opinion. Justice Thomas filed a dissenting opinion, in which Justice Scalia joined.
In reversing the Court of Appeals for the Eighth Circuit, the Court explained that likelihood of confusion for registration purposes is the same as likelihood of confusion for infringement purposes, and held that where the “ordinary elements of issue preclusion are met” and “when the usages adjudicated by the TTAB are materially the same as those before the district court,” the application of issue preclusion is appropriate.
Written by Timothy J. Kelly and Ronald A. Le

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