TTAB and Trademark Litigation

There are two main methods for protecting your trademarks.  The first method involves filing an opposition proceeding if you believe that you will be damaged by the registration of another’s mark.  Opposition proceedings are brought before the Trademark Trial and Appeal Board (TTAB) at the USPTO.  The second method involves a trademark owner brining suit in federal court for trademark infringement.

In the recently decided U.S. Supreme Court case of B&B Hardware v. Hargis Industries, Inc., the Court found that decisions of the TTAB may serve as the basis for infringement decisions in a Federal Court and that likelihood of confusion standards are essentially the same for both registration and infringement.  The Plaintiff, B&B Hardware, successfully opposed the registration of the Defendant’s, Hargis Industries, Inc., trademark application through the TTAB.  The TTAB decided that the Defendant’s mark (SEALTITE) used for metal screws was confusingly similar to the Plaintiff’s registered trademark (SEALTIGHT) used for metal fasteners.  As a result, the Defendant’s trademark application for SEALTITE was refused.

While the opposition proceeding with the TTAB was pending, the Plaintiff had simultaneously filed suit against the Defendant in Federal Court for trademark infringement of the SEALTIGHT trademark.  The U.S. Supreme Court determined that the decision by the TTAB to refuse registration of the Defendant’s trademark application for SEALTITE is conclusive in a subsequent action between the parties.  Thus, the parties in this case were prevented from re-litigating the factual issues that were already decided by the TTAB.

As a result of this decision, opposition proceedings and TTAB decisions at the USPTO will likely have increased importance and significance and will be more actively litigated.  Therefore, it is critical to make sure that you consult with an experienced trademark attorney prior to filing an opposition or defending against an opposition initiated against you.