The U.S. Patent and Trademark Office’s (PTO) Trademark Trial and Appeal Board (TTAB) offers the opportunity to prevent registration of a trademark through an opposition proceeding, or to petition to cancel a trademark that has already registered. A recent 8th Circuit decision evidences the district court’s lack of deference to TTAB decisions, offering an unsuccessful party in a TTAB proceeding a second chance. B&B Hardware, Inc. v. Hargis Industries, Inc.
B&B Hardware began using the mark SEALTIGHT for fasteners in 1990 and registered the mark in 1993. Sealtite Building Fasteners began using the mark SEALTITE in 1992, first applying to register it with the PTO in 1996. Registration was refused based upon likelihood of confusion with B&B’s mark.
Judge Colloton, dissenting, disagreed arguing that the TTAB decision finding likelihood of confusion between the two marks should be given preclusive effect. He applied the Supreme Court’s guidance that “[w]hen an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate, the courts have not hesitated to apply res judicata to enforce repose.” Univ. Of Tenn. v. Elliott, 478 U.S. 788, 798 (1986). Even where the exact factors considered for purposes of likelihood of confusion varied modestly, Judge Colloton’s dissenting view would still give effect to the earlier decision, citing Georgia-Pacific Consumer Prods. v. Four-U (applying issue preclusion based upon 8th Cir. test using different factors to determine likelihood of confusion).
Some courts have applied reasoning similar to Judge Colloton’s dissent and give full preclusive effect to the facts decided in the TTAB proceeding. See, e.g., Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc., (affirming district court’s application of issue preclusion to dismiss trademark infringement complaint). Others follow the same reasoning as the 8th Circuit and give no deference to the TTAB decision. American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 9 (5th Cir. 1974) (finding that the legislature did not intend to apply collateral estoppels to TTAB decisions). The 2nd Circuit acknowledges that a TTAB proceeding could have preclusive effect where the board has “indeed compared conflicting marks in their entire marketplace context, the factual basis for the likelihood of confusion issue is the same, the issues are the same, and collateral estoppels is appropriate,” but finds that the registration proceeding disregards actual usage so should not be followed in the infringement context. Levy v. Kosher Overseers Ass’n of America, Inc.