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Supreme Court Clarifies the Power of the Patent and Trademark Office

Although trademark law affects businesses every day, it has the reputation for being something of a niche area of law that many lawyers do not involve themselves with. Consequently, trademark issues rarely end up going before the U.S. Supreme Court. However, it happened twice this term. One of the cases, B&B Hardware v. Hargis Industries, deals with whether proceedings before the Trademark Trials and Appeals Board (TTAB) can preclude other courts from issuing conflicting rulings on the same issues. Yes, that sounds like a jargon-filled procedural point, but it has important implications for how closely business owners should monitor their trademark rights and those of potential competitors.

TTAB Proceedings

TTAB proceedings are legal processes that take place before a board of examiners at the U.S. Patent and Trademark Office (PTO). The process in B&B Hardware was an “opposition,” meaning that Hargis Industries had attempted to register a mark, SEALTITE, and B&B Hardware was petitioning the TTAB not to grant the mark because it was confusingly similar to B&B’s own mark of SEALTIGHT. Importantly, this opposition was part of a much larger legal battle over the marks that had been going on for decades.

B&B prevailed at the TTAB, which ruled that SEALTITE was confusingly similar, and refused to issue the registration. This took Hargis to court, seeking to argue that same question again in the context of trademark infringement. While before the court, B&B argued that the question had already been settled by the TTAB and that the court’s taking it up again would not be proper. The district court disagreed, holding that the question of whether the marks were confusing for purposes of determining infringement was different enough from the question of whether the marks were confusing for the purposes of registration that they should each be handled independently. Eventually, the appeals made their way to the Supreme Court.

The Court’s Decision

The Supreme Court ultimately sided 7-2 in favor of B&B, holding that the TTAB decisions could bar a court from taking up the same issues in another proceeding. The Court was sensitive to the notion that the TTAB comes at the issue of confusion using a different standard than a court would in an ordinary lawsuit, but the fact that the overall questions were so similar resulted in the Court’s decision that asking them again would be duplicative.

Why This Matters

While this decision is important to trademark attorneys for a variety of strategic reasons about how to approach a case, it also matters to markholders themselves. TTAB oppositions were already cheaper and faster than dealing with trademark issues in a full-fledged court, but they often acted as a mere precursor to a court battle where they had little effect. Now, these TTAB decisions can prevent a court from reexamining the issue of confusion, making them more powerful than before. However, the opportunity to pursue such oppositions requires markholders to pay attention to the trademarks of competitors, and to move quickly to oppose them before their registration moves through the PTO.

Trademark law is a complex area with many of these types of tactical decisions. If you are considering a trademark lawsuit or have been accused of trademark infringement, contact a West Palm Beach trademark attorney at Pike & Lustig, LLP today.

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