US Supreme Court Decision Means That TTAB Proceedings Just Got More Important

On March 24, the U.S. Supreme Court issued its decision in B&B Hardware v. Hargis Industries, ruling that Trademark Trial and Appeal Board (TTAB) decisions on the issue of likelihood-of-confusion can have preclusive effect in infringement litigation. The ruling reversed a previous decision by the Eighth Circuit which had found that a TTAB ruling should not be given preclusive effect or deference in later court proceedings. However, the Supreme Court held that TTAB decisions are entitled to preclusive effect so long as the ordinary elements of issue preclusion are met.

World Trademark Review contacted Finnegan partner Danny Awdeh for his insight on the Court’s decision. Awdeh believes that the decision raises the stakes for trademark litigants, who must now think differently about TTAB proceedings. He says, “Until now, the TTAB has primarily been viewed as a forum for resolving registration disputes. Now that the Supreme Court has recognized the potential preclusive effect of the TTAB’s likelihood-of-confusion determination in infringement actions before the district courts, litigants must adopt a broader perspective. While the Supreme Court acknowledged that many cases may not ultimately satisfy the ordinary elements of issue preclusion, the decision opens the door where the trademark uses adjudicated before the TTAB are materially the same as those before the district court. With more at stake, litigants must re-think where to file their disputes in the first instance and may find more reason to appeal TTAB decisions.”