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

Supreme Court of the United States

December 2, 2014, Argued; March 24, 2015, Decided

No. 13-352

Opinion

 [*140]   [2048]  JUSTICE Alito delivered the opinion of the Court.

Sometimes two different tribunals are asked to decide the same issue. When that happens, the decision of the first tribunal usually must be followed by the second, at least if the issue is really the same. Allowing the same issue to be decided more than once wastes litigants’ resources and adjudicators’ time, and it  [**1299]  encourages parties who lose before one tribunal to shop around for another. The doctrine of collateral estoppel or issue preclusion is designed to prevent this from occurring.

This case concerns the application of issue preclusion in the context of trademark law. Petitioner, B&B Hardware, [*141]  Inc. (B&B), and respondent Hargis Industries, Inc. (Hargis or respondent), both use similar trademarks; B&B owns SEALTIGHT while Hargis owns SEALTITE. Under the Lanham Act, 60 Stat. 427, as amended, 15 U. S. C. §1051 et seq., an applicant can seek to register a trademark through an administrative process within the United States Patent and Trademark Office (PTO). But if another party believes that the PTO should not register a mark because it is too similar [****6]  to its own, that party can oppose registration before the Trademark Trial and Appeal Board (TTAB or Board). Here, Hargis tried to register the mark SEALTITE, but B&B opposed SEALTITE’s registration. After a lengthy proceeding, the TTAB agreed with B&B that SEALTITE should not be registered.

In addition to permitting a party to object to the registration of a mark, the Lanham Act allows a mark owner to sue for trademark infringement. Both a registration proceeding and a suit for trademark infringement, more-over, can occur at the same time. In this case, while the TTAB was deciding whether SEALTITE should be registered, B&B and Hargis  [***232]  were also litigating the SEALTIGHT versus SEALTITE dispute in federal court. In both registration proceedings and infringement litigation, the tribunal asks whether a likelihood of confusion exists between the mark sought to be protected (here, SEALTIGHT) and the other mark (SEALTITE).

The question before this Court is whether the District Court in this case should have applied issue preclusion to the TTAB’s decision that SEALTITE is confusingly similar to SEALTIGHT. Here, the Eighth Circuit rejected issue preclusion for reasons that would make it difficult for the [****7]  doctrine ever to apply in trademark disputes. We disagree with that narrow understanding of issue preclusion. Instead, consistent with principles of law that apply in innumerable contexts, we hold that a court should give preclusive effect to TTAB decisions if the ordinary elements of issue  [*142]  preclusion are met. We therefore reverse the judgment of the Eighth Circuit and remand for further proceedings.

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575 U.S. 138 *; 135 S. Ct. 1293 **; 191 L. Ed. 2d 222 ***; 2015 U.S. LEXIS 2119 ****; 113 U.S.P.Q.2D (BNA) 2045; 83 U.S.L.W. 4176; 25 Fla. L. Weekly Fed. S 146

B&B HARDWARE, INC., Petitioner v. HARGIS INDUSTRIES, INC., dba SEALTITE BUILDING FASTENERS, dba EAST TEXAS FASTENERS et al.

Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.

Subsequent History: On remand at, Decision reached on appeal by, Remanded by B & B Hardware, Inc. v. Hargis Indus., 800 F.3d 427, 2015 U.S. App. LEXIS 15022 (8th Cir. Ark., Aug. 25, 2015)

Prior History:  [****1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE EIGHTH CIRCUIT

B & B Hardware, Inc. v. Hargis Indus., 716 F.3d 1020, 2013 U.S. App. LEXIS 8926 (2013)

Disposition: Reversed and remanded.

CORE TERMS

registration, issue preclusion, preclusion, decisions, trademark, courts, preclusive effect, registered, district court, infringement, Lanham Act, marks, usages, likelihood of confusion, tribunal, administrative agency, rights, parties, res judicata, proceedings, cases, federal court, disputes, factors, fasteners, judicial review, common law, adjudicate, de novo review, determinations

Business & Corporate Compliance, Trademark Law, Trademark Cancellation & Establishment, Registration Procedures, Trademark Law, Registration Procedures, Federal Registration, Degree of Protection, Causes of Action Involving Trademarks, Infringement Actions, Determinations, Civil Procedure, Preclusion of Judgments, Estoppel, Collateral Estoppel, Administrative Law, Agency Adjudication, Decisions, Constitutional Law, Bill of Rights, Fundamental Rights, Trial by Jury in Civil Actions, Defenses, Estoppel, Judicial Review, Reviewability, Exhaustion of Remedies, General Overview, Likelihood of Confusion, Consumer Confusion