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B&B Hardware, Inc. v. Hargis Indus. - 575 U.S. 138, 135 S. Ct. 1293 (2015)

Rule:

Under the Lanham Act, 15 U.S.C.S. § 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 to its own, that party can oppose registration before the Trademark Trial and Appeal Board.

Facts:

Petitioner Hardware opposed the trademark registration of Respondent for Sealtite as it was too similar to its Sealtight trademark. The Trademark Trial and Appeal Board (TTAB) concluded that SEALTITE should not be registered because of the likelihood of confusion. The respondent did not oppose the TTAB decision. Petitioner subsequently filed an infringement suit in which it argued that respondent was already precluded from contesting because of the TTAB’s decision. The district court disagreed.

Issue:

Was the respondent precluded from contesting a trademark infringement suit due to the fact that it failed to question the findings of the Trademark Trial and Appeal Board?

Answer:

No.

Conclusion:

The court affirmed the ruling of the district court, holding that preclusion was unwarranted because the TTAB and the court used different  factors to evaluate likelihood of confusion, the TTAB placed too much emphasis on the appearance and sound of the two marks, and petitioner bore the burden of persuasion before the TTAB while B&B bore it before the District Court.

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