Supreme Court Opinion on Preclusive Effect of TTAB’s Registration Decisions Has Important Implications for Trademark Owners
By STEPHEN B. KINNAIRD, ROBERT L. SHERMAN, IGOR V. TIMOFEYEV, SEAN D. UNGER & LISA Y. LEUNG
On March 24, 2015, the Supreme Court issued an important decision—B&B Hardware, Inc. v. Hargis Indus., Inc., 83 U.S.L.W. 4176, 2015 BL 80363 (U.S. 2015)—clarifying issue preclusion in the trademark context.
The court held that a Trademark Trial and Appeal Board decision should be given preclusive effect when the trademark usages adjudicated by the TTAB are materially the same as those before the district court, provided the other ordinary elements of issue preclusion are met.
The court’s holding that TTAB decisions can be given preclusive effect in federal courts has important implications and lessons for practitioners, and trademark owners should consider it carefully and structure their litigation strategy accordingly. The decision may alter the traditional approach of having two bites at the apple—one at the TTAB and one at the district court. Now, the first bite may be the only one.
Reproduced with permission from The United States Law Week, 83 U.S.L.W. 1524, 04/14/2015. Copyright 2015 by The Bureau of National Affairs, Inc. (800-372-1033)