Just two days after the Supreme Court’s decision in B&B Hardware v. Hargis Industries, Inc. was released, the TTAB refused to consider marketplace use when affirming a refusal to register the mark HUGHES FURNITURE shown below:

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The court’s decision is especially relevant given the holding in B&B Hardware that where the TTAB does not consider marketplace usage of the marks, the Board’s decision will not have preclusive effect in later district court infringement proceedings.

The PTO had refused registration of the HUGHES FURNITURE mark based on a likelihood of confusion with a prior registration for BRADLEY HUGHES for furniture. The applicant argued that the registrant’s goods were distinct because the BRADLEY HUGHES mark was used only for luxury, artisan-made furniture, whereas its goods appealed to a broader segment of the public. However, the Board found the goods “legally identical” based on the parties’ identifications. Resorting to longstanding precedent, the Board held that differences in marketplace realities had no legal significance where the parties’ identifications were not so restricted: “Notwithstanding Applicant’s argument and evidence regarding the actual scope of its own and the cited Registrant’s commercial use of its mark, we may not limit, by resort to extrinsic evidence, the scope of goods as identified in the cited registration or in the subject application.” The Board accordingly gave no weight to evidence showing that the parties targeted different market segments.

The Board’s decision is significant as it reaffirms that even where parties may submit evidence of marketplace use, the Board will not take such evidence into account unless it is relevant to the descriptions of the parties’ goods and services. Under B&B Hardware, such cases should not be entitled to preclusive effect.