On July 1, 2014, the United States Supreme Court granted certiorari in B&B Hardware, Inc., v. Hargis Industries, Inc., to decide what level of deference, if any, federal courts should give to likelihood of confusion findings by the USPTO’s Trademark Trial and Appeal Board (TTAB).

In B&B Hardware, defendant Hargis applied to register SEALTITE for construction fasteners and sheeting screws for use in the metal building industry.  B&B, owner of a federal trademark registration for SEALTIGHT, opposed the registration of Hargis’ SEALTITE application in the TTAB.  The TTAB found that there was a likelihood of confusion between the marks and refused registration of Hargis’ SEALTITE application.

B&B did not experience the same success, however, when it filed suit in federal court against Hargis for trademark infringement and was left with a jury finding that there was no likelihood of confusion between the two marks.  B&B appealed the judgment arguing that the TTAB’s decision on confusion should have been submitted into evidence.  The Eighth Circuit held that “[t]he simple fact that the TTAB addressed the concept of ‘likelihood of confusion’ when dealing with Hargis’s attempt to register the mark does not necessarily equate to a determination of ‘likelihood of confusion’ for purposes of trademark infringement.”  B&B Hardware, Inc., v. Hargis Industries, Inc., 716 F.3d 1020, 1025 (8th Cir. 2013).  The Eighth Circuit also “reject[ed] B&B’s argument that the TTAB’s factual findings from a trademark registration case are entitled to deference by the district court.”  Id. at 1026.

As B&B Hardware shows, the Eighth Circuit does not give deference to TTAB decisions.  The Fifth and Eleventh Circuits afford TTAB decisions a heavy presumption of correctness, but no more.  The Second, Third, and Seventh Circuits have all previously determined that TTAB decisions do have a preclusive effect in trademark infringement suits.

The Supreme Court’s decision in B&B Hardware is expected to resolve the split among the circuits concerning what level of deference, if any, federal courts should give to TTAB orders on a likelihood of confusion.