When the Trademark Trial and Appeal Board (TTAB) refuses to register a mark based on a finding of likelihood of confusion, does that finding have a preclusive effect in a subsequent trademark infringement action in federal court? In a recent decision, a divided panel of the U.S. Court of Appeals for the Eighth Circuit not only denied preclusive effect to a TTAB finding, but held that the district court properly excluded the finding from evidence.

B&B Hardware, owner of the mark SEALTIGHT, successfully opposed Hargis Industries’ attempt to register the mark SEALTITE. The TTAB found that there was a likelihood of confusion between the two marks. When B&B subsequently brought a trademark infringement suit in federal court, however, the judge declined to admit the TTAB finding into evidence and refused B&B’s request that the decision be given preclusive effect, or any deference whatsoever. A jury found that there was no likelihood of confusion between the marks.

The Eighth Circuit panel affirmed the district court’s ruling. First, because the TTAB is not an Article III court, the district court was not required to give the TTAB decision preclusive effect. Second, the factors the TTAB considers for trademark registration purposes differed from the factors considered under the Eighth Circuit’s likelihood-of-confusion test for trademark infringement. In particular, the TTAB test places greater emphasis on the appearance and sound of the marks, while the Eighth Circuit test places greater emphasis on marketplace usage of the marks and products. Third, the burden of persuasion was reversed.  At the TTAB, Hargis had the burden; in the infringement action, B&B had the burden. For these reasons, the Eighth Circuit agreed with the district judge that the TTAB’s ultimate conclusion was not entitled to preclusive effect and had minimal probative value, would have been misleading and confusing to the jury, and was properly excluded from evidence.

The dissenting judge would have given preclusive effect to the TTAB’s determination of likelihood of confusion, at least in cases where the TTAB had considered the marks in a marketplace context. The different analytical approach taken by the TTAB was not enough, according to the dissent, to justify re-litigation of the issue.

The case is B&B Hardware, Inc. v. Hargis Industries, 2013 WL 1810614, 2013 U.S. App. LEXIS 8926 (8th Cir. May 1, 2013).