Dan Donnellon Discusses Trademark Issue Preclusion in Latest "Litigation Lesson"
Cincinnati Office Managing Attorney Daniel J. Donnellon recently continued his "Litigation Lesson" video series, which you can watch for free here, with a short discussion on United States Supreme Court case B&B Hardware, Inc.v. Hargis Industries.
About the Case
Both B&B Hardware and Hargis Industries had been using the respective product names “Sealtight” and “Sealtite” for fastener products. B&B’s “Sealtight” screws were used in high-tech products including the Space Shuttle, while Hargis’ “Sealtite” was intended to protect from the elements.
Due to legal run-ins with B&B, Hargis attempted to trademark their “Sealtite” screws in 2003. B&B filed an objection and Hargis’ application was denied by the Trademark Trial and Appeals Board (TTAB) on the grounds of possible confusion in the marketplace.
Hargis Industries filed a counter-claim that B&B had manufactured evidence and that there existed no confusion between the products in the marketplace because of the products’ different applications.
The jury held that there was not confusion in the marketplace because of the products’ different applications and B&B was found to have manufactured evidence. They were also forced to pay attorney fees. B&B appealed the decision on the basis that the TTAB ruled that there would be confusion and that the examination of the product’s application should never have been considered by a jury.
In the latest Litigation Lesson, Donnellon points out that, unlike Federal Courts, the TTAB does have the ability to consider the product’s application when determining the validity of a trademark. The question currently before the Supreme Court will decide the parameters of evidence that should be considered in trademark disputes. Donnellon advises trademark applicants and attorneys alike to monitor the case which could drastically change the scope of evidence that the TTAB considers.
Coincidentally, the same day Donnellon published the Litigation Lesson on the YouTube channel of the same name, the Supreme Court issued its decision. Look for another Litigation Lesson from Donnellon describing the potential impact of the case for trademark owner litigating infringement.