B&B Hardware, Inc. v. Hargis Industries, Inc.
135 S. Ct. 1293
| SCOTUS | 2015Background
- B & B Hardware (SEALTIGHT) and Hargis Industries (SEALTITE) dispute whether SEALTITE should be registered because of a likelihood of confusion with SEALTIGHT.
- Hargis applied to register SEALTITE; B & B opposed before the Trademark Trial and Appeal Board (TTAB). The TTAB concluded SEALTITE should not be registered.
- While the TTAB opposition was pending/decided, B & B sued Hargis in federal court for trademark infringement; the district jury found no likelihood of confusion.
- B & B argued the district court should apply issue preclusion (collateral estoppel) to the TTAB decision; the district court and then the Eighth Circuit rejected preclusion for various reasons.
- The Supreme Court granted certiorari to decide whether TTAB determinations on likelihood of confusion can have preclusive effect in later district-court infringement suits when ordinary collateral-estoppel elements are met.
- The Supreme Court reversed the Eighth Circuit: TTAB decisions may have issue-preclusive effect where the usual elements of collateral estoppel are satisfied and the TTAB adjudicated the same, materially identical usages/issue.
Issues
| Issue | Plaintiff's Argument (B & B) | Defendant's Argument (Hargis) | Held |
|---|---|---|---|
| Can an administrative (TTAB) decision ever ground issue preclusion in later Article III litigation? | Agency adjudications can have preclusive effect when ordinary preclusion elements are met. | TTAB is not an Article III court; giving preclusive effect raises Seventh Amendment and Article III concerns. | Yes; agency decisions can ground issue preclusion absent a statutory or constitutional bar. Courts have long applied administrative preclusion. |
| Does the Lanham Act bar preclusive effect from TTAB registration decisions? | The Lanham Act contains no clear bar; Congress provided de novo judicial review, implying TTAB finality can have preclusive effect in other proceedings when ordinary elements are met. | The Act’s structure (de novo review; limited TTAB jurisdiction) shows Congress did not intend TTAB findings to be preclusive. | No categorical bar in the Lanham Act. Preclusion applies case-by-case when ordinary elements are satisfied and no statutory purpose to the contrary is evident. |
| Do differences in likelihood-of-confusion tests, usages considered, burdens, or procedures defeat preclusion categorically? | Minor differences in factor lists or procedures do not defeat preclusion; material identity of the issues/usages is the key. | TTAB uses different factors, narrower scope of usages, different procedures (no live testimony), and sometimes different burdens; these differences preclude preclusion. | No categorical rule; preclusion applies when the TTAB decided the same, material usage/issues and the prior proceedings were sufficiently fair and adequate. Procedural differences may defeat preclusion only in particular cases showing unfairness. |
| Are stakes (importance of proceeding) or burden allocation reasons to refuse preclusion here? | Registration confers substantial rights; parties litigate registration seriously, so stakes/burden differences do not categorically bar preclusion. | Registration is narrower and lower-stakes; many registrations won’t justify preclusion. | Stakes/burden concerns may make preclusion inappropriate in some cases, but not categorically; ordinary collateral-estoppel exceptions cover such situations. |
Key Cases Cited
- Cromwell v. County of Sac, 94 U.S. 351 (establishes finality of decided issues between parties)
- Astoria Fed. Sav. & Loan Assn. v. Solimino, 501 U.S. 104 (discusses administrative preclusion and presumption in absence of contrary congressional intent)
- University of Tenn. v. Elliott, 478 U.S. 788 (administrative determinations can have preclusive effect when acting in judicial capacity)
- United States v. Utah Constr. & Mining Co., 384 U.S. 394 (discusses res judicata and administrative factfinding in disputes clauses)
- Parklane Hosiery Co. v. Shore, 439 U.S. 322 (issue preclusion can apply even if initial proceeding had no jury)
- Montana v. United States, 440 U.S. 147 (quality/extensiveness of prior procedures relevant to preclusion)
- Smith v. Bayer Corp., 564 U.S. 299 (minor variations in application of same legal standard do not defeat preclusion)