B&B Hardware, Inc. v. Hargis Industries, Inc., 912 F.3d 445

B&B Hardware (maker of SEALTIGHT) sued Hargis Industries (maker of SEALTITE) for trademark infringement and related claims; this dispute spanned ~two decades and multiple appeals.
A 2000 jury found SEALTIGHT merely descriptive (no secondary meaning); B&B later filed a §15 incontestability affidavit in 2006, which the PTO accepted, creating a presumption of secondary meaning.
B&B sued Hargis again after obtaining incontestability; litigation produced mixed results through several appeals, including a Supreme Court decision holding a TTAB likelihood-of-confusion ruling could have preclusive effect.
At the remanded trial, the jury found Hargis infringed but not willfully, awarded no profits to B&B, and found that B&B committed fraud on the PTO by not disclosing the 2000 adverse verdict; the district court held the fraud defeat ed incontestability and then applied collateral estoppel.
The district court entered judgment for Hargis, denied disgorgement of profits, and denied Hargis’s request for attorneys’ fees (but awarded taxable costs); both parties appealed.

Issue	B&B's Argument	Hargis's Argument	Held
Jury finding of fraud on the PTO	Non-disclosure was not willful; 2000 verdict not a final adverse decision; relied on counsel	Brought evidence that B&B knowingly withheld the 2000 adverse verdict, which a reasonable PTO examiner would consider material	No plain error; jury could disbelieve B&B’s testimony; fraud finding affirmed
Effect of fraud on incontestability and collateral estoppel	Even if incontestability was later challenged, the 2000 court lacked jurisdiction to decide secondary meaning	Fraud vitiated §15 incontestability; without incontestability B&B was precluded from relitigating secondary meaning by collateral estoppel	Fraud voided incontestability; collateral estoppel applies—B&B barred from relitigating secondary meaning
Disgorgement of Hargis’s profits under §1117(a)	Profits should be disgorged despite jury awarding none; district court abused discretion	No willfulness, no lost sales, no misrepresentation to consumers—equitable factors weigh against disgorgement	Because infringement claims barred by collateral estoppel and equities favor Hargis, refusing disgorgement affirmed
Award of attorney fees to prevailing defendant	N/A (B&B sought relief on other points)	Hargis sought fees, non-taxable costs, and sanctions arguing the case was exceptional	District court did not abuse discretion: litigation not "exceptional" under §1117(a); fees denied (taxable costs awarded)

B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015) (Supreme Court decision on preclusive effect of TTAB rulings)
B&B Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383 (8th Cir. 2009) (incontestability as intervening factual change precluding preclusion)
Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559 (5th Cir. 2005) (issue preclusion depends on intervening factual change)
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) (general principles cited re: trademark standing and related doctrines)
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (standard for exceptional cases and fee-shifting)
Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (descriptive marks and requirement of secondary meaning)
Masters v. UHS of Del., Inc., 631 F.3d 464 (8th Cir. 2011) (district court discretion on awarding or adjusting profits under §1117)