B & B Hardware, Inc. v. Hargis Industries, Inc.
716 F.3d 1020
8th Cir.2013Background
- B&B and Hargis dispute trademark rights between Sealtight and Sealtite; TTAB denied Hargis registration in 2007 for likelihood of confusion.
- On remand, district court held a seven-day jury trial on B&B's trademark infringement/unfair competition claim and Hargis's false advertising and false designation of origin counterclaims.
- Jury verdict favored Hargis on counterclaims and against B&B on infringement; district court awarded attorney fees and costs to Hargis.
- B&B appeals: (i) TTAB preclusion on likelihood of confusion; (ii) TTAB findings' deference/admission; (iii) attorney-fee award under the Lanham Act.
- This court affirms the district court on all but the attorney-fee amount, and remands for recalculation of fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether TTAB likelihood of confusion should be given collateral estoppel effect | B&B argues TTAB decision precludes infringement. | Hargis argues TTAB decision not binding for infringement context. | Collateral estoppel does not apply; TTAB did not decide same issues as infringement. |
| Whether TTAB findings deserve deference in infringement action | B&B seeks deference to TTAB findings. | Hargis contends TTAB findings are not controlling in infringement case. | No deference owed; TTAB findings not controlling for infringement. |
| Whether TTAB decision should have been admitted as evidence | B&B contends TTAB decision should be admitted for jury consideration. | Hargis argues admission would mislead and confuse the jury. | District court did not abuse discretion; excluding TTAB decision was proper. |
| Whether attorney-fee award under the Lanham Act was appropriate | B&B challenges the fee award as improper beyond the prior appeal context. | Hargis maintains fees were warranted due to groundless, unreasonable conduct. | Fees affirmed overall; remanded to deduct Hargis's fees incurred on the prior appeal. |
Key Cases Cited
- Flavor Corp. of Am. v. Kemin Indus., Inc., 493 F.2d 275 (8th Cir. 1974) (determines collateral estoppel limits for TTAB likelihood of confusion)
- SquirtCo v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980) (six-factor test for likelihood of confusion in infringement actions)
- Lane v. Sullivan, 900 F.2d 1247 (8th Cir. 1990) (burden of persuasion considerations for collateral estoppel)
- Univ. of Tenn. v. Elliott, 478 U.S. 788 (1986) (administrative factfinding and repose under collateral estoppel)
- Levy v. Kosher Overseers Ass’n of Am., Inc., 104 F.3d 38 (2d Cir. 1997) (collateral estoppel in trademark context for marketplace context)
- In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973) (DuPont factors for likelihood of confusion in registration context)