In a case that is certain to have far-reaching implications for trademark practitioners, and is contrary to the numerous amicus briefs filed on behalf of multiple intellectual property organizations, the U.S. Supreme Court has issued its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. and resolved the question of whether a Trademark Trial and Appeal Board determination on the issue of likelihood of confusion should have preclusive effect on later district court infringement litigation. In a 7-2 decision penned by Justice Alito, the Supreme Court held that TTAB decisions are entitled to preclusive effect so long as the ordinary elements of issue preclusion are met. The Court noted the many similarities between the likelihood of confusion factors considered by the TTAB and the federal courts in their respective proceedings, the many procedural similarities, including the fact that both are governed by the Federal Rules of Civil Procedure and Federal Rules of Evidence, and the fact that both allow discovery and depositions. The Court rejected the argument that issue preclusion should not apply because the stakes for registration are lower than for infringement, noting that the benefits of registration are “substantial” and that “there is good reason to think that both sides will take the matter seriously.”
