Issue Preclusion in Trademark Litigation: Implications of B&B Hardware

Navigating Preclusive Effect and Rethinking TTAB Strategy in Likelihood of Confusion Cases and Beyond

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, May 12, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to trademark counsel on the implications of the B&B Hardware decision and its impact on trademark enforcement and strategy at the TTAB.

Description

On Mar. 24, 2015, in B&B Hardware v. Hargis Indus., the Supreme Court held for the first time that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.” This decision has far-reaching implications.

Since preclusion depends in part on whether the TTAB considered evidence of marketplace usage, the decision may give trademark counsel some control over the preclusive effect of a TTAB decision. By choosing to present or withhold such evidence to or from the TTAB, litigants may be able to influence the ability to bring infringement actions in federal court.

The decision may increase the importance of de novo reviews of TTAB decisions in federal district court under Section 21(b) of the Lanham Act, which the Supreme Court expressly exempted from its ruling. This landmark ruling will change strategies used by trademark counsel when seeking to protect a brand and their approaches to TTAB proceedings.

Listen as our authoritative panel of trademark attorneys provides an overview of the B&B Hardware decision, discusses its likely impact, examines the effect on strategy at the TTAB, and provides strategic guidance for practitioners.

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Outline

  1. Overview of B&B Hardware Inc. v. Hargis Industries Inc.
  2. Impact of the B&B Hardware decision
    1. Trademark enforcement before B&B Hardware
    2. Trademark enforcement after B&B Hardware
  3. Implications for practitioners in light of B&B Hardware
    1. Strategy for TTAB proceedings
    2. Evidence of marketplace usage
    3. Impact on TTAB proceedings and litigation in federal court
    4. Impact on appeals of TTAB decisions to federal district courts or the Federal Circuit

Benefits

The panel will review these and other key issues:

  • When are TTAB decisions preclusive? What conditions must be met?
  • What are the potential implications for consideration of marketplace usage?
  • How will the decision impact trademark counsel’s strategy for TTAB proceedings?

Faculty

Roger N. Behle, Jr.
Roger N. Behle, Jr.

Partner
Foley Bezek Behle & Curtis

Mr. Behle heads the firm’s intellectual property and entertainment law departments. He has more than 20...  |  Read More

Baird, Stephen
Stephen R. Baird

Shareholder
Winthrop & Weinstine

Mr. Baird heads the Intellectual Property and Trademark and Brand Management Practice Groups, and his practice...  |  Read More

Uli Widmaier
Uli Widmaier

Partner
Pattishall McAuliffe Newbury Hilliard & Geraldson

Mr. Widmaier has been charged with protecting some of the world's most identified brands. He works with clients to...  |  Read More

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