As first reported on August 5, 2014, the Supreme Court agreed to hear B&B Hardware Inc. v. Hargis Industries, Inc. to decide if Trademark Trial and Appeal Board ("TTAB") decisions should preclude trademark infringement actions. Oral arguments are scheduled for December 2, 2014. 

In recent developments, the Supreme Court received "friend of the court" briefs from the government and three major organizations including the Solicitor General on Behalf of the United States ("SG"), the American Intellectual Property Law Association ("AIPLA"), the Intellectual Property Law Association of Chicago ("IPLAC") and the International Trademark Association ("INTA"). The briefs are available on the American Bar Association website and arguments are summarized below:

SG: The SG contends that "issue preclusion depends on whether the usages considered by the Board materially differed from the usages at issue in the infringement action" and thus, concluded that the TTAB's determination is likely entitled to preclusive effect. 

AIPLA: The AIPLA contends that TTAB decisions should only have preclusive effect in appropriate and narrow circumstances. The AIPLA set forth the following test for issue preclusion and stated that the following four factors must be met:

  • The issues in both proceedings must be identical 
  • The issue in the prior proceeding must have actually been litigated and decided
  • There must have been a full and fair opportunity for litigation in the prior proceeding and 
  • The issue previously litigated must have been necessary to support a valid and final judgment on the merits. 

The AIPLA agreed with the United States' position, but asked the Court to clarify the appropriate test to determine when a TTAB decision should have a preclusive effect.

IPLAC: The IPLAC contends that: 

  • A significant dichotomy exists in the nature of cases resolved by the TTAB 
  • TTAB cases routinely function as typical litigation cases and 
  • Since the TTAB does not have juries, the Court must decide what to do about the Seventh Amendment right to a jury 

INTA: INTA contends that: 

  • TTAB decisions should not have a preclusive effect in trademarks infringement actions
  • District courts should determine, on a case-by-case basis, whether the TTAB's determination should be given any deference
  • A party should not be prevented from offering additional evidence that could lead to a different result than the TTAB proceeding 

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