B&B Hardware, Inc. v. Hargis Industries, Inc.

Summary

The Supreme Court held that a decision of the Trademark Trial and Appeal Board may have issue-preclusive effect in subsequent trademark infringement litigation when the ordinary elements of issue preclusion are satisfied. The Court rejected categorical rules based on differences between TTAB and district-court procedures, likelihood-of-confusion factors, or burdens of persuasion. It reversed the Eighth Circuit’s judgment and remanded for further proceedings.

Holdings

1. An agency decision can have issue-preclusive effect when the agency acts in a judicial capacity, resolves a disputed issue properly before it, and the ordinary elements and exceptions of issue preclusion are satisfied.
2. The Lanham Act does not categorically bar giving preclusive effect to TTAB decisions when the ordinary elements of issue preclusion are met.
3. The same likelihood-of-confusion standard applies to trademark registration and infringement, even though the proceedings may use different but not fundamentally different factors.
4. Issue preclusion applies when the usages adjudicated by the TTAB are materially the same as the usages before the district court, provided the ordinary elements of issue preclusion are otherwise satisfied.
5. Differences between TTAB and district-court procedures do not categorically defeat issue preclusion; the relevant inquiry is whether the prior procedures were fundamentally poor, cursory, or unfair.

Questions Presented

1. Whether an agency decision, including a TTAB decision, can have issue-preclusive effect in a later federal court action.
2. Whether the Lanham Act precludes giving a TTAB decision preclusive effect.
3. Whether TTAB registration proceedings and federal trademark infringement litigation apply the same likelihood-of-confusion standard.
4. Whether differences between TTAB and district-court procedures categorically prevent issue preclusion.
5. Whether the TTAB decision could have preclusive effect when the usages adjudicated by the TTAB were materially the same as those before the district court.

Disposition

reversed_and_remanded