In the past two months, the U.S. Supreme Court handed down a trademark decision addressing when a Trademark Trial and Appeal Board decision regarding likelihood of confusion can have issue-preclusive effect in an infringement lawsuit, holding that TTAB decisions can be issue preclusive if the usages for which registration is sought before the TTAB are materially the same as the commercial usages at issue in the lawsuit. We also address appellate decisions regarding reasonable royalty rates and the “entire market value” rule in generic-pharmaceutical cases, application of the new test for patent indefiniteness, and whether the Copyright Act preempts state law claims.

Trademark: Issue Preclusion

The Lanham Act creates at least two procedural mechanisms to protect trademarks: registration of the mark with the Patent and Trademark Office, and infringement suits in federal court. Under the first mechanism, when a PTO examiner believes that registration of a mark is warranted, the mark is published in the PTO's Official Gazette, and anyone who faces harm from the registration may file an opposition proceeding, to be decided by the Trademark Trial and Appeal Board. The two mechanisms often occur in parallel, with simultaneous TTAB opposition proceedings and district-court infringement suits. That raises the question whether a decision of the TTAB can have issue-preclusive effect in an infringement suit.

On March 24, in B&B Hardware v. Hargis Industries, — U.S. —, 135 S.Ct. 1293 (2015), the Supreme Court held that TTAB decisions can have preclusive effect, where the ordinary elements of issue preclusion are met and where the TTAB considers usages of the marks that are materially the same as the usages at issue in the infringement suit. The decision is likely to affect how mark owners decide whether and when to bring infringement suits, and how mark opponents decide whether and when to challenge registration.

B&B owned and registered the mark “SEALTIGHT” for fasteners—self-sealing nuts, bolts, screws, etc.—for use in the aerospace industry. Hargis sought to register “SEALTITE” for metal screws used in the manufacture of buildings. The two companies battled in court and before the TTAB for nearly 20 years, spawning two jury trials and three Eighth Circuit appeals. When the PTO published SEALTITE in the Official Gazette, B&B commenced an opposition proceeding before the TTAB. It prevailed. The TTAB found a likelihood of confusion between SEALTITE and SEALTIGHT, based primarily on the similarity of the marks and the similarity of the goods when used in building construction and aerospace applications. Hargis could have sought judicial review of the TTAB's decision in federal court, but did not.