A trademark case involving LIKELIHOOD OF CONFUSION (the legal thing, not the fun blog) got unusual Supreme Court attention last week, as you doubtless know by now. Good summary here by Sutherland Asbill & Brennan LLP (link added by me):
The U.S. Supreme Court heard oral argument last week in a much anticipated trademark matter, B&B Hardware Inc. v. Hargis Industries Inc. et al. The primary question presented was whether a likelihood-of-confusion* determination in a contested administrative proceeding regarding trademark registration should have preclusive effect in future trademark infringement litigation between the same parties over use of the same mark in commerce. The justices also considered, if the administrative determinations do not have preclusive effect, what deference, if any, may be appropriate at the litigation stage. . . .
The main question at oral argument focused on whether the likelihood of confusion analyses in TTAB proceedings and infringement litigations are sufficiently similar to support preclusion. . . .
Counsel for Hargis Industries, arguing against preclusion, attempted to explain the distinction between the confusion analyses in the two venues. For example, counsel argued, the TTAB does not consider in its likelihood-of-confusion analysis how the parties actually use their marks, but rather compares the marks only as they appear on the respective registrations or applications. Further, counsel argued, the TTAB does not consider the goods with which the marks are actually used. Instead, the goods as claimed in the registration or application frame the TTAB’s analysis. Accordingly, by way of example, counsel asserted that if an applicant were to claim a broad range of goods in its application for a mark, it may be denied registration, even if its comparatively narrow use of the mark would not be sufficient to support a finding of infringement. The justices appeared to struggle with the examples provided by counsel for Hargis of the differences between the likelihood-of-confusion inquiries.
In questioning B&B Hardware’s counsel, the justices explored whether the different stakes before the TTAB did not warrant an exception to the general rules of issue preclusion. The justices also questioned whether Congress intended TTAB proceedings to provide expeditious resolution to disputes between rightsholders and, if so, whether a ruling effectively upping the stakes of those proceedings would defeat congressional intent. Finally, the justices queried why ordinary rules of issue preclusion should not apply, with exceptions applicable where justified by the circumstances of each individual case.
OK, but the main question is, what are they saying at the trademark blogs? I can’t have an opinion, after all, until I see what everyone else’s is! Read More…