Can a TTAB Decision Preclude Subsequent Trademark Litigation in Federal Court?

The United States Court of Appeals for the 8th Circuit recently ruled that the Trademark Trial and Review Board refusal to register a mark based upon a finding of likelihood of confusion does not preclude the filing of subsequent trademark infringement lawsuit in Federal Court. The case, B and B Hardware, Inc. v Hargest Industries, 716 F.3d 1020, denied the preclusive effect of a TTAB finding and also held that the District Court had properly excluded the finding from evidence. The TTAB had refused to register a trademark due to a likelihood of consumer confusion refusal. However, a jury found that there was no likelihood of confusion between the marks, after the judge had refused to allow evidence of the TTAB decision to go before the jury. In doing so, the 8th Circuit recognized that the TTAB is not an Article 3 court, the factors the TTAB considers for trademark registration purposes are different from those under the 8th Circuit likelihood of confusion test, and the burden of proof differed.

While this is an 8th Circuit decision and may not apply equally through other circuits in the United States, at least until the Supreme Court weighs in on this issue, if at all, it is something that trademark owners and trademark attorneys should consider. In particular, often times trademark owners are forced to decide whether or not they wish  to proceed with an action with the TTAB or in Federal Court. This decision holds that the TTAB's refusal to register a mark due to likelihood of consumer confusion does not have to be the ultimate conclusion. Instead, one may seek a declaratory judgment in Federal Court that there is indeed no likelihood of consumer confusion so as to allow the mark to be registered and the parties to co-exist without risk of infringement. Once again, this case highlights the importance of consulting with a trademark attorney in the event that trademark registration is refused and trademark infringement issues arise.