How are courts analysing issue preclusion post-B&B Hardware?

By Bobby Ghajar and Marcus Peterson

Two years on from the Supreme Court ruling in B&B Hardware Inc v Hargis Industries, a clearer picture is emerging of how courts will handle the issue of preclusion. However, a number of questions remain unanswered

It has been two years since the US Supreme Court ruling in B&B Hardware Inc v Hargis Industries, Inc (135 S Ct 1293 (2015)) defined the boundaries of when a trademark ruling by the US Patent and Trademark Office (USPTO) can have a preclusive effect on subsequent district court litigation. That opinion focused on the preclusive effect of a decision from the Trademark Trial and Appeal Board (TTAB) finding likelihood of confusion between the parties’ marks. The court held that a TTAB ruling can lead to issue preclusion in federal court “so long as the other ordinary elements of issue preclusion are met, when the issues adjudicated by the TTAB are materially the same as those before a district court” (id at 1310). Recognising that the scope of discovery may differ between the TTAB and federal court cases, the Supreme Court pointed out that “the ordinary law of issue preclusion” accounts for such instances as when “a party may have tried to introduce material evidence but was prevented by the TTAB from doing so, or the TTAB’s bar on live testimony may materially prejudice a party’s ability to present its case” (id at 1309).

This part of the website has now moved to the subscriber area. To read more, please pick an option below.

Register to access two articles per month

Subscribe for unlimited access to articles, in-depth analysis and research from the World Trademark Review experts

Already registered? Log in

What our customers are saying

“An excellent source of trademark news. I find the short daily updates the perfect way to keep informed of the latest developments from around the world. I thoroughly recommend it to everybody working with trademarks”

Steven Suer
Ablett & Stebbing Patent & Trademark Attorneys


Subscribe to World Trademark Review to receive access to the full range of trademark intelligence, insight, and case law, as well as our guides, rankings and daily market insight delivered to your inbox.

Why subscribe?


Register for more free content

  • Read more World Trademark Review blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 71