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).

Want to read more?

Register to access two of our subscriber only 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

World Trademark Review, and particularly the WTR 1000, are always very useful sources for obtaining impressions and detailed information about foreign colleagues, law firms and jurisdictions. Our whole trademark team benefits from articles published in World Trademark Review.

Christian R Thomas
Attorney at law, legal and trademark department
KUHNEN & WACKER Intellectual Property Law Firm


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 72