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).

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