B & B Hardware, Inc. v. Hargis Indus., Inc., No. 10-3137 (8th Cir. 2015)

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Justia Opinion Summary

B&B, manufacturer and seller of "Sealtight," sued Hargis, manufacturer of "Sealtite," claiming trademark infringement and unfair competition. Hargis counterclaimed for false advertising and false designation of origin. The jury rejected B&B's claims but found in favor of Hargis on its counterclaims. The Eighth Circuit concluded that the district court properly refused to apply collateral estoppel to the Trademark Trial and Appeal Board's (TTAB) decision concerning likelihood of confusion; rejected B&B's argument that the TTAB's factual findings from a trademark registration case were entitled to deference; and concluded that the district court did not abuse its discretion in excluding the TTAB's decision from the evidence presented to the jury. On remand from the Supreme Court the Eighth Circuit vacated and remanded, holding that the ordinary elements of issue preclusion were met, and the usages of the mark adjudicated before TTAB were materially the same as the usages before the district court. On remand, the district court should give preclusive effect to the decision of the TTAB on likelihood of confusion.

Court Description: Per Curiam - Before Loken, Colloton and Shepherd, Circuit Judges] Civil case. On remand from the Supreme Court of the United States, see B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. 1293 (2015). For this court's prior opinion in the matter, see B&B Hardware, Inc. v. Hargis Indus., Inc., 716 F.3d 1020 (8th Cir. 2013). Having reviewed the parties' supplemental briefs, the court determines that the ordinary elements of issue preclusion have been met, and the usages of the mark adjudicated before the Trademark Trial and Appeal Board (TTAB) were materially the same as the usages before the district court; accordingly, the district court's judgment is vacated and the matter remanded for further proceedings, including what remedies may be awarded for infringement; on remand, the district court shall give preclusive effect to the decision of the TTAB on likelihood of confusion.

This opinion or order relates to an opinion or order originally issued on May 1, 2013.

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United States Court of Appeals For the Eighth Circuit ___________________________ No. 10-3137 ___________________________ B & B Hardware, Inc., a California Corporation lllllllllllllllllllll Plaintiff - Appellant v. Hargis Industries, Inc., a Texas Corporation, doing business as Sealtite Building Fasteners, doing business as East Texas Fasteners; East Texas Fasteners, a business entity of form unknown; John Does, 1 through 10, inclusive lllllllllllllllllllll Defendants - Appellees ___________________________ No. 11-1247 ___________________________ B & B Hardware, Inc., a California Corporation lllllllllllllllllllll Plaintiff - Appellant v. Hargis Industries, Inc., a Texas Corporation, doing business as Sealtite Building Fasteners, doing business as East Texas Fasteners; East Texas Fasteners, a business entity of form unknown; John Does, 1 through 10, inclusive lllllllllllllllllllll Defendants - Appellees ____________ Appeals from United States District Court for the Eastern District of Arkansas - Little Rock ____________ Submitted: June 3, 2015 Filed: August 25, 2015 ____________ Before LOKEN, COLLOTON, and SHEPHERD, Circuit Judges. ____________ PER CURIAM. This matter is on remand from the United States Supreme Court, see B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). The Court has directed us to apply this rule: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.” Id. at 1310. We directed the parties to submit supplemental briefing. Having reviewed the briefing, we now determine that the ordinary elements of issue preclusion have been met and the usages of the marks adjudicated before the TTAB were materially the same as the usages before the district court. As noted in our prior opinions, the TTAB compared the marks in question in the marketplace context when it determined the likelihood of confusion issue for purposes of trademark registration. See B & B Hardware, Inc. v. Hargis Indus., Inc., 716 F.3d 1020, 1025 (8th Cir. 2013); id. at 1029 (Colloton, J., dissenting). Accordingly, we vacate the district court’s judgment and remand this matter for further proceedings, including what remedies may be awarded for infringement. See Masters v. UHS of Del., Inc., 631 F.3d 464, 471 n.2 (8th Cir. 2011); Minn. Pet Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242, 1246-47 (8th Cir. 1994). On -2- remand, the district court is directed to give preclusive effect to the decision of the TTAB on likelihood of confusion. The district court’s award of attorney’s fees is also reversed and remanded for further consideration. ______________________________ -3-

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