Category Archives: Trademark

Claim Preclusion and the TTAB

Today, the Supreme Court handed down its decision in B&B Hardware, Inc. v. Hargis Industries, Inc.. This decision has a real impact on companies that are applying for and challenging federal trademark registrations. While the full history and details of this case have been going on for almost two decades and, according to the Court, “could fill a long, unhappy book,” the important facts are fairly straight forward. In 1993 B&B registered its trademark “SEALTIGHT” for “threaded or unthreaded metal fasteners and other related hardwar[e]; namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive o-ring, for use in the aerospace industry.” In 1996, Hargis sought to register its trademark “SEALTITE” for “self-piercing and self-drilling metal screws for use in the manufacture of metal and post-frame buildings.” Eventually in 2002, The United States Patent and Trademark Office (“USPTO”) published Hargis’s mark for opposition and B&B filed an opposition which prompted a proceeding before the Trademark Trial and Appeal Board (“TTAB”). However, B&B had also filed a trademark infringement action in the circuit court.

This is where the issue before the Court comes in. B&B was arguing before both the circuit court and the TTAB that Hargis’s mark was so similar to its mark that it would create a likelihood of consumer confusion. Before the circuit court could rule on this matter, the TTAB agreed with B&B and ruled that the marks were so similar as to cause a likelihood of consumer confusion and refused to register Hargis’s mark. Hargis did not appeal the TTAB decision. B&B then argued in front of the circuit court that since the TTAB has already ruled on likelihood of confusion, that decision should apply to the circuit court and that Hargis should not be able to raise the defense that there is no likelihood of confusion. This is called claim preclusion, when once Court rules on an issue, other Courts are bound by that ruling. Today’s Supreme Court decision confirms that B&B is correct and that TTAB rulings would prevent those same issue from being argued in circuit court.

Hargis’s decision not to appeal the TTAB ruling, in effect, bound it to the ruling for any subsequent lawsuits. This is important. Proceedings before the USPTO can have a preclusionary effect. Hargis, by not appealing the TTAB decision, is now precluded from arguing one of its main defenses.

This ruling enforces that issues before the USPTO are serious matters that should not be taken lightly. If you have a trademark issue, contact the professionals at Smith & Associates for a free consultation.

Can I get a U.S. Trademark Registration to Protect My Brand?

While there are many factors that determine whether or not a particular brand or mark can be registered with the U.S. Patent and Trademark Office, the three most important factors are distinctiveness, likelihood of confusion, and use in interstate commerce. Your brand must be distinctive, this is a legal term of art that will be described later. Also, your brand must not confuse consumers into thinking your brand is represents some other entities goods or services. And finally, you must actually be using your mark in commerce.


It is generally accepted that there are five levels of distinctiveness. They are listed below from most distinctive to least distinctive.

  • Artful/Fanciful: This level is the most distinctive. They are words that were invented to represent the product or service. The words have no meaning other than the invented meaning. Examples include: Xerox, Google, Kodak, Bidzuku.
  • Arbitrary: These are words that have a dictionary meaning, but that meaning does not relate to the product or service. The most notable example of this is ‘Apple’ for a computer company.
  • Suggestive: These are marks that ‘suggest’ what a product is by the name. These marks are more than just ‘merely descriptive’ of the product and are considered distinctive by the Trademark Office. Be careful because these levels are subjective and what may be suggestive to you could be merely descriptive to the Trademark Office. Examples include: Citibank, Playboy, and Mustang.
  • Descriptive: These are marks that merely describe the product or service. While there are methods for registering descriptive marks, for all intents and purposes, these marks are not distinct enough to be registered with the Trademark Office. Also note that surnames usually fall within this level. Examples include: Qik Print, Eyeglass Superstore, Chinese Restaurant.
  • Generic: These marks merely describes the category of goods or services. These marks are not protected. E.g. Food, Restaurant, Computer.

For you to register your mark, the United States Patent and Trademark Office (USPTO) must determine that your mark is at least suggestive. While there are ways to register a descriptive mark, that is outside of the scope of this post.

Likelihood of Confusion

Your brand cannot mislead or confuse consumers. This usually occurs when your mark is the same or similar to existing trademarks. For example, it might be possible for two companies to use the mark ‘Apple’ if one was selling computers and the other was selling teaching supplies. Conversely, even if the mark is different, if it is similar enough and in the same or similar class, consumers may still be confused. For example ‘Teachbook’ may infringe on ‘Facebook’s’ mark. Even if there is not a similar mark registered with the U.S. Trademark Office, there may still be uses of your mark that will affect your rights. Trademarks can also be filed with a state or acquired through use (this is called a common law trademark). While these marks may not preclude you from registering with the U.S. Trademark Office, they can prevent you from using your mark where they have priority over your mark. This is why a good trademark search is vital before attempting to register your mark.

Use In Commerce

This is another term of art, but it basically means that the mark is actually being used to sell goods or services. Thus if you are still in the planning phase of your project, you cannot get a trademark. You must actually be using the mark. However, there is an ‘Intent to Use’ application that can be filed when you know you want to use a mark, but are not yet using it. This does not grant you any actual protection, but it will provide a record of your use of the mark if you are worried someone might try to steal your brand. If you do file an Intent to Use application, you will still be required to file an actual registration to obtain any rights.


This is just a general overview of some of the key issues when it comes to eligibility to receive a U.S. Trademark Registration. Your specific situation will affect if your mark can be registered. If you have any questions, please feel free to contact us here.