B & B Hardware, Inc. v. Hargis Industries, Inc.

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks, Infringement
  • Date Filed: 05-08-2013
  • Case #: 10-3137, 11-1247
  • Judge(s)/Court Below: United States Court of Appeals, Eighth Circuit
  • LexisNexis Citation: 2013 U.S. App. LEXIS 8926
  • Westlaw Citation: 2013 WL 1810614
  • Full Text Opinion

The Trademark Trial and Appeal Board's decision was overturned because it was not an Article III court and used different factors in determining whether there was trademark infringement.

Opinion (Shepherd): B & B Hardware, Inc. (“B & B”) appealed the lower court’s ruling against their claim of trademark infringement in favor of Hargis Industries, Inc. (“Hargis”). B & B had trademarked the term “Sealtight” as the name of a fastener used in the aerospace industry, and Hargis tried to trademark the term “Sealtite” for the name of screws used in building metal buildings. The Trademark Trial and Appeal Board (“TTAB”) had decided that even though the companies used their products in different industries, Hargis could not trademark the term “Sealtite.” The Court of Appeals agreed with the lower court’s ruling that because the TTAB is not an Article III court, the district court does not have to give preclusive effect to TTAB’s decision that Hargis’ trademark claim would create confusion. The Court of Appeals also found that even if the TTAB was an Article III court that the lower court would not have to follow TTAB’s ruling because TTAB followed a different test than the lower court must follow when determining trademark infringement. The Court stated that when looking at trademark infringement must look at six factors when determining trademark infringement: (1) the strength of the owner’s mark; (2) the similarity of the owner’s mark and the alleged infringer’s; (3) the degree to which the products compete with each other; (4) the alleged infringer’s intent to “pass off” its goods as those of the trademark owner; (5) incidents of actual confusion; and (6) the type of product, its costs and conditions of purchase. When applying these factors the court decided that since the fasteners were used in different industries that there was not any trademark infringement.

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