B&B Hardware, Inc. v. Hargis Industries, Inc. (13-352)
argument 13-352B&B Hardware, Inc. v. Hargis Industries, Inc.
Supreme Court of the United States
1h 0m
5 speakers
8 chapters
transcribed 5 days ago
official recording ↗
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What is the Lanham Act’s single test for likelihood of confusion?
We'll have an argument first this morning in Case 13-352, B&B Hardware v. Hargis Industries. Mr. Jay?
Mr. Chief Justice, and may it please the Court, the Lanham Act contains only one concept of likelihood of confusion. That is why the two tribunals in this case decided the same issue, and that is why issue preclusion is appropriate. Whether a court is considering registration or infringement or both at the same time, the statutory test is the same, whether the resemblance of the marks, as used on particular goods, would give rise to a likelihood of confusion or mistake or deceit.
Mr. Jay, there are exceptions to preclusion, even if it's the identical issue, and one of them is when the stakes are higher — in the second proceeding than in the first. And indeed, the restatement of judgments gives some examples of that. And it seems to me this is such a case because it's one thing to say that we won't register your mock and another to say you can't use the mock.
There is an exception for when the stakes are different, Justice Ginsburg, but I think that the difference has to be a difference of an order of magnitude greater than we're dealing with here. So I think the best example in the restatement is the example of the small claims court. Small claims courts are set up in such a way that their designers understand their judgments won't be preclusive, and that's what gets people to litigate there. Here the stakes are different, but I don't think it can be said that the stakes before the trademark trial on
a billboard are so low. I don't think that your example of small claims court is — The closest, there's one on Section 83, which is determinations by an administrative tribunal, and the example it gives is of a scheme that contemplates an agency proceeding to be as expeditious as possible. And one way of assuring expeditiousness is to confine the stakes to the matter immediately in controversy.
The matter immediately in controversy, though, in this case, the matter is the same and the way that —
The matter in controversy is registration. And in the second proceeding, it's infringement.
That's correct. That's why there's no claim preclusion, for example. So in that sense, they are different. But the inquiry that the two tribunals are asking is the same. And to say that the stakes are different, certainly they're different, but I don't think that they are sufficiently different that you can infer from that that Congress wanted the trademark board's judgments not to be preclusive. And I would encourage the Court to think about the ways in which the trademark board decides issues that will be I think everyone would agree exactly the same in subsequent litigation, such as priority. Priority is the key to determining who gets to register a mark, who's the senior mark, and who's the junior mark.
The Trademark Board frequently decides that factual question, who came first, who started using it in commerce first. And there's no reason to think that Congress would want that factual matter re-litigated in a subsequent infringement action without regard to the proceeding that's come before. I see.
I suppose in one sense the trademark determination is broader rather than narrower than the infringement determination, right? The infringement determination just applies to one alleged infringer, whereas the trademark registration would register the trademark as against the world. So I'm not sure that it's terribly narrower.
Well, in an opposition or cancellation proceeding, Justice Scalia, there is a concrete dispute between the holders of two marks. But you're right that registration is a right nationwide as against the world that gives you priority
as of a certain date. But the person who uses the mark can continue to use it. And the reason the restatement gives for the expeditions first proceeding is that you don't want to make that proceeding, pull out all the stops because it's going to be determinative of the infringement suit.
But I think you could say the same, Justice Ginsburg, if the trademark trial on appeal board decision were appealed to a U.S.
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Chapters
8 chapters
1
What is the Lanham Act’s single test for likelihood of confusion?
0:00–9:29
2
How do the parties argue that the stakes differ between trademark registration and infringement?
9:29–18:52
3
Why do the justices discuss the role of issue preclusion between the TTAB and district courts?
18:52–26:51
4
What examples do the advocates use to illustrate when preclusion should or shouldn’t apply?
26:51–33:42
5
How does the evidence‑weight difference between TTAB proceedings and infringement trials affect the analysis?
33:42–40:26
6
What is the significance of the “seal‑tight building fasteners” versus “seal‑tight” distinction?
40:26–47:10
7
How do the justices compare the statutory language of registration (1127) and infringement (1114) statutes?
47:10–54:11
8
What is the Court’s ultimate conclusion on whether TTAB decisions are preclusive in later infringement actions?
54:11–1:01:00