April 4, 2015

What does “trademark infringement” REALLY mean? On March 24, 2015, the Supreme Court pointed out that because the factors for determining “trademark infringement” are the same for determining “trademark registration”, the first tribunal (even if it is merely a federal administrative agency) to make a ruling on those factors controls how a second tribunal (for example, a federal court) must rule.

Here’s the story… In 1993 the B&B company registered SEALTIGHT with the United States Patent & Trademark Office (“PTO”) for “threaded or unthreaded metal fasteners … for use in the aerospace industry.” In 1996, the Hargis company sought to register SEALTITE for “self-piercing and self-drilling metal screws for use in the manufacture of metal and post-frame buildings.” In 2002, B&B opposed Hargis’ registration because, although the two companies sell VERY different products, it believed that SEALTITE was confusingly similar to SEALTIGHT.

The PTO generally cannot register a mark which “so resembles” another mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U. S. C. §1052(d). After a long legal battle inside the PTO, B&B won the opposition, and so the administrative agency inside the PTO, called the “TTAB”, refused to give a registration to Hargis for SEALTITE.

However, before the registration fight had ended, B&B had already sued Hargis for trademark infringement in federal district court. After the TTAB ruling, B&B argued in its infringement lawsuit that the TTAB’s ruling should be used against Hargis (“preclusive effect” of the TTAB ruling), which would mean that Hargis should be found to be an infringer. The district court disagreed, and, on appeal, the Eighth Circuit also disagreed, so B&B asked the Supremes to decide the issue. In a 7-2 vote, the Supreme Court agreed with B&B, meaning that Hargis’ use of its mark SEALTITE infringes B&B’s mark SEALTIGHT.

So, exactly HOW does a court decide “trademark infringement”??? The court must decide whether the defendant’s use of a mark in commerce “is likely to cause confusion, or to cause mistake, or to deceive” with regards to the plaintiff ’s mark. See 15 U. S. C. §1114(1)(a) (registered marks); §1125(a)(1)(A) (unregistered marks). Not unexpectedly, the Supreme Court said that “the same likelihood-of-confusion standard applies to both registration and infringement.” Furthermore, the Supreme Court said, “The real question, therefore, is whether likelihood of confusion for purposes of registration is the same standard as likelihood of confusion for purposes of infringement. We conclude it is.” The Supreme Court further explained, “If a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation.”

About timheadley

For almost 30 years, as a lawyer, Tim Headley has been helping clients protect their intellectual property, according to the laws of patents, trademarks, copyrights, and trade secrets, not only in the United States, but in various countries around the world. Before that, he worked as an electrical engineer. Before that, he taught theology, in Spanish, to adult students, in the evenings, in a school in La Paz, Bolivia. You can contact him at tim@headleyiplaw.com, or his office phone, 713-467-8500, or his cell phone, 713-398-1045. His website is www.headleyiplaw.com.
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