Trends Before the Trademark Trial and Appeal Board

• Author: Stephen R. Baird
• Position: Stephen R. Baird chairs the intellectual property department and trademark and brand management group at Winthrop & Weinstine, P.A. He regularly blogs about trademarks, marketing, advertising, and the legal implications of branding on the firm's award-winning DuetsBlog. He can be reached at sbaird@winthrop.com.
• Pages: 16-21

Published in Landslide® magazine, Volume 9, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2016 by the American Bar Association. Reproduced with permission. All rights reserved. This

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The stakes have risen in litigating the right to register

a claimed trademark before the Trademark Trial and

Appeal Board (TTAB) of the U.S. Patent and Trade-

mark Ofce (USPTO), thanks to the U.S. Supreme Court’s

2015 decision in B&B Hardware, Inc. v. Hargis Industries,

Inc.1 The often self-described “limited jurisdiction” of the

TTAB (only deciding the “right to register”) doesn’t seem so

limited any longer, now that important issues decided in an

unappealed nal TTAB decision may control the outcome of

later trademark infringement and/or dilution actions in federal

district court. Exactly how the TTAB will manage and evolve

in this larger role remains to be seen.

The importance of federal registration of trademarks was

underscored by the B&B Hardware Court when it declared:

“Registration is signicant. The Lanham Act confers ‘impor-

tant legal rights and benets’ on trademark owners who

register their marks.”2 So important are the “substantial” ben-

ets to registration that the Court expects litigants before the

TTAB “will take the matter seriously” when registration is

opposed, conrming and justifying “that registration deci-

sions can be weighty enough to ground issue preclusion.”3

As a result, the Court’s majority had no problem directing

that federal district courts apply issue preclusion “when the

usages adjudicated by the TTAB are materially the same as

those before the district court,” so long as “the other ordinary

elements of issue preclusion are met.”4

Trends Before the

Trademark Trial

and Appeal Board

Stephen R. Baird

While B&B Hardware conrmed that the TTAB’s nal

decision on whether a likelihood of confusion exists—for pur-

poses of determining the right to register—can bind a later

district court on that key issue in the trademark infringement

context,5 the Court’s holding begs the question of what other

types of issues decided by the TTAB may result in the appli-

cation of issue preclusion in federal court proceedings. Within

the last year, at least one federal district court applied issue pre-

clusion based on an earlier TTAB decision concerning lack of

priority.6 Time will tell what other kinds of trademark issues

will lead to preclusion under B&B Hardware.

Functionality

Functionality determinations by the TTAB seem particularly

apt to prevent a losing party on that issue before the TTAB

from relitigating functionality of the claimed mark in a later

trademark infringement action. Functionality is the death

knell of trademark registration and protection. It is to nontra-

ditional trademarks what genericness is to traditional word

marks—both are part of the public domain from a trademark

perspective, free for anyone to use, even direct competitors.

It is not even possible to obtain a defensive supplemental

registration for either type of matter, as both are considered

incapable of ever being a trademark, so it is just as critical

that substantial record evidence ground a functionality nd-

ing as a genericness nding.

It has been hard not to notice the continuous stream of

adverse TTAB decisions over the last few years denying

registration of product conguration trademarks,7 and this