Trends Before the Trademark Trial and Appeal Board

AuthorStephen R. Baird
PositionStephen 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
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
information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
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 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

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