When faced with a dispute regarding use and registration of conflicting trademarks, a party and its attorney often must decide whether to invest the significant resources necessary to obtain a ruling in a federal court infringement action, or to first engage in a proceeding regarding the registrability of the marks before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). If the issue is not considered early and carefully, a trademark owner may find it has spent a significant amount of time and money adjudicating the matter in the TTAB, only to face the same fight again in court. In addition to the increased expense, a TTAB decision after adjudication on the merits may affect the party’s ability to raise claims in the subsequent litigation. Given the current split in the Circuit Courts, what effect the TTAB decision will have, if any, depends heavily upon where litigation is commenced. The Supreme Court has granted certiorari in B&B Hardware, Inc. v. Hargis Industries to determine the appropriate rule. This article examines this case and what the decision means to companies with trademarks.
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