Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

The Requirement Of Use As A Mark For Trademark Infringement Claims

The 6th Circuit has required that a defendant make use of a trademark in a trademark sense in order to be subject to liability for trademark infringement. However, the 2nd Circuit recently held that a plaintiff does not have to allege that the defendant used the plaintiff's mark in a trademark sense in order to state a claim for trademark infringement. Given the diverging views of these two circuits, and until a Supreme Court decision resolves such issues, trademark owners would be well served consulting with trademark attorneys prior to proceeding with an action for trademark infringement where the trademark use is unclear. 

Can a TTAB Decision Preclude Subsequent Trademark Litigation in Federal Court?

The United States Court of Appeals for the 8th Circuit recently ruled that the Trademark Trial and Review Board refusal to register a mark based upon a finding of likelihood of confusion does not preclude the filing of subsequent trademark infringement lawsuit in Federal Court. The case, B and B Hardware, Inc. v Hargest Industries, 716 F.3d 1020, denied the preclusive effect of a TTAB finding and also held that the District Court had properly excluded the finding from evidence. The TTAB had refused to register a trademark due to a likelihood of consumer confusion refusal. However, a jury found that there was no likelihood of confusion between the marks, after the judge had refused to allow evidence of the TTAB decision to go before the jury. In doing so, the 8th Circuit recognized that the TTAB is not an Article 3 court, the factors the TTAB considers for trademark registration purposes are different from those under the 8th Circuit likelihood of confusion test, and the burden of proof differed.