Trademark: Secondary Meaning, Distinctiveness & Confusingly Similar

U.S. Supreme Court Articulates Secondary Meaning, Distinctiveness & Confusingly Similar

In December 2014, the Supreme Court of the United States heard oral arguments in two trademark cases. It has been almost ten years since the Court has issued any substantive decision involving trademark law. One of the two cases was B&B Hardware v. Hargis. (The other covered the issues of trademark tacking and legal equivalents.)

B&B Hardware v. Hargis

The case of B&B Hardware v. Hargis is a highly anticipated case in the IP world as it could impact all future IP litigation. The main question is whether a federal district court needs to defer to the U.S. Patent and Trademark Office’s Trademark Trial and Appeal’s Bard (“TTAB”) earlier decision.

Now for the facts. B&B Hardware (B&B) is in the aerospace industry and sells self-sealing fasteners called “Sealtight.” B&B registered the trademark for “Sealtight” in 1993. Hargis Industries attempted to trademark for its sheeting screws used in construction in 1996 with the name “Sealtite.” After Hargis attempted to trademark “Sealtite,” B&B sued for trademark infringement. The case went to a jury trial and the jury ruled against B&B, noting that the mark was too descriptive and had failed to obtain a “secondary meaning.” In other words, the mark lacked the required “distinctiveness” that would allow a consumer to recognize the term as a designation of source. Therefore, trademark protection was not available to B&B.

The parties then went to the TTAB. Hargis attempted to cancel B&B’s mark so it could then register its “Sealtite.” The Board elected to not cancel B&B’s mark or allow Hargis to register “Sealtite” because it concluded that the two marks were too “confusingly similar.”

Confusingly Similar Trademark Test

Whether the two trademarks are confusingly similar depends on a number of factors, including:

  1. The existence of actual confusion in the marketplace between the trademarks;
  2. Similarity of the appearance, sound and meaning of the trademarks;
  3. Similarity of the goods and services being identified by the trademarks;
  4. The degree of secondary meaning acquired by the trademarks;
  5. The sophistication of the consumers who buy the particular products or services;
  6. The similarity of the channels of distribution of the products or services (that is, are they both sold in the same types of stores);
  7. The degree of commercial competition between the two trademark users; and
  8. The distinctiveness of the trademarks (that is, are they somewhat descriptive or are they arbitrary and fanciful).

B&B then went back to federal court and sued Hargis for trademark infringement. This subsequent jury ruled against B&B a second time and holding that there was no likelihood of confusion between the two marks. In relying on the TTAB’s ruling, B&B requested a judgment from the court notwithstanding the verdict arguing that the TTAB had already ruled that the marks were too “confusingly similar.” The district court denied B&B’s motion and the Eighth Circuit Court of appeals also rejected B&B’s argument that issue preclusion applies or at the very least, deference needed to be given to the TTAB’s decision regarding the finding of “confusion.”

Hargis’ arguments so far have been that TTAB and the federal courts are deciding two distinct things with regards to “confusion.” TTAB considers similarity of the marks, while the courts consider similarity of use. It is a very thin difference, but a difference Hargis believes is worth distinguishing.

Ed Lee, professor at Chicago-Kent College of Law, predicts that B&B will prevail on its SCOTUS appeal, especially because the Solicitor General supported B&B’s position.

This post was written by Maureen A. Carlson.

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