Federal District Court Cites B&B Hardware and Applies Issue Preclusion

Rebeccah Gan
November 24, 2015

In B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015) (“B&B Hardware”) the Supreme Court held that TTAB decisions concerning likelihood of confusion can have a preclusive effect in subsequent district court infringement actions opining that, “so long as the other ordinary elements of issue preclusion are met, when the issues adjudicated by the TTAB are materially the same as those before a district court, issue preclusion should apply.” Id. Before B&B Hardware, federal district courts would give deference to TTAB decisions, but were not obligated to defer to TTAB likelihood of confusion rulings based on issue preclusion or res judicata. Legal scholars have hotly debated the impact of B&B Hardware on infringement cases, given that TTAB proceedings are rarely “materially the same” as infringement actions, as marketplace evidence is infrequently of record in board proceedings.

In Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November 17, 2015), the United States District Court for the District of Maryland applied equitable estoppel based on the Board’s decision in The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC, Opposition No. 91207409 (October 15, 2013) wherein the TTAB had granted Opposer’s PNC Financial’ s Motion for Summary Judgment finding that Applicant’s earlier social media usage was not “use analogous to trademark use” sufficient to trump PNC Financial’ s claim of priority.

The Maryland District Court found that PNC Financial had satisfied the requirements for issue preclusion as the TTAB proceeding afforded Applicant Ashe the full opportunity to litigate the priority issue in front of the Board; priority is determined by the Board according to the same criteria as used by federal district courts in infringement matters; and the Board’s final judgement on likelihood of confusion necessarily revolved around determining priority. The Ashe v. PNC Financial Services Group decision is the first court decision where B&B Hardware was applied to an issue other than likelihood of confusion. Because “marketplace evidence” has no bearing on priority determinations, it may be that other district courts, emboldened by B&B Hardware, will likewise find issue preclusion based on TTAB priority holdings and other issues outside the realm of likelihood of confusion, e.g., standing and ownership.