Filed: Aug. 25, 2015
Latest Update: Mar. 02, 2020
Summary: United States Court of Appeals For the Eighth Circuit _ No. 10-3137 _ B & B Hardware, Inc., a California Corporation lllllllllllllllllllll Plaintiff - Appellant v. Hargis Industries, Inc., a Texas Corporation, doing business as Sealtite Building Fasteners, doing business as East Texas Fasteners; East Texas Fasteners, a business entity of form unknown; John Does, 1 through 10, inclusive lllllllllllllllllllll Defendants - Appellees _ No. 11-1247 _ B & B Hardware, Inc., a California Corporation lll
Summary: United States Court of Appeals For the Eighth Circuit _ No. 10-3137 _ B & B Hardware, Inc., a California Corporation lllllllllllllllllllll Plaintiff - Appellant v. Hargis Industries, Inc., a Texas Corporation, doing business as Sealtite Building Fasteners, doing business as East Texas Fasteners; East Texas Fasteners, a business entity of form unknown; John Does, 1 through 10, inclusive lllllllllllllllllllll Defendants - Appellees _ No. 11-1247 _ B & B Hardware, Inc., a California Corporation llll..
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United States Court of Appeals
For the Eighth Circuit
___________________________
No. 10-3137
___________________________
B & B Hardware, Inc., a California Corporation
lllllllllllllllllllll Plaintiff - Appellant
v.
Hargis Industries, Inc., a Texas Corporation, doing business as Sealtite Building
Fasteners, doing business as East Texas Fasteners; East Texas Fasteners, a
business entity of form unknown; John Does, 1 through 10, inclusive
lllllllllllllllllllll Defendants - Appellees
___________________________
No. 11-1247
___________________________
B & B Hardware, Inc., a California Corporation
lllllllllllllllllllll Plaintiff - Appellant
v.
Hargis Industries, Inc., a Texas Corporation, doing business as Sealtite Building
Fasteners, doing business as East Texas Fasteners; East Texas Fasteners, a
business entity of form unknown; John Does, 1 through 10, inclusive
lllllllllllllllllllll Defendants - Appellees
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Appeals from United States District Court
for the Eastern District of Arkansas - Little Rock
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Submitted: June 3, 2015
Filed: August 25, 2015
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Before LOKEN, COLLOTON, and SHEPHERD, Circuit Judges.
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PER CURIAM.
This matter is on remand from the United States Supreme Court, see B & B
Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). The Court has directed
us to apply this rule: “So long as the other ordinary elements of issue preclusion are
met, when the usages adjudicated by the TTAB are materially the same as those
before the district court, issue preclusion should apply.”
Id. at 1310.
We directed the parties to submit supplemental briefing. Having reviewed the
briefing, we now determine that the ordinary elements of issue preclusion have been
met and the usages of the marks adjudicated before the TTAB were materially the
same as the usages before the district court. As noted in our prior opinions, the
TTAB compared the marks in question in the marketplace context when it determined
the likelihood of confusion issue for purposes of trademark registration. See B & B
Hardware, Inc. v. Hargis Indus., Inc., 716 F.3d 1020, 1025 (8th Cir. 2013);
id. at 1029
(Colloton, J., dissenting).
Accordingly, we vacate the district court’s judgment and remand this matter for
further proceedings, including what remedies may be awarded for infringement. See
Masters v. UHS of Del., Inc., 631 F.3d 464, 471 n.2 (8th Cir. 2011); Minn. Pet
Breeders, Inc. v. Schell & Kampeter, Inc.,
41 F.3d 1242, 1246-47 (8th Cir. 1994). On
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remand, the district court is directed to give preclusive effect to the decision of the
TTAB on likelihood of confusion. The district court’s award of attorney’s fees is also
reversed and remanded for further consideration.
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