Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm.

If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of us who care deeply about the enforcement and protection of brands and trademarks could be facing a real paradigm shift.

Contrary to what Intellectual Property Brief has reported, the U.S. Supreme Court has not yet decided to review the Eighth Circuit Court of Appeals decision in B &B Hardware, Inc. v. Hargis Industries, Inc. Instead, back in January, it invited the SG to express the views of the United States on whether it should hear the case. Those views were filed and expressed in the form of an amicus brief on May 23, 2014.

The SG’s amicus brief encourages the Supreme Court to review the case, and it seems likely the Court will do so. If so, let’s hope the Court is flooded with thoughtful amicus briefs to help it get this important issue right. At a minimum, INTA should weigh in as a friend of the court.

SCOTUSblog identifies the two issues to be:

“(1) Whether the Trademark Trial and Appeal Board’s finding of a likelihood of confusion precludes respondent from relitigating that issue in infringement litigation, in which likelihood of confusion is an element; and (2) whether, if issue preclusion does not apply, the district court was obliged to defer to the Board’s finding of a likelihood of confusion absent strong evidence to rebut it.”

Basically, the Court is being asked to decide the impact (if any), of a prior win or loss (on the issue of likelihood of confusion) at the TTAB, on a later federal district court trademark infringement case involving the same marks and parties.

Unfortunately, in addressing the substance of the issues, the SG’s amicus brief borrows liberally from the dissenting judge’s perspective in the Eighth Circuit decision, such that likelihood of confusion decided by the TTAB to determine registrability apparently is believed to be the same issue as likelihood of confusion decided by a federal court for purposes of infringement. They aren’t and they shouldn’t be, for reasons I’ll elaborate on in my next post on this topic.

In the meantime, it seems to me, both the SG and dissenting Judge Colloton fail to appreciate the very limited jurisdiction of the TTAB. For those of us who regularly practice before the TTAB, we know that the TTAB is not shy about reminding parties before it of this limited jurisdiction and that cases before the TTAB should not be litigated as if more is at issue than simply the right to register a trademark.

The TTAB’s Manual of Procedure sets forth this very limited jurisdiction quite clearly in TBMP Section 102.01:

“The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent and Trademark Office. The Board is empowered to determine only the right to register. The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition. Similarly, the Board, being an administrative tribunal, has no authority to declare any portion of the Act of 1946, or any other act of Congress, unconstitutional.”

Indeed, back in 2007 when the TTAB introduced the new rules of practice, it reinforced the above, making very clear:

“Initial disclosure obligations should be easier to meet in Board cases than in civil actions. One reason is that the Board’s jurisdiction is limited to determining the right of a party to obtain, or retain, a registration. Moreover, the extent of available claims and defenses that may be advanced is not nearly as broad as in the district courts. In addition, the Board recognizes the impact of other issues relatively unique to Board proceedings. For example, a high percentage of applications involved in oppositions are not based on use of the applied-for mark in commerce but, rather, on intent to use, on a foreign registration or on an international registration. Further, certain precepts that govern analysis of issues raised by claims or defenses in typical Board cases effectively limit the Board’s focus. For example, in a [likelihood of confusion] case under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), the Board focuses only on goods or services recited in identifications, and on the mark as registered or applied-for, irrespective of many actual marketplace issues.”

Baby trademark lawyers have been taught for decades that the right to register a trademark is separate and distinct from the right to use a trademark. Every day we clear marks for brand owners understanding the critical difference between these important rights.

It is not uncommon for a brand owner to be refused registration of a trademark based on another’s prior registration for a similar mark, but that doesn’t necessarily mean the brand owner’s use of the mark is infringing, or that it should be enjoined, or that monetary awards are appropriate for the continued use of the mark.

More on this to follow, but for the purposes of today, I’m not convinced that the TTAB’s likelihood of confusion decision about registrability ever should preclude a federal district court from deciding for itself the question of likely confusion for infringement purposes.

How do you come down on this issue?