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B&B Hardware, Inc. v. Hargis Industries, Inc.

United States Court of Appeals, Eighth Circuit

December 21, 2018

B&B Hardware, Inc., a California Corporation Plaintiff - Appellant
v.
Hargis Industries, Inc., a Texas Corporation, doing business as East Texas Fasteners, doing business as Sealtite Building Fasteners Defendant-Appellee East Texas Fasteners, a business entity of form unknown; Does, 1 through 10, inclusive Defendants B&B Hardware, Inc., a California Corporation Plaintiff - Appellee
v.
Hargis Industries, Inc., a Texas Corporation, doing business as East Texas Fasteners, doing business as Sealtite Building Fasteners Defendant-Appellant East Texas Fasteners, a business entity of form unknown; Does, 1 through 10, inclusive Defendants

          Submitted: September 26, 2018

          Appeals from United States District Court for the Eastern District of Arkansas - Little Rock

          Before LOKEN, BENTON, and SHEPHERD, Circuit Judges.

          SHEPHERD, CIRCUIT JUDGE.

         B&B Hardware, Inc. appeals the district court's[1] judgment in favor of Hargis Industries, Inc. on B&B's claim of trademark infringement and request for an accounting of profits. Hargis cross-appeals from the district court's denial of its motion for fees and costs. We have jurisdiction pursuant to 28 U.S.C. § 1291. For the reasons set forth in this opinion, we affirm on all claims.

         I.

         Although we relate the circumstances underlying this case in great detail in our prior opinions concerning these parties, B&B Hardware, Inc. v. Hargis Indus., Inc. (Hargis V), 716 F.3d 1020 (8th Cir. 2013); B&B Hardware, Inc. v. Hargis Indus., Inc. (Hargis III), 569 F.3d 383 (8th Cir. 2009); B&B Hardware, Inc. v. Hargis Indus., Inc. (Hargis I), 252 F.3d 1010 (8th Cir. 2001), Justice Alito has succinctly summarized the factual origins of this case and provides apt commentary:

Petitioner B & B and respondent Hargis both manufacture metal fasteners. B & B manufactures fasteners for the aerospace industry, while Hargis manufactures fasteners for use in the construction trade. Although there are obvious differences between space shuttles and A-frame buildings, both aerospace and construction engineers prefer fasteners that seal things tightly. Accordingly, both B & B and Hargis want their wares associated with tight seals. A feud of nearly two decades has sprung from this seemingly commonplace set of facts.
In 1993 B & B registered SEALTIGHT for "threaded or unthreaded metal fasteners and other related hardwar[e]; namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive o-ring, for use in the aerospace industry." In 1996, Hargis sought to register SEALTITE for "self-piercing and self-drilling metal screws for use in the manufacture of metal and post-frame buildings." B & B opposed Hargis' registration because, although the two companies sell different products, it believes that SEALTITE is confusingly similar to SEALTIGHT.
The twists and turns in the SEALTIGHT versus SEALTITE controversy are labyrinthine. The question whether either of these marks should be registered, and if so, which one, has bounced around within the [Patent and Trademark Office] for about two decades; related infringement litigation has been before the Eighth Circuit three times; and two separate juries have been empaneled and returned verdicts. The full story could fill a long, unhappy book.

B&B Hardware, Inc. v. Hargis Indus., Inc. (Hargis VI), 135 S.Ct. 1293, 1301 (2015) (first alteration in original) (citations omitted).

         In B&B's trademark infringement action against Hargis in May 2000, a jury found that B&B's "Sealtight" mark was not entitled to protection because it lacked secondary meaning. We affirmed. Hargis I, 252 F.3d at 1011. In June 2006, B&B filed for incontestability status for its trademark with the Patent and Trademark Office (PTO). The PTO issued a Notice of Acknowledgment in September 2006, concluding that B&B's affidavit of incontestability met the statutory requirements. Incontestability provided B&B with a presumption that its "Sealtight" mark carried secondary meaning. This constituted a significant intervening factual change from the 2000 jury trial, which resulted in the finding that "Sealtight" was merely descriptive, and B&B could thus escape the collateral estoppel bar that the 2000 jury verdict imposed on the issue of secondary meaning. See Hargis III, 569 F.3d at 388.

         Immediately after its 2006 filing for incontestability, B&B brought suit against Hargis again for trademark infringement, unfair competition, trademark dilution, and false designation of origin. The case currently before us arises out of this second suit. However, only the period between June 2006, when B&B overcame collateral estoppel by filing for incontestability, see Dist. Ct. Dkt. 422; see also Hargis III, 569 F.3d at 388-89, and October 2013, when B&B allowed its trademark registration to expire and therefore no longer had statutory rights in that trademark, is at issue here.

         The district court initially dismissed B&B's new suit on collateral estoppel grounds. B&B Hardware, Inc. v. Hargis Indus., Inc. (Hargis II), No. 4:06CV01654 SWW, 2007 WL 2711647, at *12-13 (E.D. Ark. Sept. 13, 2007). B&B appealed and this Court reversed and remanded, finding that incontestability was a significant factual change precluding application of collateral estoppel. Hargis III, 569 F.3d at 389-90. The district court then conducted a jury trial and the jury found against B&B on all claims. B&B Hardware, Inc. v. Hargis Indus., Inc. (Hargis IV), 736 F.Supp.2d 1212, 1214 (E.D. Ark. 2010). B&B again appealed to this Court, which upheld the jury's verdict. Hargis V, 716 F.3d at 1022. B&B then appealed to the Supreme Court of the United States, which found that the district court should have given preclusive effect to a decision of the Trademark Trial and ...


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