Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA779450
`10/27/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91230220
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`B&B Hardware, Inc.
`
`B&B HARDWARE INC
`PO BOX 60840
`SANTA BARBARA, CA 93160
`UNITED STATES
`
`Answer
`
`Larry Joseph Bogatz
`
`larry@sealtighttechnology.com
`
`/Larry Joseph Bogatz/
`
`10/27/2016
`
`Answer to Notice of Opposition 1.pdf(1117643 bytes )
`Answer to Notice of Opposition 2.pdf(1046631 bytes )
`Answer to Notice of Opposition 3.pdf(2651336 bytes )
`Answer to Notice of Opposition 4.pdf(327342 bytes )
`
`
`ESTTA779450
`10/27/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91230220
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`B&B Hardware, Inc.
`
`B&B HARDWARE INC
`PO BOX 60840
`SANTA BARBARA, CA 93160
`UNITED STATES
`
`Answer
`
`Larry Joseph Bogatz
`
`larry@sealtighttechnology.com
`
`/Larry Joseph Bogatz/
`
`10/27/2016
`
`Answer to Notice of Opposition 1.pdf(1117643 bytes )
`Answer to Notice of Opposition 2.pdf(1046631 bytes )
`Answer to Notice of Opposition 3.pdf(2651336 bytes )
`Answer to Notice of Opposition 4.pdf(327342 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`OPPOSITION NO. 91230220
`SERIAL NO. 86/927,791
`
`
`
`APPLICANT B & B HARDWARE, INC’S
`ANSWER TO OPPOSER’S NOTICE OF
`OPPOSITION
`
`
`Hargis Industries, LP.,
`
` Opposer,
`
`
`
` vs.
`
`
`B&B Hardware, Inc.,
`
`
`
`
`
`
`
`
` Applicant.
`
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Introduction
`
`
`B&B has continuously used the trademark "SEALTIGHT" in commerce since
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`May 2, 1990. In the last 26 years, B&B has become well recognized as a producer of the
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`highest quality self-sealing fasteners in the world. It is because of this reputation that
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`B&B's fasteners were selected to be used in all the Mars Rovers. B&B is well known to
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`many of the fortune 500 companies who have purchased and used its products sold in
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`conjunction with the mark "SEALTIGHT" including Cessna-Textron Aerospace, L-3
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`Communications, Lockheed Martin, Raytheon, Wesco International, General Dynamics,
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`Northrop Grumman, Medtronics and many more. The "SEALTIGHT" mark is also
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`recognized by numerous government facilities such as China Lake Systems, The Defense
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`Logistics Agency, NASA, and The Naval Air Warfare Center. "SEALTIGHT" fasteners
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`are also used in the Sidewinder missiles, the Alvin and Jason submersibles, avionics
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`displays, insulin injectors, space probes, personal jets, rocket launch pads, supermarket
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`scanners, and numerous other applications that are easily recognized by the general
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`public and purchasers of self-sealing fasteners.
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`
`
`1
`
`
`
`
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`Hargis now comes before the Board claiming fraud and mere descriptiveness in
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`an effort to prevent B&B from (re)registration of its "SEALTIGHT" trademark. These
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`claims are meritless. The district court decision in 2016 regarding fraud in obtaining
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`incontestability is clear error as demonstrated in B&B's JNOV's See Applicant's Exhibit
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`A. and is not preclusive in this matter. (A decision on the JNOV's is still pending with
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`the district court), and the mere descriptiveness claim is precluded by the 2003 and 2007
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`TTAB decisions, and the 2016 finding of the district court that Hargis is guilty of
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`trademark infringement.
`
`
`
`Hargis has no legitimate grounds for this opposition proceeding. First, B&B
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`Hardware, Inc. is undisputedly the Senior user of the trademark "SEALTIGHT". Second,
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`the 2003 TTAB decision acknowledged that the timeframe for Hargis to bring a
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`descriptiveness claim had already tolled. Therefore, it was not a proper ground to be
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`brought before the district court in 2000 and the merely descriptive claim cannot stand.
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`Regardless, the trademark "SEALTIGHT" is suggestive not merely descriptive. Third,
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`B&B owned the registration of the mark "SEALTIGHT" for over 20 years and much of
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`that time it was an incontestable trademark on the principal register, therefore inherent
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`distinctiveness must be assumed. Additionally, Opposer is guilty of likelihood of
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`confusion, Trademark Infringement, False Designation of Origin, and Unfair Competition
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`Under Federal Law.
`
`
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`In the present opposition proceeding Hargis Industries, LP is in essence asking
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`this Board to promote consumer confusion by denying the (re)registration of B&B
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`Hardware, Inc. "SEALTIGHT" trademark. In light of the aforesaid, Applicant, B&B
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`Hardware, Inc., ("Applicant" or "B&B") generally denies Hargis Industries, LP
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`
`
`2
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`
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`("Opposer" or "Hargis") assertion numbers 1-63 as they lack standing in, and/or
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`relevance to an opposition proceeding before the TTAB. The above notwithstanding,
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`Applicant hereby respectfully replies as follows to the numbered assertions that Opposer
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`proffered as grounds for opposition as set forth in Opposer's Notice of Opposition.
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`
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`1.
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`Admitted. Applicant admits that Opposer's product can be classified as self-
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`piercing and self-drilling metal screws and that these screws have been sold for use in
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`metal and post-frame buildings under the name "Sealtite Building Fasteners" for over 20
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`years, and that it is a leader in that market.
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`
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`Denied. Applicant denies any implication that the metal and post-frame market is
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`the only market where the Opposer's products are used, that said fasteners were
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`exclusively sold through "Sealtite Building Fasteners", or that the Opposer had the right
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`to use the "SEALTITE" name in that or any other manner or market. Additionally,
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`Opposer continually fails to mention that like the Applicant's products, the bulk of
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`Opposer's products are also self-sealing fasteners.
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`2.
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`Admitted. Applicant admits that B&B Hardware, Inc. is a California Corporation
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`that uses the name "SEALTIGHT" in the fastener market throughout the entire United
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`States in conjunction with its self-sealing fastener products.
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`3.
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`Admitted. Applicant admits that Larry Bogatz registered the mark "SEALTIGHT"
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`for use by B&B to promote its Sealtight Fastener product line, and that the mark
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`"SEALTIGHT" was placed on the Principal Register October 12, 1993.
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`4.
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`Admitted. Applicant admits that in 1990 Larry Bogatz registered the mark
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`"SEALTIGHT" for use by B&B to promote its Sealtight Fastener product line, and that
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`
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`3
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`
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`the "SEALTIGHT" Registration No. 1,797,509 was officially assigned to B&B
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`Hardware, Inc., in August, 1999.
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`5.
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`Admitted. Applicant admits that B&B didn't receive notification of renewal from
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`their attorneys, and therefore failed to file a section 8 declaration. As a result B&B's
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`"SEALTIGHT" Registration No. 1,797,509 was cancelled.
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`
`
`Denied. Applicant denies that the date of cancellation was October 13, 2013.
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`Upon information and belief the official date of cancellation was February 29, 2016. See
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`Applicant's Exhibit B.
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`6.
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`Denied. Applicant denies Opposer's recitation of events and any implication of
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`lack of forthrightness.
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`
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`Admitted. Applicant admits that based upon information and belief the
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`"SEALTIGHT" registration was cancelled on February 29, 2016. See Applicant's
`
`Exhibit B.
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`7.
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`8.
`
`Admitted.
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`Denied. Applicant denies the contention that Hargis or Hargis' council actually
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`attempted to contact B&B.
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`
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`Admitted. Applicant admits that on March 5, 1997 Hargis filed a petition to
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`cancel B&B's "SEALTIGHT" trademark on the grounds of abandonment.
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`9.
`
`Admitted.
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`10.
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`Denied. Applicant denies Opposer's recitation of events.
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`
`
`Admitted. Applicant admits that it filed a complaint against Hargis in June, 1998
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`and trademark infringement was an element of said complaint.
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`
`
`
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`4
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`
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`11-15. Admitted. Applicant admits the allegations of paragraphs 11-15.
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`
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`Denied. Applicant denies any implication that the 2000 decision has any effect in
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`this opposition proceeding.
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`16.
`
`Admitted.
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`17.
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`Denied. Applicant denies that abandonment was the only claim by Hargis when
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`the Board resumed the cancellation proceedings. Hargis had amended its original petition
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`to cancel relying upon its false first use date of June 20, 1989, now claiming to be senior
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`user of the mark. Hargis had falsely filed a motion for sanctions accusing B&B of
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`refusing to provide discovery with full knowledge that Hargis had made an agreement
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`with B&B to extend that discovery period before the TTAB. Hargis' false motion for
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`sanctions resulted in the cancellation of B&B's trademark "SEALTIGHT". B&B filed a
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`motion for reconsideration with the TTAB informing the TTAB of the agreement to
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`extend the discovery period. The TTAB then granted B&B's motion, reinstated B&B's
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`mark, and stayed the cancellation proceedings.
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`
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`Admitted. Applicant admits that when the cancellation proceedings resumed on
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`December 6, 2001, Hargis had not yet made a claim of descriptiveness before the TTAB.
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`18.
`
`Admitted.
`
`19.
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`Admitted. Applicant admits in its July 1, 2002 order the TTAB originally allowed
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`Hargis to amend its cancellation petition to include a descriptiveness claim and based
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`upon the 2000 district court decision granted cancellation of B&B's "SEALTIGHT"
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`trademark. This temporary cancellation of B&B's "SEALTIGHT" trademark made it
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`possible for Hargis' "SEALTITE" application to be approved on August 29, 2002 and it
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`proceeded to publication.
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`
`
`5
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`
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`20.
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`Admitted.
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`21.
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`Admitted.
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`22.
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`Admitted. Applicant admits that B&B filed a second complaint against Hargis on
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`August 4, 2006 for trademark infringement, unfair competition, false designation of
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`origin under the Lanham Act, and a state-law unfair competition claim.
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`23.
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`Admitted. Applicant admits that B&B filed a declaration of incontestability.
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`
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`Denied. Applicant denies that it would have been precluded by the 2000 trial from
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`bringing the second complaint without filing the declaration of incontestably, or that the
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`claims decided in the first trial were the same as those in the second.
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`24.
`
`Admitted.
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`25.
`
`Admitted.
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`26.
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`Admitted. Applicant admits that on August 28, 2007 the TTAB determined a
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`likelihood of confusion exists between B&B's registered "SEALTIGHT" trademark and
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`the mark "SEALTITE" as specified in Hargis' trademark application.
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`27.
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`Denied. Applicant denies Opposer's recitation.
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`
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`Admitted. Applicant admits that the 2000 District Court decision did not prevent
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`B&B from filing the opposition to Hargis' "SEALTITE" trademark application.
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`28.
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`Denied. Applicant denies Opposer's recitation. Applicant denies that B&B could
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`not have relied on common law rights.
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`
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`Admitted. Applicant admits that common law rights were not a necessary
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`requirement for B&B to proceed with the opposition proceeding against Hargis.
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`29.
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`Denied. Applicant denies Opposer's recitation. The TTAB quote that Opposer
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`cites is taken out of context and had no bearing upon the TTAB's likelihood of confusion
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`
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`6
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`
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`determination. Furthermore, it is not now relevant as a ground to the current opposition
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`proceeding as appears to be implied by Opposer.
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`30.
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`Admitted. Applicant admits that in 2010 the District Court for the Eastern District
`
`of Arkansas refused to give preclusive effect to the TTAB's 2007 likelihood of confusion
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`decision.
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`31.
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`Admitted.
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`32.
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`Admitted.
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`33.
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`Admitted.
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`34.
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`Denied. Applicant disagrees with Opposer's recitation.
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`
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`Admitted. Applicant admits that all of B&B's 2010 post trial motions were
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`denied. The Court also awarded Hargis attorneys fees and denied B&B's request to
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`reduce the portion of those fees pertaining to the 2009 Appeal which B&B won.
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`35.
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`Admitted. Applicant admits that B&B appealed the adverse judgment of the
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`district court arguing: 1. The TTAB finding on confusion is preclusive, 2. In the
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`alternative, the TTAB finding on confusion should be admitted and given deference, 3. In
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`the alternative, the TTAB finding on confusion is admissible as relevant evidence.
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`36. Admitted.
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`
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`37.
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`Admitted. Applicant admits that B&B sought and secured a writ of certiorari in
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`the U.S. Supreme Court; however, the actual questions before the court were: "1.
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`Whether the TTAB's finding of a likelihood of confusion precludes Hargis from
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`relitigating that issue in infringement litigation, in which likelihood of confusion is an
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`element. 2. Whether, if issue preclusion does not apply, the district court was obliged to
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`
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`7
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`
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`defer to the TTAB's finding of a likelihood of confusion absent strong evidence to rebut
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`it."
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`38.
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`Denied. Applicant denies that the "SEALTIGHT" registration was cancelled on
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`October 13, 2013. Instead, upon information and belief the "SEALTIGHT" registration
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`was not cancelled until February 29, 2016. See Applicant's Exhibit B. Applicant denies
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`any implication that it misrepresented or withheld information regarding the cancellation.
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`Regardless, it is clear that the TTAB determined there is a likelihood of confusion
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`between the "SEALTIGHT" and "SEALTITE" marks, and both the U.S. Supreme Court,
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`and the Eighth Circuit Court of Appeals acknowledged its preclusive effect in this matter.
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`B&B failing to timely file a maintenance on its "SEALTIGHT" trademark registration
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`does not alter this conclusion.
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`39.
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`Admitted.
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`40. Admitted.
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`41-45. Denied. Applicant denies Opposer's recitation of events and the allegations of
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`these paragraphs. Applicant denies that the district court properly applied the Appellate
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`Courts directions and as a result B&B filed a motion for mistrial before the Court. B&B
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`has since filed its JNOV motion where B&B demonstrates as a matter of law the decision
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`of the court is clear error. The events specified here by Opposer are misleading and
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`inaccurate. The District Court has not yet ruled on B&B's JNOV motion. See Applicant's
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`Exhibit A.
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`
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`46.
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`Denied. Applicant disagrees with Opposer's recitation.
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`
`
`8
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`
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`
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`Admitted. B&B filed a new application for the mark "SEALTIGHT" on March 3,
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`2016 when Applicant discovered that B&B's mark "SEALTIGHT" was cancelled on
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`February 29, 2016 for failure to file a section 8 declaration.
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`47-50. Denied. Applicant denies Opposer's recitation of events and the allegations of
`
`these paragraphs. Applicant's mark "SEALTIGHT" is suggestive, not descriptive, or
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`merely descriptive and therefore applicant denies all of opposers allegations to the
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`contrary.
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`
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`Hargis was aware of B&B's use of the "SEALTIGHT" trademark when he first
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`filed an application falsely claiming a first use date of June 20, 1989, in order to predate
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`B&B’s first use date of "SEALTIGHT". When the PTO denied Hargis' application based
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`upon a likelihood of confusion with B&B's registered trademark, Hargis filed a
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`cancellation proceeding claiming abandonment. The TTAB easily discovered this was
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`not true and notified B&B of the cancellation proceeding. Then, Hargis amended its
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`cancellation petition claiming to be Senior User and relying upon its stated false first use
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`date of June 20, 1989.
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`
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`When Hargis discovered that they could not appropriate B&B's suggestive
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`"SEALTIGHT" mark, they tried to make it of no value by claiming it was merely
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`descriptive of B&B's products so that they could continue to use their mark without
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`consequence. Hargis knew the "SEALTIGHT" mark was not descriptive, and that the
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`TTAB who are experts on trademark law would acknowledge that truth. That is why
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`Hargis chose to wait until after the time had tolled for making that claim, so they could
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`make that argument for the first time to a jury who did not understand trademark law. (Or
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`as the TTAB stated on page 5 of its June 13, 2003 decision Hargis "actually knew the
`
`
`
`9
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`
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`basis for bringing a descriptiveness claim when it filed the original petition but likely
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`chose not to do so.")
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`
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`Hargis claimed before the jury in 2000 the same inaccurate theory they are now
`
`claiming before this Board that because the "SEALTIGHT" trademark has an element of
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`descriptiveness it is a merely descriptive mark. If that were the actual criteria it would
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`eliminate suggestive marks altogether. As there is an element of descriptiveness in every
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`suggestive trademark or there would be nothing to suggest.
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`
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`Furthermore, Hargis filed an application for the trademark "SEALTITE" on the
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`principal register not the supplemental register, and has fought long and hard to eliminate
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`B&B's trademark "SEALTIGHT" so Hargis could get the mark "SEALTITE" registered.
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`Hargis' own actions bear witness to the truth that the "SEALTIGHT" trademark is
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`suggestive instead of descriptive, and is of great value. See Affirmative Defense #7
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`"SEALTIGHT" is a Suggestive Trademark.
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`51.
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`Denied. The very reason Hargis has attempted
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`to appropriate B&B's
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`"SEALTIGHT" trademark is because Applicant has developed a reputation as being the
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`source for and provider of the highest quality self-sealing fasteners in the world. B&B
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`has spent hundreds of thousands of dollars advertising its "SEALTIGHT" trademark and
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`has established considerable good will in the "SEALTIGHT" mark. As a result the
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`trademark "SEALTIGHT" is well known in the fastener industry in conjunction with
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`B&B Hardware, Inc's self-sealing fastener products. It is because of this reputation that
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`B&B's fasteners were selected to be used in all the Mars Rovers. Many of the fortune 500
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`companies have purchased B&B's self-sealing faseners and have come to recognize the
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`"SEALTIGHT" trademark as a representation of B&B's self-sealing fastener products.
`
`
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`10
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`
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`52-60. Denied. Applicant denies Opposer's recitation of events and the allegations of
`
`these paragraphs. Although the parties in the 2000 trial are the same as those here,
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`Applicant denies that law-of-the-case doctrine applies to the 2000 decision. Furthermore,
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`Applicant denies that the 2000 trial has any bearing on the present proceedings, and
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`certainly is not preclusive. Either the validity of B&B's "SEALTIGHT" trademark
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`Registration (No. 1,797,509) cannot be challenged on grounds of descriptiveness because
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`it was in use more than 5 years before the issue of descriptiveness was raised (as the 2003
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`TTAB decision concluded) and therefore maintains incontestable status, or B&B's
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`"SEALTIGHT" trademark Application (No. 86/927,791) is a new mark which is clearly a
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`suggestive mark as addressed in the previous answer (47-50) and affirmative defense #7.
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`Either way, registration of the "SEALTIGHT" trademark to B&B is not barred by the
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`decision of the 2000 district court trial and should be registered.
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`
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`On May 19, 2000, an order was entered in the district court, in B&B Hardware,
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`Inc. v. Hargis Industries, Inc. No. 4: 98CV00372, a jury verdict that determined
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`"SEALTIGHT" to be merely descriptive and without secondary meaning. The case was
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`dismissed with prejudice, but the Court did not order the registration of "SEALTIGHT"
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`cancelled pursuant to 15 U.S.C.§ 1119, thus the action had no impact on the validity of
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`the "SEALTIGHT" trademark, ownership, right to register or keep the same on the
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`register. After the Eighth Circuit appeal of the 2000 trial, Hargis reopened the 1997
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`cancellation proceeding in the TTAB and on December 20, 2001 filed a second amended
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`petition to cancel to add a claim that the "SEALTIGHT" trademark was merely
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`descriptive. See Applicant's Exhibit C. On May 22, 2003 Hargis filed an MSJ in the
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`
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`11
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`
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`opposition proceeding relying upon the 2000 district court decision. However, under 15
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`U.S.C. § 1064, an allegation of mere descriptiveness cannot be grounds for cancellation
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`when the trademark at issue is more than five years old. The TTAB therefore denied
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`Hargis’s motion to amend and in August 2004 dismissed Hargis’s petition recognizing
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`that B&B’s "SEALTIGHT" registration turned five years old on October 12, 1998. See
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`Applicant's Exhibit D.
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`
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`On June 13, 2003, The TTAB Acknowledged the "SEALTIGHT" Trademark
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`Cannot Be Challenged On Grounds of Mere Descriptiveness, and Therefore Dismissed
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`Hargis’s Petition To Cancel The "SEALTIGHT" Registration. See Applicant's Exhibit
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`E. Accordingly, the TTAB reinstated the "SEALTIGHT" trademark registration to the
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`Principal Register of the PTO where it remained until February 29, 2016. Id.
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`"incontestable trademarks-- those that have not been successfully challenged within five
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`years of registration, see 15 U.S.C. § 1065--are presumed to be strong marks" (emphasis
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`added) AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004).15 U.S.C.
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`§1052(f) States: "The Director may accept as prima facie evidence that the mark has
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`become distinctive, as used on or in connection with the applicant’s goods in commerce,
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`proof of substantially exclusive and continuous use thereof as a mark by the applicant in
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`commerce for the five years before the date on which the claim of distinctiveness is
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`made." (See Page 10 of the 2016 Order Denying Hargis MSJ) See Applicant's Exhibit
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`F. "A registered mark provides constructive notice of the registrant's exclusive claim of
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`ownership when that mark appears on the principal register. 15 U.S.C. § 1072. Even if
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`that registration is subsequently cancelled for nonrenewal, the constructive notice that
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`other users had of the registrant's mark does not disappear. See, e.g., Action Temp. Serv.,
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`
`
`12
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`
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`Inc. v. Labor Force, Inc., 870 F.2d 1563, 1566 (Fed. Cir. 1989)." (Emphasis added) (See
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`page 11 of the 2016 Order denying Hargis MSJ) See Applicant's Exhibit F. "B&B's
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`registration was not cancelled because it was obtained improperly, but merely expired
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`when it failed to renew."
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`61.
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`Denied. Hargis has no ownership rights in the "SEALTITE" mark, and therefore
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`can claim no injury. Hargis here is claiming that (re)registration of the mark
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`"SEALTIGHT" to B&B is a source of damage to Hargis. Yet in the 2016 trial, Hargis
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`claimed that the trademark "SEALTITE" was not that important to their business, and
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`they could have just as easily used the mark "Blue Cheese" for its fasteners. Applicant
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`respectfully states that if Hargis had adopted "Blue Cheese" as its mark, it would have
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`saved itself and B&B the costs of over 20 years of litigation and would have prevented
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`instead of promoted consumer confusion between the marks "SEALTIGHT" and
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`"SEALTITE" in the marketplace. In fact, had Hargis chosen to use any mark other than
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`"SEALTITE" there would not have been any dispute between the B&B and Hargis
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`whatsoever. However, on the contrary Hargis continues to promote consumer confusion
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`by its use of the "SEALTITE" mark, and it is the Applicant instead of Opposer who has
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`been irreparably harmed and will continue to be harmed until the PTO (re)registers the
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`trademark "SEALTIGHT" to B&B.
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`62.
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`Denied. Applicant denies Opposer's recitation. Hargis cried fraud before the U.S.
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`Supreme Court, the Eighth Circuit, and the district court. Hargis now comes before this
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`Board again crying fraud. Hargis’s willingness to haphazardly throw around allegations of
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`fraud, knowing misrepresentation, and bad faith is quite concerning. Allegations of such
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`fraudulent conduct are serious and should not be made lightly. Rombach v. Chang, 355 F.3d
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`164, 171 (2d Cir. 2004) And crying fraud should never be allowed to become a clever
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`litigation strategy that is permitted by this Court. See 6 McCarthy at § 31:77 (4th ed.). Hargis
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`now comes before this Board using the same strategy claiming that B&B somehow submitted
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`a fraudulent declaration of incontestability. That claim is ridiculous. Hargis' claims before the
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`district court were baseless and unsubstantiated by evidence, just as they are now before this
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`Board. Hargis presented no evidence to support its claims before the District Court and the
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`Court should not have allowed it. B&B's JNOV See Applicant's Exhibit A. in great detail
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`has demonstrated why Hargis' claims cannot withstand legal scrutiny.
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`Opposer has been found guilty of trademark infringement and is attempting to use
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`this TTAB opposition proceeding to delay and if possible side step entirely the
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`consequences of its continued infringement. It is B&B and not Hargis who has been and
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`continues to be irreparably harmed by Hargis' use of the "SEALTITE" mark, and that
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`cycle of harm can not end until the PTO (re)registers B&B's trademark "SEALTIGHT".
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`Hargis has no excuse for its continued infringement. Hargis was fully aware of
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`B&B's use of the "SEALTIGHT" mark in 1992, yet Hargis made a calculated business
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`decision to use the mark anyway. Hargis could have chosen a different mark in 1996
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`when the PTO denied Hargis' application based upon likelihood of confusion with B&B's
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`registration, but "chose not to" (page 5 TTAB June 13, 2003 decision) See Applicant's
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`Exhibit E. For more than 20 years, B&B has fought to keep Hargis from using the
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`"SEALTITE" mark, but Hargis still persists.
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`Regardless, Hargis filed this opposition to prevent the (re)registration of the mark
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`"SEALTIGHT" which B&B has owned for over two decades (most of that time it was an
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`incontestable trademark) which from its inception has always been and still is in
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`continuous use in commerce. B&B registered its trademark "SEALTIGHT" to have it
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`protected. Yet, B&B has spent more than 20 years in litigation in an effort to receive that
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`14
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`to which it was entitled to from the beginning. B&B continues to be damaged by Hargis'
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`use of the mark "SEALTITE" and the only way B&B can protect its "SEALTIGHT"
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`trademark is for this Board to end Hargis' unsubstantiated opposition and allow B&B's
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`"SEALTIGHT" trademark to be (re)registered on the USPTO principal register.
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`63.
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`Denied. Hargis has no ownership rights in the "SEALTITE" mark, and therefore
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`can claim no injury. Hargis Industries began using the mark, “SEALTITE,” when it knew
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`doing so was both likely to cause confusion and, in fact, did cause actual confusion with
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`B&B’s registered and incontestable "SEALTIGHT" trademark. To be absolutely clear,
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`Hargis made a calculated business decision to continue to use the “SEALTITE” mark
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`after it admitted that B&B was the senior user of the "SEALTIGHT" trademark—an
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`admission that came only after five years of misrepresentations to the PTO related to
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`Hargis’s first use date of the “SEALTITE” mark.
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`Indeed, Hargis continued to use the “SEALTITE” mark after the PTO’s
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`December 1996 finding of likelihood of confusion (See Applicant's Exhibit G) and after
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`Joe Hargis’s admission that as of December 1996 he knew he had a problem with
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`continuing to use the mark. Hargis continued to use the mark even after Joe Hargis
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`admits he knew of instances of actual confusion in 2000. Hargis continued to use the
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`mark after the TTAB’s June 2003 reinstatement of the "SEALTIGHT" trademark to the
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`Principal Register and dismissal of Hargis’s numerous attempts to cancel the
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`"SEALTIGHT" registration. Even after B&B filed a notice of reliance on the June 2003
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`decision. See Applicant's Exhibit H.
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`
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`Hargis even continued to use the mark after the TTAB’s August 2007 finding of
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`likelihood of confusion. See Applicant's Exhibit I. There can thus be no doubt that
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`15
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`
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`Hargis rolled the dice, betting that B&B would not prevail on its district court claims, and
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`putting its own interests ahead of the public’s interest in being free from confusion and
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`mistake as to source and affiliation of "SEALTIGHT"/"SEALTITE" products.
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`
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`Make no mistake Hargis has filed this opposition before the Board to prevent the
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`(re)registration of B&B's "SEALTIGHT" trademark in an effort to escape the
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`consequences of over two decades of infringement and unfair competition. The public
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`has been continually confused by Hargis's willful infringement, and B&B has been
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`irreparably harmed by Hargis' continued use of the "SEALTITE" mark. This Board
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`should not now reward Hargis' nefarious practices in allowing Hargis to bypass the
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`consequences of over 20 years of continued infringement with its projected illusion of
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`innocence.
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`Affirmative Defenses
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`1. Lack of Standing
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`Opposer lacks the standing requisite to enable it to bring or maintain the present
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`Opposition proceeding, and no valid grounds exist for denying the registration sought by
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`Applicant. Opposer has no protectable or other rights in the term "SEALTITE". First,
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`B&B's trademark "SEALTIGHT" is not merely descriptive. Second, Applicant is Senior
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`user of the trademark "SEALTIGHT". Third, B&B owned the registration of the mark
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`"SEALTIGHT" for over two decades (most of that time it was an incontestable
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`trademark). This trademark "SEALTIGHT" has always been and still is in continuous use
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`in commerce. Fourth, A likelihood of confusion has been established between the
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`16
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`
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`trademark "SEALTIGHT" and Opposer's "SEALTITE" by the TTAB in its 2007 decision
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`See Applicant's Exhibit I., and that decision has been affirmed by the U.S. Supreme
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`Court See Applicant's Exhibit J., and the Eighth Circuit Court of Appeals See
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`Applicant's Exhibit K. Fifth, On remand the district court found Opposer guilty of
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`Trademark Infringement. See Applicant's Exhibit L. Sixth, On remand the district court
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`found Opposer guilty of False Designation of Origin. See Applicant's Exhibit L.
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`Seventh, On remand the district court found Opposer guilty of Unfair Competition Under
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`Federal Law. See Applicant's Exhibit L.
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`
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`Opposer has no right to bring this opposition as they lack the standing to prevent
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`(re)registration of the "SEALTIGHT" trademark. See Lipton Industries, Inc. v. Ralston
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`Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982)
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`For the reasons stated above Applicant respectfully requests that this opposition
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`be dismissed.
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`2. Priority of Use
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`On July 2, 1996 Hargis under penalty of perjury filed the application for the mark
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`"SEALTITE" using the false first use date of June 20, 1989. See Applicant's Exhibit M.
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`Then when Hargis could not proceed with cancelling B&B's "SEALTIGHT" registration
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`based upon abandonment, Hargis later amended its cancellation petition claiming to be
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`Senior User and relying upon its stated false first use date of June 20, 1989. See
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`Applicant's Exhibit N.
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`17
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`Importantly, on June 11, 1999, after maintaining this misrepresentation for almost
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`3 years, Hargis for the first time disclosed that its purported first use date of June 20,
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`1989 was wrong. Rather, Hargis disclosed that the actual date the "SEALTITE" mark
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`was first used in commerce was not until January 1, 1992, long after the May 2, 1990 first
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`use date of B&B's "SEALTIGHT" trademark. It is therefore well established that B&B
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`Hardware, Inc. is undisputedly the Senior user of the trademark "SEALTIGHT".
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`Consequently, Opposer has no right to prevent the (re)registration of the trademark
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`"SEALTIGHT" to Applicant B&B Hardware, Inc.
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`For the reasons stated above Applicant respectfully requests that this opposition
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`be dismissed.
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`3. Likelihood of Confusion
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`The 2007 TTAB decision determined that a likelihood of confusion exists
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`between "SEALTIGHT" and "SEALTITE". It is now without question that a Likelihood
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`of Confusion has been established between the marks "SEALTIGHT" and "SEALTITE"
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`As shown in the following Eighth Circuit decision on remand from the U.S. Supreme
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`Court. (reproduced in its entirety).
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`"This matter is on remand from the United States Supreme Court, see B&B
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`Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). The Court has directed us
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`to apply this rule: "So long as the other ordinary elements of issue preclusion are met,
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`when the usages adjudicated by the TTAB are materially the same as those before the
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`district court, issue preclusion should apply." Id. At 1310. We directed the parties to
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`18
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`submit supplemental briefing. Having reviewed the briefing, we now determine that the
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`ordinary elements of issue preclusion have been met and the usages of the marks
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`adjudicated before the TTAB were materially the same as the usages before the district
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`court. As noted in our prior opinions, the TTAB compared the marks in question in the
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`marketplace context when it determined the likelihood of confusion issue for purpose of
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`trademark registration. See B&B Hardware, Inc. v. Hargis Indus., Inc., 716 F.3d 1020,
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`1025 (8th Cir. 2013); id. At 1029 (Colloton, J., dissenting)
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`Accordingly, we vacate the district court's judgment and remand this matter for
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`further proceedings, including what remedies may be awarded for infringement. See
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`Masters v. UHS of DEL., Inc., 631 F.3d 464, 471 n.2 (8th Cir. 2011); Minn. Pet
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`Breeders, I
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