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

Under Section 14(3) of the Lanham Act an allegation of fraud on the U.S. Patent and Trademark Office (USPTO) can arise in multiple contexts. A fraudulently obtained registration can be cancelled “at any time” and includes fraudulent filings under Section 8. Filing of a fraudulent declaration of incontestability under Section 15 is an affirmative defense to the “conclusive evidence” of a mark’s validity. The Federal Circuit in two landmark opinions (Bose and Therasense) has devised a comprehensive test for determining fraud. However, the Eighth Circuit and other courts don’t apply this standard. What constitutes fraud as a defense to infringement is a vital issue within trademark jurisprudence that this Court should determine. Subsumed within this point is the fact that the Eighth Circuit insisted on reviewing a Rule 59 motion for plain error. Finally, whether a finding of willfulness is necessary to support disgorgement has been accepted by this Court for review. The outcome is also dispositive here. Thus, the questions are three:

1. Whether the established precedent by the Federal Circuit for the determination of fraud on the USPTO should be adopted as the proper standard for all regional circuit courts and district courts.

2. If the proper filing of a Rule 59 motion requires the circuit court of appeals to apply the abuse of discretion standard of review.

3. Will this Court’s anticipated decision in Romag require reversal on the Eighth Circuit’s treatment of willfulness as a factor in the disgorgement analysis?