Several years ago, B&B Hardware, a fastener manufacturer and holder of a federally registered trademark, filed a trademark infringement case against a competing manufacturer. At trial, the jury found that B&B Hardware’s trademark was merely descriptive and had not acquired a secondary meaning, and therefore it was not entitled to protection. Judgment was entered against B&B Hardware.

Shortly thereafter, the competitor filed to register the same mark in its own name with the US Patent and Trademark Office. B&B Hardware hired Foley, Bezek, Behle & Curtis, LLP, who promptly went to work opposing the competitor’s application to register the mark. After a trial before the Trademark Trial and Appeal Board, FBB&C prevailed and the competitor was denied registration of the trademark. FBB&C then filed a new trademark infringement action against the competitor. The District Court initially dismissed the claim, stating that B&B Hardware had already had its day in court.

An appeal was taken to the Eighth Circuit Court of Appeals. In a victorious turnaround, the Court of Appeals reversed dismissal vindicating FBB&C’s position and analysis. The Court held that because B&B Hardware’s mark had become incontestable, it could no longer be challenged for mere descriptiveness. With its claims resurrected, B&B Hardware is now positioned to obtain profits and damages from the competing manufacturer whose sales of infringing products exceed $25,000,000.