B&B Hardware, v. Hargis Industries, 00-2542

• Decision Date: 09 April 2001
• Docket Number: No. 00-2542,00-2542
• Citation: 252 F.3d 1010
• Parties: (8th Cir. 2001) B&B HARDWARE, INC., APPELLANT, v. HARGIS INDUSTRIES, INC., DOING BUSINESS AS SEALTITE BUILDING FASTENERS, APPELLEE. Submitted:
• Court: U.S. Court of Appeals — Eighth Circuit

Page 1010

252 F.3d 1010 (8th Cir. 2001)

B&B HARDWARE, INC., APPELLANT, v. HARGIS INDUSTRIES, INC., DOING BUSINESS AS SEALTITE BUILDING FASTENERS, APPELLEE.

No. 00-2542

UNITED STATES COURT OF APPEALS FOR THE EIGHTH CIRCUIT

Submitted: April 9, 2001

Filed: June 11, 2001

Appeal from the United States District Court for the Eastern District of Arkansas.

Before Wollman, Chief Judge, Murphy, Circuit Judge, and Piersol, ¹ Chief Judge.

Wollman, Chief Judge

B&B Hardware, Inc. (B&B) appeals from the district court's ² entry of judgment on a jury verdict in favor of Hargis Industries, Inc., d/b/a/ Sealtite Building Fasteners, on B&B's trademark infringement claim. We affirm.

I.

B&B designs, manufactures, and markets self-sealing fasteners, including nuts, bolts, screws, rivets, and washers, under the mark of "Sealtight." In May of 1990, Larry Bogatz, co-founder of B&B, filed an application to register "Sealtight," and in January of 1992, the Patent and Trademark Office (PTO) notified B&B that "Sealtight" was eligible for federal trademark registration. The mark was placed on the Principal Register of the PTO on October 12, 1993.

Sealtite Building Fasteners (SBF), a division of Hargis Industries, Inc. (Hargis), manufactures a line of self-drilling and self-tapping screws and other fasteners that are frequently used to construct metal buildings. In June of 1996, Joe Hargis, acting on behalf of SBF, filed an application with the PTO to register the mark "Sealtite." The PTO refused to register "Sealtite," however, because of the likely confusion with B&B's trademark "Sealtight." Mr. Hargis did not challenge the PTO's decision, but in March of 1997, he filed a petition to cancel B&B's registration, citing abandonment and, in an amended petition, priority of use. In response, B&B initiated the present action and filed a motion to stay the PTO proceedings. Although the parties recite differing accounts of the ensuing events, the record reflects that the PTO cancelled B&B's registration on October 19, 1999, and reinstated the trademark approximately three months later.

The federal court action proceeded to trial, where Hargis argued, inter alia, that B&B's "Sealtight" mark was merely descriptive, rather than suggestive, and was therefore not entitled to trademark protection. Although B&B's amended complaint alleged common law trademark infringement, breach of contract, fraud, deceptive trade practices, and trademark infringement under the Lanham Act, 15 U.S.C. 1117, B&B voluntarily dismissed the common law actions at the close of evidence, and only the Lanham Act claim proceeded to the jury. During deliberations, the jury repeatedly requested additional information regarding the definitions of descriptive and suggestive marks and eventually informed the court that it was unable to reach a decision. After an Allen instruction, Allen v. United States, 164 U.S. 492, 501 (1896), failed to break the deadlock, the parties agreed to accept a less-than-unanimous verdict. The jury subsequently returned an 11-1 verdict in favor of Hargis, concluding, in part, that "Sealtight" was a descriptive, rather than a suggestive, mark. The court entered judgment accordingly.

II.

B&B's sole contention on appeal is that the district court's jury instructions unfairly commented on the evidence and bolstered the testimony of a trial witness. Specifically, B&B challenges jury instruction eleven, which directed, in relevant part:

A suggestive mark is one which employs terms which do not describe but merely suggest the feature of a product. It requires the purchaser to use his or her imagination to reach a conclusion as to the nature of the product. Examples of a suggestive mark include Gleem for the name of a toothpaste and Roach Motel for the name of a pesticide. Suggestive marks are entitled to broad trademark protection.

B&B argues that the court's use of "Roach Motel" was unfair because Walter Ames, an attorney who served as an expert witness for Hargis, testified at trial that "Roach Motel" was an example of a suggestive mark. B&B contends that the jury may have interpreted the district court's use of "the precise example" of a suggestive mark offered by Ames as an implicit endorsement of Ames's testimony as a whole, including his expressed opinion that "Sealtight" was merely a descriptive mark and therefore not entitled to trademark protection. B&B argues that in light of the jury's apparent difficulty in understanding the distinctions between suggestive and descriptive marks, and because the issue was critical to the resolution of the case, a new trial is warranted. We disagree.

The parties dispute whether B&B preserved the issue of instructional error. Because B&B's claim fails under both a plain error analysis and the less-rigorous abuse of discretion standard, however, we conclude that we need not determine whether the alleged error was properly preserved.

Under an abuse-of-discretion standard of review, we must determine whether the instructions, taken as a whole and viewed...