The parties have a long and unique history that is important to understand the case. B&B Hardware sells a variety of fasteners in various industries under the mark “Sealtight.” Hargis sells fasteners exclusively used for portable buildings under the trademark “Sealtite.” B & B received a federal trademark registration, and the parties engaged in lengthy TTAB proceedings when Hargis tried to register its mark. In 1997, B & B filed suit for trademark infringement.

The jury returned a verdict for Hargis, finding that Sealtight was merely descriptive, and that judgment was affirmed in B & B Hardware, Inc. v. Hargis Industries, Inc., 252 F.3d 1010 (8th Cir. 2001). Hargis did not petition to cancel “Sealtight.” In 2006, “Sealtight” became incontestable, which eliminated the merely descriptive defense. B & B filed the instant action, and Hargis moved to dismiss on grounds of res judicata.

The court agreed with Hargis that incontestability alone does not create an exception to res judicata. The court held that while incontestability affects a trademark’s validity, it has no bearing on a trademark’s strength, and that the only recognized exception to res judicata for trademark infringement is a significant increase in strength over a significant amount of time. See Test Masters Educational Services v. Singh, 428 F.3d 559 (5th Cir. 2005). B & B failed to establish either of these two factors, and the court dismissed the complaint.