Jan
21

Trademark Tacking Is a Question of Fact to Be Determined by a Jury

Trademark tacking is an obscure doctrine developed by the lower courts wherein a trademark user may make certain modifications to its mark over time while, in limited circumstances, retaining its priority position as the senior user.    Under this doctrine, two marks may be tacked when they are considered to be “legal equivalents,” i.e., they “create the same continuing commercial impression.”  Hana Financial, Inc. v. Hana Bank, et al., No. 13-1211 U.S. Supreme Court, slip opinion at pg. 1 quoting Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (CA Fed. 1991).  Accordingly, consumers would consider the two marks as the same mark.

The issue of trademark tacking generally arises when a party is sued for trademark infringement and the defendant invokes the tacking doctrine as a defense.   There had been a conflict among the circuits as to whether two trademarks may be tacked for purposes of determining priority is a question for the jury or the judge.  The Supreme Court granted certiorari to resolve the conflict by agreeing to hear the Hana Financial case originating from the Ninth Circuit Court of Appeals.   On January 21, 2015 a unanimous U.S. Supreme Court affirmed the lower court and held that the issue of tacking is a question of fact to be decided by the jury.

The decision is not surprising given the fact that trademark law is ultimately intended to protect the consumer from the likelihood of confusion as to the source of a good or service.   Indeed, in reaching its decision, the Court focused on the “commerciality” of trademark law by stating the “[a]pplication of a test that relies upon an ordinary consumer’s understanding of the impression that mark conveys falls comfortable with the ken of a jury.  Indeed we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decision-maker that ought to provide the fact-intensive answer.”  Slip opinion at 4 citing United States V. Gaudin, 515 U.S. 506, 512 (1995).  See also slip opinion at pg. 4 quoting J. McCarthy, Trademarks and Unfair Competition § 17.26, p. 17-71 (4th ed. 2014) (stating that “[c]ommercial impression, like most issues in trademark law, should be determined from the perspective of the ordinary purchaser of these kinds of good or services.”).

 

THIS BLOG IS NOT LEGAL ADVICE AND YOU SHOULD NOT CONSIDER IT AS SUCH.  IT IS FOR INFORMATION PURPOSES ONLY.  IF YOU ARE CONSIDERING AN ACTION THAT MAY HAVE   LEGAL CONSEQUENCES, YOU SHOULD CONSULT WITH AN ATTORNEY OF YOUR CHOOSING.

© 2015 by Troy & Schwartz, LLC.  All Rights Reserved.

 

 

Posted in Intellectual Property Law, Trademark Law - Current Issues on January 21,2015 01:01 PM
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