SCOTUS Ushers in New Year with Trademark Ruling

Posted by on Feb 9, 2015

With the New Year comes new decisions being handed down by the Supreme Court, and there have already been a handful related to intellectual property. You may remember our earlier case preview for Hana Financial v. Hana Bank in which the Supreme Court would decide whether trademark tacking was a question for the judge or jury. The Court issued its unanimous decision in January ruling that tacking is a question of fact to be decided by the jury. (Read the full opinion here)

Tacking is a doctrine that allows a trademark owner to make slight changes to their mark without sacrificing ownership or priority of the original one. This doctrine allows the owner to use the priority date of the earlier mark as the priority date of the altered one, which is important because the party who uses a mark in commerce first is given priority over other users.

A crucial requirement to permit tacking is that the original mark and the modified mark must be “legal equivalents,” meaning that they “create the same, continuing commercial impression.” The Court reasoned that because tacking is viewed from the eyes of an ordinary consumer, it only made sense that a jury should decide whether a mark is the legal equivalent of the other.

The Court made several specific notes regarding its decision, which seem to offer ways around the rule. Specifically, the Court stated that a judge may decide the issue of tacking on a motion for summary judgment or judgment as a matter of law, if the facts of the case permit such. A judge may also answer the question when the parties have opted to try their case before a judge instead of a jury.