David Lilenfeld Blog The intellectual property blog of David Lilenfeld

18Jan/160

Supreme Court Tackles Trademark Tacking

By David Lilenfeld on January 18, 2016

Trademark tacking – not a term you’ll hear very often.  But the Supreme Court of the United States tackled the topic earlier this year in Hana Financial, Inc. v. Hana Bank, (9th Cir. 2013) 735 F.3d 1158, 1163-1164, cert. granted, 134 S. Ct. 2842 (2014) and aff’d, 135 S. Ct. 907 (2015).

When a trademark owner re-brands, a brand new trademark is typically introduced.  But what if a trademark owner tweaks its brand – is it a new youthful trademark, or just a freshened-up version of the old trademark?  This is where “trademark tacking” comes into play.  Trademark tacking allows a trademark owner to “tack on” the period of time it used the older trademark to the new youthful trademark, so that the new trademark has the benefit of the Date of First Use of the older trademark. The Supreme Court reiterated that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.”  The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”

“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”

 

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