David Lilenfeld Blog The intellectual property blog of David Lilenfeld


Supreme Court Tackles Trademark Tacking

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.”



B&B Hardware Trademark Case Gives TTAB a Boost

B&B Hardware Inc. v. Hargis Industries Inc. come from the District Court for the Eastern District of Arkansas and then the Eight Circuit Court of Appeals. Justice Alito wrote the opinion for the Supreme Court of the United States.

B&B Hardware (“B&B”) sells a fastener for the aerospace industry, called SEALTIGHT, which was federally registered in 1993. The opposing party, Hargis Industries (“Hargis”) sells self-drilling screws under the mark SEALTITE in the construction industry. B&B took action.


The Trademark Trial and Appeal Board (“TTAB”) found a likelihood of confusion between the trademarks. On appeal, the district court chose not to give deference to the TTAB ruling because TTAB is not an Article III court, which helped Hargis prevail at in the district court.

The U.S. Court of Appeals for the Eighth Circuit agreed that the district court was not required to give deference to TTAB’s decision.

The question presented to the Supreme Court was whether a finding of a likelihood of confusion by the Trademark Trial and Appeal Board preclude re-litigation in federal court?

In a 7-2 decision, the Supreme Court held that re-litigation is frequently precluded and, on appeal, deference should ordinarily be given to TTAB’s ruling. The Court reasoned that when parties have had adequate opportunity to litigate an issue and an administrative agency properly resolves the issue, re-litigation is precluded unless Congress has indicated otherwise. The Court next determined that nothing in federal trademark law prohibited issue preclusion. The Court also held that TTAB’s ruling satisfied the ordinary elements for claim preclusion: (1) likelihood-of-confusion standards for registration and infringement are the same; (2) no reason to doubt the quality, extensiveness, or fairness of the agency’s procedures, and (3) parties are likely to treat both contested registration and infringement seriously.

So, convincing TTAB you are right, could be a great first step. “Filing an opposition or cancelation proceeding with TTAB is typically quicker and less expensive than filing a district court lawsuit,” said David Lilenfeld of Lilenfeld PC, an intellectual property attorney in Atlanta, Georgia. “Now that preclusive effect is confirmed, trademark owners have another compelling reason to file with TTAB.”


David Lilenfeld — “Legal Elite” Honor

David Lilenfeld, founding partner of Lilenfeld PC, was named Georgia Trend’s 2012 Legal Elite in Intellectual Property law.  "Legal Elite" are  based on votes cast by thousands of Georgia attorneys.


Social Media Pitfalls — David Lilenfeld’s Perspective

David M. Lilenfeld talks about the legal pitfalls of social media -- and gives tips for avoiding them.


David Lilenfeld — Equity Crowdfunding Leader

In this article, David M. Lilenfeld comments about being one of the first equity crowdfunding portals in Georgia.


David Lilenfeld Comments on New Crowdfunding Rules

David Lilenfeld comments on new crowdfunding rules released by the Securities and Exchange Commission.


David M. Lilenfeld Interviewed About Crowdfunding

Here is an article and video showing David Lilenfeld talking about the importance of crowdfunding for the State of Georgia.


Story About David Lilenfeld Discussing Crowdfunding — Hunter College

Here is an article about David Lilenfeld and a speech he gave about the future of crowdfunding.  The article appeared on the website of Hunter College.


Presumption of Irreparable Harm Disappears – discussion led by David Lilenfeld

In its 2006 decision eBay Inc. v. MercExchange, L.L.C. (547 U.S. 388), the United States rejected a long-standing general rule in patent infringement cases.  That general rule had trial courts favoring granting permanent injunctions (i.e., orders requiring a party to refrain from certain activities) against alleged patent infringers.  This favor developed because irreparable harm -- a requirement in most other types of cases in which a permanent injunction is sought -- was presumed to exist in if the court (or jury) found patent infringement.  The new rule, according to this case, has trial courts applying the traditional, four-factor permanent injunction used in most case to patent infringement cases. In other words, irreparable harm is no longer presumed; rather, it has to be proven.

David Lilenfeld, founder of Lilenfeld PC, moderated a panel discussion in which the participants discussed how the MercExchange case has changed the way permanent injunctions are sought and the frequency with which they are granted.  The panel also features Ronald T. Coleman Jr., of Parker Hudson Rainer & Dobbs; Ann G. Fort, of Sutherland; and Frank G. Smith III, of Alston & Bird.


Interview About Trademark and Copyright Rights, David M. Lilenfeld

Here Diane Bogino of Georgia Business Network Directory interviews Atlanta-based intellectual property lawyer David Lilenfeld, founder of Lilenfeld PC.

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