The National Law Review reports that the U.S. Supreme Court issued a ruling this week in Hana Financial, Inc. v. Hana Bank, No. 13–1211, holding that the question of whether two trademarks may be tacked for the purposes of determining priority is a question of fact for the jury, rather than the judge. The ruling affirmed an earlier decision by the Ninth Circuit reaching the same conclusion. The opening paragraph of the Court’s opinion provides a nice overview of both the tacking doctrine and the holding of the case:
Rights in a trademark are determined by the date of the mark’s first use in commerce. The party who first uses a mark in commerce is said to have priority over other users. Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark. This doctrine is called “tacking,” and lower courts have found tacking to be available when the original and revised marks are “legal equivalents” in that they create the same, continuing commercial impression. The question presented here is whether a judge or a jury should determine whether tacking is available in a given case. Because the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, we hold that a jury should make this determination.
Reposted from The National Law Review.