Trademark Usage: Tacking is A Jury Question

It has been a decade since the United States Supreme Court took and decided a case on substantive trademark law. So, it’s worth noting when it does. On January 21, 2015, the Court issued a unanimous decision in Hana Financial, Inc. vs. Hana Bank, et. al.The question presented, and answered was whether a judge or jury should determine if “tacking” is available to prove trademark priority in a given case.

Trademark rights generally arise from actual use of a mark in commerce in connection with particular goods or services. Trademark usage may change over time, but where each iteration of a trademark is the legal equivalent of its predecessor, then prior use may be “tack on” to determine who used the trademark first. Various circuits have determined that a trademark owner may claim priority in a mark based on the first use date of a similar but technically distinct mark, if the previously used mark is the “legal equivalent” of the current version of the trademark, such that consumers would consider both versions of the trademark to be indistinguishable. But, who (the presiding judge or the jury) decides whether different uses are legal equivalents?

Justice Sotomayor authored the Supreme Court’s opinion, which stated that “because the tacking inquiry operates from the perspective of the ordinary purchaser or consumer, we hold that a jury should make this determination.”

Therefore, because the applicable test is dependent upon an “ordinary consumer’s” impression of a trademark, the Supreme Court stated that the application of such a test “falls comfortably within the ken of a jury,” as is the case in other areas of law when the relevant question is how an ordinary person would make an assessment of a fact-intensive answer.

One outcome of this decision is that cases in which tacking is an issue also will likely be more expensive to litigate, since parties are more likely to rely on survey evidence.

The full case may be found here: http://www.supremecourt.gov/opinions/14pdf/13-1211_1bn2.pdf

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