Trademark Tacking: An Issue of Fact a Jury (or a Judge) May Decide

In a unanimous decision, the Supreme Court held today that the determination of whether a trademark owner can “tack” a new version of its trademark onto an earlier version of the mark is a question of fact that may be resolved by the jury. Hana Financial, Inc. v. Hana Bank, No. 13-1211.

The doctrine of trademark “tacking” allows a trademark owner to make slight modifications to a mark over time without losing its date of first use. Trademark tacking is available only when the modified marks are considered “legal equivalents” that create the same, continuing, commercial impression.

In a trademark dispute, when the first user of a trademark has rights that are superior to other, later users, the doctrine of tacking can play a pivotal role in the outcome of the case.

After the Ninth Circuit affirmed a jury’s verdict that applied tacking to find that Hana Bank used its allegedly infringing trademark before Hana Financial, and was thus not liable for trademark infringement, Hana Financial turned to the Supreme Court, arguing that juries should never make tacking determinations. The Court rejected Hana Financial Inc.’s four arguments as to why tacking is a legal-intensive analysis that may only be adjudicated by a judge. First, the Court recognized that juries can be trusted to apply the correct legal standard that applies to the doctrine. Second, there was no support for petitioner’s argument that tacking cases create “new law” that will guide further tacking disputes, which is a job reserved solely for judges. Third, the Court dismissed petitioner’s concern that jury determinations on tacking issues would lead to unpredictability. And fourth, the Court declined to agree with the petitioner that judges, and not juries, have historically resolved tacking disputes. Ultimately, because tacking turns on consumer perception, the Supreme Court held that juries are in the best position to determine if marks should be tacked.

Notably, the Supreme Court’s decision does not eradicate a judge’s ability to determine tacking in all situations. While the Court recognized that a jury “should” make this determination, it further explained that “[t]his is certainly not to say that a judge may never determine whether two marks may be tacked.” For example, as in any case where a court settles a claimed fact issue as a matter of law, a judge can properly decide a tacking question on a motion for summary judgment or for judgment as a matter of law, or when the parties have opted to try their case before the bench.