Yesterday, the Supreme Court issued its opinion in Hana Financial, Inc. v. Hana Bank, No. 13-1211. The issue presented was whether the judge or the jury should determine whether two trademarks may be “tacked” for purposes of determining priority. The Supreme Court affirmed the Ninth Circuit’s decision that tacking is a question of fact for the jury.

Trademark rights are established as of a mark’s priority date—the date on which an unregistered mark is first used or the date on which an intent-to-use application is filed. The priority date is important in trademark disputes because the party with prior rights can stop the use of confusingly similar marks. Under the tacking doctrine, a trademark owner may, “in limited circumstances,” make narrow modifications to its mark over time while still retaining its priority date. The original and revised marks may be “tacked” when they are considered to be “legal equivalents” such that they “create the same, continuing commercial impression,” and the later mark does not materially differ from or alter the character of the earlier mark. “Commercial impression” must be viewed through the eyes of an ordinary consumer. The Supreme Court held in Hana that “[b]ecause the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, . . . a jury should make this determination.”