In a 9-0 decision authored by Justice Sotomayor, the Supreme Court held on January 21, 2015 that trademark tacking is a question of fact, which should be decided by a jury.[1] The case, Hana Financial, Inc. v. Hana Bank, sought to resolve the circuit split regarding this issue of whether a judge or a jury should decide the issue of trademark tacking. Most circuits, including the Ninth Circuit from which Hana was appealed, evaluate trademark tacking as a question of fact to be decided by a jury.[2] However, the Federal and Sixth Circuits evaluate tacking as a question of law.[3]

As discussed in an earlier Snippets article,[4] trademark rights are based on use; a party to first use a mark is said to have “priority” and may sue later users for trademark infringement.[5] The doctrine of trademark tacking allows a party to claim an earlier priority date in narrow circumstances where two marks are “legal equivalents,” meaning that they “create the same, continuing commercial impression” such that consumers “consider both as the same mark.”[6]

In holding that trademark tacking is an issue for the jury to decide, the Supreme Court noted that “[a]pplication of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury.”[7] However, the Court clarified that this decision does not mean “that a judge may never determine whether two marks may be tacked” noting that “[i]f the facts warrant it, a judge may decide a tacking question on a motion for summary judgment or for judgment as a matter of law” and “if the parties have opted to try their case before a judge, the judge may of course decide a tacking question in his or her factfinding capacity.”[8] Thus, the Court narrowly held that “when a jury trial has been requested and when the facts do not warrant entry of summary judgment or judgment as a matter of law, the question whether tacking is warranted must be decided by a jury.”[9]

As the Supreme Court decided this decision narrowly, i.e., applied its holding specifically to trademark tacking and to no other area of trademark law, its decision is unlikely to have much of an impact on trademark litigation practice as a whole, as tacking is but a small area of trademark law. Moreover, tacking was already decided by a jury in most circuits.[10] However, trademark owners should be careful when modernizing the appearance of their trademarks in order to make sure that they maintain and protect the traditional elements and commercial impression of their existing marks so that any jury, should the marks be litigated, will have no difficulty in finding them to be legal equivalents.