Trademark Tacking and the Landscape of Priority Disputes

Shareholder Craig Hilliard, member of the firm’s Litigation Group and Chair of the Intellectual Property Group, authored the article, Trademark Tacking and the Landscape of Priority Disputes, which was published in The Legal Intelligencer on April 14, 2015. The article discusses at length the recent U.S. Supreme Court Case Hana Financial v. Hana Bank, trademark law, trademark tacking and owners priority.

A trademark, according to Cornell University Law School, is the right to adopt and use “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.” The tacking doctrine allows the owner of a trademark to make changes to the trademark over time and still retain owners priority. However, the changes made must still “create the same continuing commercial impression.”

Mr. Hilliard points out that the Hana Financial decision “resolved a split among the federal circuit courts by holding that juries, rather than judges, should ordinarily decide whether a trademark owner can ‘tack’ together different marks for the purpose of establishing priority.” What this means is that the Supreme Court concluded that juries are best to determine a tacking issue because they can best determine if a trademark presents the same “continuing commercial impression.” 

For a more in-depth analysis, read the full article here.