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To Tack or Not To Tack, that is the (Trademark) Question

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A month ago, the U.S. Supreme Court came down with its first pure trademark matter opinion in many years (false advertising cases are in a separate category for the purposes of this article). The trademark bar was all a twitter—literally (tweeting through Twitter) and figuratively. But for the average consumer, and even sophisticated business executive, it might seem all "much ado about nothing."

So what was the case about, what is tacking, and why should you care?

The case is Hana Financial, Inc. v. Hana Bank et al., and in it, the Supreme Court determined only one issue: is tacking a question of law (judge determined) or a question of fact (jury determined). The Supreme Court determined that existence of tacking is to be determined by a jury (or if the parties agree, a judge and assumed that the case did not warrant disposition on summary judgment).

In the U.S., the party that has priority (first use) in commerce use "wins" in a trademark infringement suit. So if one party’s trademark (or service mark) doesn't predate the second party's use, that first party is likely to lose in a trademark dispute. However, if the first party can "tack" its priority back to an earlier date by use of an earlier similar mark (because the earlier mark is a "legal equivalent"—perhaps a close, but different logo or through rights acquired from someone that itself used an earlier similar mark), then such tacking can change the outcome of the dispute.

In the Hana Bank case, the issue was whether Hana Bank could tack its use of HANA BANK back to its prior use of HANA OVERSEAS KOREAN CLUB and HANA WORLD CENTER in order to show priority of its use over that of the plaintiff-appellant’s registered HANA FINANCIAL and design mark. The Supreme Court affirmed the Ninth Circuit, which had affirmed a jury's finding that Hana Bank had established that tacking existed.

Because the Supreme Court determined that the existence of tacking is now a question of fact for the fact-finder (usually a jury) to decide, rather than a matter that can be routinely decided by a judge as a matter of law, summary disposition of disputes involving tacking is more difficult. The parties will need to take discovery, gather evidence, and make arguments (for or against) the existence of tacking. It will likely mean gathering a lot of evidence—likely over many years—in preparation for getting in front of a jury if the parties don't resolve the dispute earlier. So now priority disputes are much more likely now to end with a trial—which can be expensive, time-consuming and uncertain.

It also suggests that companies that are rebranding give careful consideration as to whether the updated brand is sufficiently close to the original brand to avoid the risk of loss of priority and possibly taking priority challenges to trial.