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Supreme Court Ruling on Trademark Tacking: An Issue of Fact a Jury (or a Judge) May Decide

January 21, 2015

Blog

Supreme Court Ruling on Trademark Tacking: An Issue of Fact a Jury (or a Judge) May Decide

January 21, 2015

Back to Fish's Trademark and Copyright Blog

 

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 Court rejected petitioner Hana Financial Inc.’s four arguments as to why tacking, which allows a trademark owner to establish priority over an intervening mark, may only be determined by a judge.  Because tacking turns on consumer perception, the Supreme Court held that, in fact, juries are in the best position to determine if marks should be “tacked” because they are “legal equivalents” that create the same, continuing, commercial impression.

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, “[t]his is certainly not to say that a judge may never determine whether two marks may be tacked.”  For example, 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 a judge.

Read our legal alert on this case here.

Kristen McCallion also commented on this case in Law360’s “Lawyers Weigh In On High Court Trademark Tacking Ruling” (January 21, 2015).

Related Tags

trademark
trademark infringement

Blog Authors

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Kristen McCallion | Principal

Kristen McCallion is a Principal in the New York office of Fish & Richardson and Chair of the firm’s Copyright Group. Ms. McCallion represents businesses in the consumer products, Internet, media, and interactive entertainment industries in copyright, trademark,...

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