Supreme Court: Jury Should Determine Whether ‘Tacking’ Is Permissible

Author: Brian R. Westley

Whether a trademark owner should be permitted to “tack” a modified version of its mark onto an earlier version so as to maintain priority over other users is for a jury to decide, the Supreme Court has ruled, resolving a circuit split. Tacking is applied in limited circumstances where the original and revised marks are “legal equivalents,” meaning they create the same, continuing commercial impression.

The petitioner in Hana Financial, Inc. v. Hana Bank argued that tacking should be resolved by a judge because, among other reasons, tacking determinations will create new law guiding future disputes, and the predictability of the trademark system will be undermined if tacking questions are assigned to juries. No. 13-1211, 2015 WL 248559, at *2 (U.S. Jan. 21, 2015).

Justice Sonia Sotomayor, writing for a unanimous Court, stated that it was unclear why a tacking determination would create new law “any more than will a jury verdict in a tort case, a contract dispute, or a criminal proceeding.” Id. at *4. Sotomayor further explained that tacking decisions, like all fact-intensive disputes, necessarily require judgment calls that involve some degree of unpredictability—regardless of whether those judgment calls are made by a judge or jury. Id. at *5.

“Application 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,” the court held. “Indeed, we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.” Id. at *3.

A judge, however, can still decide a tacking question on a motion for summary judgment or for judgment as a matter of law, the court stated.

The Federal Circuit and Sixth Circuit are the two circuits that had treated tacking as a question of law for a judge.


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