September 03, 2015 Articles

The Implications of the Supreme Court's Recent Trademark Rulings

Decisions on tacking and issue preclusion may impact likelihood of confusion issues in TTAB proceedings

By Richard S. Mandel

In the first quarter of 2015, the Supreme Court issued two trademark decisions, Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015), and B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). These cases could have significant implications on litigation of both federal court trademark infringement actions and contested proceedings in the Trademark Trial and Appeal Board (TTAB).

In Hana, the Supreme Court ruled that whether two trademarks may be "tacked" in determining priority is an issue of fact for the jury. The tacking doctrine permits trademark owners to modify their trademark without losing priority over intervening users of similar marks. Tacking has generally been permitted in limited circumstances where the original and revised marks are considered "legal equivalents." In such circumstances, a party is able to clothe its mark with the priority position of the earlier use and maintain superior rights. The Supreme Court found that because tacking turns on the perspective of the ordinary consumer, a jury should determine whether tacking applies. Although the tacking issue arises infrequently, the Supreme Court's analysis also has potential implications for the issue of likelihood of confusion, which is central to all trademark infringement actions. Thus, the case could have a broader impact beyond the narrow context of priority battles.

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