Justice Sotomayor delivered the unanimous decision of the
Supreme Court in Hana Financial, Inc. v. Hana Bank, et al,
574 U.S. __, No. 13-1211 (Jan. 21, 2015), holding that whether
tacking is available to a trademark owner in a given case is
question of fact that should be determined by a jury. The full
opinion is available here.
Trademark rights are acquired by use of the mark in commerce.
Priority is determined by first use–the first to use the mark
has priority over later users. The doctrine of "tacking"
is used in an effort to cloak a new mark in the priority date of an
older mark. Tacking is available to a trademark owner in limited
circumstances when the original mark and the newer, revised mark
are "legal equivalents," meaning they create the same,
continuing commercial impression. The question before the Court:
Should a judge or jury determine whether tacking is available?
"Because the tacking inquiry operates from the perspective of
an ordinary purchaser or
