On January 21, 2015, in a unanimous decision, the U.S. Supreme
Court in Hana Financial, Inc. v.
Hana Bank et al. (No. 13-1211) held that determining
whether a prior version of a trademark may be "tacked" on
to a later version of the mark for purposes of determining priority
is a question for a jury. As the tacking inquiry depends on the
perspective of an ordinary consumer, the Court reasoned that it is
properly resolved by a jury.
The tacking doctrine allows trademark owners to make slight
modifications to their marks over time without an attendant loss of
rights. Specifically, owners can claim priority in a mark based on
the first use date of a previously used mark, as long as the prior
mark creates the same, continuing commercial impression as the mark
currently in use. In other words, for two marks to be deemed
"legal equivalents," consumers must consider the marks
the same.
