The U.S. Supreme Court has unanimously affirmed an earlier decision of the 9th Circuit Court of Appeals that trademark tacking is a factual issue that must be determined by a jury.
Trademark tacking generally refers to when a trademark owner makes non-material modifications to their trademark such that the modified and unmodified marks are legal equivalents and the overall commercial impression remains undisturbed. The Supreme Court’s decision resolves a circuit dispute on the issue: the 6th and federal circuits had previously found that the determination of whether two trademarks were legal equivalents was a pure matter of law. See Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623 (6th Cir. 1998).
When a party successfully argues that a trademark has been tacked to a prior mark, it means that the old mark and the modified version portray the same commercial source identifying impression. When a trademark successfully tacks with a prior mark, the updated trademark retains the priority date of the earlier version of the mark. The test for determining that a mark has tacked on to a prior mark is notoriously difficult to satisfy. For example, the Trademark Trial and Appeal Board previously determined that PRO-CUTS and PRO-KUT did not qualify as tacking. Pro-Cuts v. Schilz-Price Enters., Inc., 27 U.S.P.Q.2d (BNA) 1224, 1227 (T.T.A.B. 1993).
The court dismissed various arguments that the issue of tacking was too nuanced and complicated for juries to determine. As a result, many cases that might have been resolved on summary judgment will now require trial.
This ruling, while legally and logically sound, will no doubt cause hardship for brand holders. As companies grow over time, it is often necessary to modify their trademarks, particularly design marks, in minor ways to meet the tastes of their customers. As the court acknowledged, the ruling will likely lead to increased uncertainty as to the effect of such changes. Consequently, brand holders would be well advised to consider this ruling when contemplating modifications to their intellectual property.