Trademark Tacking: Supreme Court of the United States to Decide if “Commercial Impression” is a Question of Law or Fact

Owners of businesses, both large and small, register trademarks in order to protect the brands they have invested the time and capital to build. Sometimes, the trademarks of unrelated businesses may appear similar, and a dispute may arise between the trademark holders as to who was the first to use a particular mark. In these instances, the first, or prior, user of the trademark will usually be successful and continue to enjoy the benefits of trademark protection while the second, or junior, user of the mark will most likely have to cease its use of the trademark.

It is not uncommon for a prior user who has been using a long established trademark to update the mark to give it a more modern look; however, in doing so, the prior user still wishes to receive the same trademark protection it was granted under its original mark. Through the doctrine of “tacking,” trademark law allows the senior user of a mark to “tack” its first use of the trademark onto its newer use in order to maintain its priority. The first user’s priority can be questioned, however, if the newer mark does not create the same “commercial impression” as the older mark; meaning if consumers do not associate the newer mark with the established brand and goods and/or services affiliated therewith, then the newer mark is not the “legal equivalent” of the first mark and thereby fails to deliver the same commercial impression to consumers.

The question presently to be decided by the Supreme Court of the United States is who is the best determiner of the “commercial impression” of a trademark: the jury or the judge? The Hana Financial, Inc. v. Hana Bank case found its way to the Supreme Court from the Ninth Circuit because the Ninth Circuit treats the tacking standard as it does the likelihood of confusion standard for determining trademark infringement, as a question of fact for the jury. If tacking presents a question of fact, then it is up to the jury to decide whether the newer mark creates the same commercial impression as the older mark. In the Hana case, the Ninth Circuit jury determined that Hana Bank’s original mark, Hana Bank in Korean, presented the same commercial impression as the newer mark, Hana Bank in English.

However, Hana Financial appealed the decision, arguing that the Ninth Circuit erred by allowing the jury to decide the commercial impression test, which is treated as a matter of law in the Federal Circuit, the Sixth Circuit, and by the Trademark Trial and Appeal Board. These Courts all consider tacking to be a question of law for the judge to decide.  The Supreme Court agreed to hear the case in order to settle the split in the Circuits as to whether tacking should be treated as a question of fact for the jury or a question of law for the judge.

Based solely on the statements made, and questions posed, by the Supreme Court Justices during oral argument on Wednesday, December 3, 2014, it appears that the Court is inclined to agree with the Ninth Circuit. Several Justices expressed their beliefs that commercial impression is a question best determined by the consumers, who are better represented by the jury than a judge. The manner in which the Court will ultimately resolve the split between the Circuits, and the dispute between Hana Financial, Inc. and Hana Bank, is still unclear and will be a mystery until the Court releases its decision this spring.

If you have a trademark that you would like to register for federal protection with the USPTO, trademark rights that you need to enforce, or any other intellectual property concerns, the attorneys at Korngut Paleudis LLC have the knowledge and experience necessary to apprise you of your rights and address your intellectual property and litigation needs. Please contact the firm either through our website or at (212) 949-0138 in New York City, (914) 220-8270 in White Plains, or (203) 355-3635 in Stamford, Connecticut.