January 21, 2015

Trademark Alert: Unanimous Supreme Court Holds That Trademark Tacking Must Be Decided by the Jury

Summary: Courts have long recognized that trademark owners can make small changes to their mark without losing priority. This doctrine—known as trademark “tacking”—applies only if the new mark creates the “same, continuing commercial impression” as the old mark, such that the two marks are “legal equivalents.” Federal courts of appeal agreed on the substantive test for tacking, but were split as to whether tacking should be decided by the judge or jury. The Federal Circuit and Sixth Circuit held that tacking was an issue of law for the judge to decide, while the Ninth Circuit held that it was an issue of fact for the jury. In a unanimous ruling that could have implications in another significant trademark context, the Supreme Court today held that trademark tacking is a mixed question of law and fact that must be decided by the jury.

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