The Supreme Court of the United States tackled trademark tacking in a recent case titled Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015).
When a company changes its trademark (for a example a rebrand), a new trademark is introduced. But what if the company only makes modest changes to its existing brand or logo — is the updated version a new trademark or just a refreshed version of the old one?
The answer is provided by the principle of “trademark tacking,” which allows the company to “tack on” the time it used the former trademark to the new trademark. “Tacking on” is good for the trademark owner because its gives the company the benefit of the Date of First Use of the older trademark, instead of starting over with the new trademark.
The Supreme Court ruled that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.” The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”
“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”