Supreme Court Rules Trademark Tacking Is a Question of Fact

Priority of use is a hallmark of trademark law. A party generally establishes rights in a trademark by using the mark in commerce before anyone else. Over the years, lower courts have recognized a doctrine called “tacking,” under which a trademark owner may “clothe a new mark with the priority position of an older mark.” The key to the tacking doctrine is that the new trademark must “create the same, continuing commercial impression” as the old mark; that is, the marks must be “legal equivalents.” Lower courts have split on whether a judge or jury should determine whether tacking is available in a particular case. In Hana Financial, Inc. v. Hana Bank, No. 13-1211, slip op. (Jan. 21, 2015), the U.S. Supreme Court considered the question and settled the circuit split, holding that tacking is a question for the jury.