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Tackling the Tacking Doctrine

Examines the trademark tacking doctrine, balancing court, company, and consumer interests; connects these to trademark policy; and proposes a novel solution addressing these competing concerns.

By  ,   and  Gabrielle H. Kimche
55 min read

Table of Contents

Introduction

Companies and brands update their logos, slogans, or marks to align with modern aesthetics and to maintain relevancy in the market. Whether a company is updating a logo, brand, sign, or another indicative mark, the new version may be a protectable trademark.[1] The average consumer may perceive the update as merely a brighter hue or swankier font. However, in trademark law, these arguably small changes could implicate larger issues concerning trademark priority and infringement.[2] If a party already has a registered trademark, they may be hesitant to make minor updates under the assumption that they must re-register the trademark and neglect the priority date of their previously registered trademark against competitors.[3] In light of these concerns, federal law recognizes the need to make certain modifications to a trademark over time and permits the tacking doctrine as a narrow solution to prevent an updating party from losing priority.[4]

Tacking occurs when a trademark owner minimally alters an old mark to create a new mark while maintaining the old mark’s priority date.[5] When tacking applies, a trademark owner may cease using their originally registered trademark and begin using the slightly modified one without changing the mark’s original priority date.[6] In Hana Financial, Inc. v. Hana Bank, the Supreme Court explained that “the original and revised marks are ‘legal equivalents’ in that they create the same, continuing commercial impression.”[7] Despite this pronouncement, lower courts vacillate in their reasoning for denying tacking resulting in courts applying the tacking doctrine inconsistently and in an overly restrictive manner.[8]

This Note examines the competing concerns of courts, companies, and consumers regarding the use of the tacking doctrine, connects these concerns to the underlying policies of trademark protection, and proposes a novel solution in response to these concerns. Part I[9] presents an overview of tacking and its historical use in trademark litigation. Part II[10] examines courts’ narrow and inconsistent assessment of tacking use, including a recent Federal Circuit decision, which narrowly held that all goods and services of the trademarks must be the same or within a normal evolution. Part III[11] proposes a holistic evaluation of trademark tacking that reflects policy concerns but still requires the same continuing commercial impression and the similarity of the goods and services so that trademark owners may effectively utilize the tacking doctrine.[12]

I. Background

A. Overview of Trademark Law and Priority of Trademark Use

In general, trademark law protects a party’s source identifiers and prevents consumer confusion.[13] Trademarks are marketing devices that suppliers use to promote a product’s characteristics and qualities to customers.[14] Trademark protection furthers both the supplier’s goal of maintaining goodwill in the market and the consumer’s interest in locating a supplier based on the creative characteristics, qualities, and graphics of a trademark.[15] For example, the registered “SPRITE” trademark protects not only the name of the soda brand but also the visual geometric design and the citrus fruit shape that surrounds the name within the mark.[16] After viewing a Sprite can, consumers immediately associate Sprite’s trademarked logo with the lemon-lime flavored beverage inside the can.[17] The recognizability of the trademark enhances the consumer’s desire for the product itself.[18]

In a trademark infringement dispute, a party must prove priority use of the trademark to prevail.[19] The rights of the trademark owner typically date back to the mark’s first use in commerce or to the mark’s registration date.[20] When two claimants assert rights over the same mark, the party with an earlier date—based on first use in commerce, registration date, or date of an intent-to-use application—has priority rights over the trademark.[21] To create a marketplace that does not deceive or confuse consumers, the trademark holder with priority may prove infringement upon showing a “likelihood of confusion.”[22] When a competitor’s similar trademark has a likelihood to confuse consumers into purchasing the competing product (instead of the original product) the competitor may have infringed the trademark, undermining the original product’s goodwill.[23] Therefore, when competing parties utilize the same or confusingly similar trademarks, one party must have superior rights over the trademark use based on priority.[24]

When a trademark owner substantially updates a mark’s appearance, the owner risks “abandoning” their priority and rights over the mark if the court finds it is a different trademark.[25] Abandonment occurs when a trademark owner is no longer using a trademark and has no intent to resume use.[26] Thus, the owner relinquishes ownership rights in the original mark.[27] If a trademark owner abandons an older version of a trademark and a competitor subsequently commercializes it, then the original owner may no longer have priority over the trademark and cannot claim infringement.[28] However, if the original owner only slightly updates the trademark, the owner may still maintain priority through tacking. Courts apply the tacking doctrine narrowly.[29] Tacking is only permitted when, in the eyes of consumers, the same continuing commercial impression exists between the original mark and the newly updated one.[30]

The following sections address, the origins of tacking and the procedural mechanisms for asserting it.[31]

B. Origins and Development of The Tacking Doctrine

Courts developed the tacking doctrine in the mid-twentieth century to secure trademark rights for a party with two subtly different trademarks that “create substantially the same general impression.”[32] A party may find tacking useful when they have both an older and newer trademark that are substantially the same or similar enough to benefit from the earlier mark’s priority date over any competing user.[33] Using the earlier priority date gives an owner priority over a competing trademark that is registered before the owner’s new trademark but after the older trademark.[34] This way, a trademark owner may cease using an originally registered trademark for a slightly modified one without sacrificing its earlier priority date. In applying the tacking doctrine, courts have emphasized that there can only be a “slight” difference between the marks.[35]

When assessing tacking, courts apply a consumer impression-based evaluation.[36] Although this evaluation is similar to the likelihood of confusion standard for assessing trademark infringement,[37] the tacking doctrine analysis imposes a higher standard of similarity between the trademarks.[38] Moreover, for tacking to apply, the marks must have a continuing commercial impression among consumers; only then can the marks be legally equivalent, even though they may be technically distinct.[39] The commercial impression is the mark’s “meaning,” “idea,” or the consumer’s “mental reaction” in response to the mark.[40] Courts impose a strict and narrow standard for tacking to avoid “overextend[ing] trademark rights.”[41]

In addition, for tacking to apply, courts require the two marks “be used in connection with the same or ‘substantially identical’ goods or services.”[42] This inquiry is similar to one required by the likelihood of confusion analysis for trademark infringement.[43] Traditionally, in tacking cases, this requirement was not a difficult hurdle to overcome because trademark owners often maintain the same type of good or service despite updating their trademark.[44] However, some trademark owners attempt to tack a new trademark to an older one for a different good or service and may not meet this requirement.[45] In 2023, the Federal Circuit tried to curb this kind of overzealous tacking behavior by introducing a more rigorous analysis for assessing the similarity of goods and services. In Bertini v. Apple,[46] the Federal Circuit held that substantially identical goods and services must be “within the normal evolution of the previous line of goods and services” based on whether “consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services.”[47]

C. Procedural Vehicles for Using the Tacking Doctrine

Tacking arguments may arise in trademark infringement litigation where one party claims another party’s trademark use infringes because it creates a likelihood of confusion as to source, affiliation, or sponsorship.[48] Alternatively, tacking arguments may occur in administrative proceedings when one party files a petition to cancel the registered trademark of another party.[49] In either context, the party using the tacking doctrine attempts to secure priority over another party’s trademark by tacking a newer trademark to an older one with a continuing commercial impression.

i. Trademark Infringement Litigation

In a trademark infringement dispute, the plaintiff must prove priority and a likelihood of consumer confusion from the allegedly infringing mark.[50] Parties may use tacking to claim priority over an infringing competitor and to avoid abandonment.[51] The fundamental inquiry remains the same for courts evaluating tacking for priority or abandonment: did the trademark owner substantially alter the original mark such that third parties would not expect the present version of the mark to be used under and protected by the same registered owner?[52]

In Hana Fin., Hana Financial sued Hana Bank for trademark infringement.[53] Here, the Supreme Court first recognized tacking and clarified that the availability of tacking was a question of fact for the jury.[54] Hana Bank invoked the tacking doctrine to claim priority through an earlier trademark use.[55] Justice Sotomayor focused on the commercial impression consideration for tacking and held that it “relies upon an ordinary consumer’s understanding of the impression,” which is for the jury to decide as the fact-intensive decisionmaker.[56] Post-Hana Fin., courts use the legal equivalent test for tacking, which is only based on whether the trademarks have the same continuing commercial impression.[57]

Despite the Supreme Court’s recognition of tacking, circuit courts rarely allow it in practice.[58] For example, in One Industries, LLC v. Jim O\’Neal Distribution, O’Neal alleged that One Industries’ 1999 registered trademark infringed on O’Neal’s 2003 registered angular O’ trademark.[59] O’Neal attempted to tack the 2003 angular O’ trademark to its 1997 trademark which was a rounded O’ iteration for priority.[60] The Ninth Circuit held that O’Neal did not “meet the ‘exceedingly strict’ standard” because the angular O’ materially differed from the rounded O’ besides “consist[ing] of a styled O followed by an apostrophe.”[61]

ii. Administrative Proceedings

In addition to litigation, parties may raise tacking arguments in administrative proceedings before the Trademark Trial and Appeals Board (TTAB), including petitions to cancel in opposition to a trademark.[62] In a trademark opposition proceeding where one party opposes another party’s registration of a trademark, the opposing party must prove its priority of use and the likelihood of consumer confusion between the marks.[63] Due to the TTAB’s inconsistent applications of tacking, some cases have a doctrine with narrower evaluation than others.

The TTAB has evaluated tacking based on variations of literal terms, consumer perception, and visual graphics. [64] In Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., the TTAB decided that tacking was permissible between two forms of the “AQUA STOP” mark.[65] The older mark presented a rectangular form over two lines, whereas the subsequent mark was a circular form over a single line.[66] The TTAB allowed tacking because the commercial impression of these marks depended upon the literal terms instead of the stylizations.[67] Thus, the TTAB evaluated each trademark for its holistic effect on the consumer including its visual design and literal meaning.[68] Further, in National Baker Services v. Haim Food Co., the TTAB allowed tacking in a trademark registration opposition proceeding.[69] When applicant Haim Food attempted to tack “HOLLYWOOD” to a previous mark, “HOLLYWOOD HEALTH FOODS,” the marks were legal equivalents because consumers would perceive them both as Haim Food’s mayonnaise product.[70] Thus, the TTAB ruled based on consumer perception instead of the literal terms.[71] In Bear Partnership v. Bear U.S.A., Inc., the TTAB held that applicant Bear U.S.A. could tack a trademark with “BEAR” overlapping a polar bear graphic to a similar trademark where “BEAR” was written in a larger font beside the polar bear graphic because the differences were “de minimis.”[72] Thus, TTAB allowed tacking after slightly altering a logo.

The TTAB has permitted and rejected tacking inconsistently.[73] For example, the TTAB did not allow tacking among two similar marks depicting pelicans in Southernties v. C.O. Branded Corp. where the previously registered mark’s pelican faced right and the latter faced left (in addition to other visual differences to pelican shape and design).[74] The Court held that Southernties could not use tacking because the marks would not “make an identical commercial impression on consumers in connection with the involved goods,” so Southernties could not assert priority over C.O. Branded.[75]

In Van Dyne-Crotty, Inc. v. Wear-Guard Corp., Wear-Guard petitioned to cancel Defendant Van Dyne-Crotty’s “CLOTHES THAT WORK” trademark that was “facially similar” to Wear-Guard’s trademarks: “CLOTHING THAT WORKS,” “CLOTHES THAT WORK HARD,” and “CLOTHES THAT WORK OVERTIME.”[76] As a defense, Van Dyne-Crotty attempted to tack “CLOTHES THAT WORK” to an earlier trademark, “CLOTHES THAT WORK FOR THE WORK YOU DO,” so the trademark would date to the 1970s instead of 1986.[77] The Federal Circuit[78] rejected Van Dyne-Crotty’s attempt to tack and gain priority because consumers would differentiate the trademarks, so they were not legal equivalents.[79] As reflected in both litigation and administrative proceedings, courts have applied the tacking doctrine too narrowly and inconsistently—Part II discusses such critiques.

II. Analysis

Courts fail to interpret the tacking doctrine consistently while evaluating trademarks when the court bases its analysis on the continuing commercial impression or the similarity of the goods and services. Despite federal law and the United States Supreme Court’s[80] recognition of the tacking doctrine, the Supreme Court has never directly approved of a party’s use of tacking.[81] At the district court and administrative proceeding levels, courts interpret tacking more leniently and allow parties to use it with more frequency.[82] However, on appeal, circuit courts apply a narrower standard for tacking and reverse lower courts’ holdings of a party’s lawful use of tacking.[83] In these appeals, circuit courts take into account many contextual facts including whether a party purchased the trademark that it aims to tack, a party’s long-standing use of a trademark, the trademark’s visual or oral appearance, the relative size of each party’s business, and the respective markets of the trademarks.[84] Although the Court in Hana Fin. emphasized commercial impression as a core requirement of the tacking doctrine, the Federal Circuit held that tacking, in the registration context, is based on whether the goods and services were the same or sufficiently similar.[85]

A. Continuing Commercial Impression Evaluation

As the Supreme Court and many other courts recognize, continuing commercial impression is the cornerstone of the tacking doctrine.[86] Resembling the trademark infringement inquiry, continuing commercial impression evaluates the similarity of two trademarks.[87] When courts consider the similarity of two marks to determine trademark infringement, courts evaluate whether “a consumer will believe that the two goods and services are related to the same source” by examining a mark’s “sight, sound, and meaning.”[88] Where the marks are more similar, it will be more likely that “a consumer will believe that the two goods or services are related to the same source.”[89] In a similar vein, courts evaluating the continuing commercial impression for tacking consider the “visual or aural appearance of the marks themselves.”[90] Accordingly, the consumer’s commercial impression of a trademark is crucial for assessing both trademark infringement and tacking.[91] Nonetheless, circuit courts repeatedly deny tacking use between marks with similar sounds and appearances, claiming that there is no continuing commercial impression.[92]

Even though tacking allows a party to make minor alternations to a trademark, many courts have nonetheless rejected tacking among trademarks that seem similar but differ by mere addition, subtraction, or substitution of a word, letter, or other visual or aural effect.[93] For example, in American Paging, Inc. v. American Mobilphone, Inc., the TTAB rejected tacking “AMERICAN MOBILPHONE PAGING” to “AMERICAN MOBILPHONE” even though both trademarks had the same stars and stripes background and only differed by one additional word.[94] The Board held that the trademarks were “visually barely distinguishable” but were “distinguishable when spoken.”[95] Further, the TTAB refused to tack “PRO-CUTS” to “PRO-KUT” in Pro-Cuts v. Schilz Price Enterprises,.[96] The Board reasoned that the design features between the trademarks established a material difference.[97]

Importantly, aural and visual impressions of a trademark may differ among various populations.[98] Intellectual Property Law Professor Laura A. Heymann argues that when consumers who are illiterate in the English language purchase a product or service, they may interact with “the designs and information on product labels and advertising in different ways from what courts might expect.”[99] From this perspective, courts should consider individual differences by evaluating the continuing commercial impression based on the type of service, good, or the consumer.[100]

Because the Supreme Court decided tacking is a question of fact for the jury, the continuing commercial impression is an objective evaluation that aligns with the reasonableness of trademark registration and consumer protection.[101] In Hana Fin., the Supreme Court adopted the Ninth Circuit’s affirmation of the district court’s jury verdict that allowed Hana Bank’s tacking use.[102] There, Hana Bank tried to tack the “HANA BANK” mark, which was displayed in Korean, to the “HANA OVERSEAS KOREAN CLUB” mark, which was displayed in English.[103] The jury found that Hana Bank could use tacking because the marks were displayed next to each other and an ordinary Korean-speaking consumer would associate “HANA BANK” with the same source as “HANA OVERSEAS KOREAN CLUB.”[104] While the two trademarks in Hana Fin. did not look similar, the jury found there was still a continuing commercial impression because the trademarks were similarly displayed and identified the same source.[105] Following Hana Fin., courts should objectively evaluate the trademarks in their entirety instead of merely based on the aural or visual components.[106]

In evaluating a trademark’s continuing commercial impression, courts examine various issues beyond the visual or aural components of the trademark to reach a holding on whether the party may use the tacking doctrine. For instance, the Ninth Circuit ruled against the use of tacking by Quiksilver, a global company that manufactures sportswear for young men and women, in an infringement suit against Kymsta, a husband-and-wife-owned clothing manufacturer and wholesaler.[107] The court found that Quiksilver could not tack “ROXY” to “QUIKSILVER ROXY” when Quiksilver conceded that they originally named the “ROXY” clothing line “QUIKSILVER ROXY” because Quiksilver knew that consumers would not associate “ROXY” with Quiksilver, so there was no continuing commercial impression.[108] Courts use context behind updating a trademark to determine whether there is a continuing commercial impression—especially when one party is a larger business or enterprise compared to the other.[109]

When a jury evaluates the tacking of two trademarks of large-scale, well-known businesses, the continuing commercial impression would likely be clearer and more recognizable than when evaluating tacking of two unfamiliar trademarks.[110] However, the TTAB resisted this sentiment when it denied tacking use by the global coffee mogul Starbucks’s opposition to Mountains and Mermaids’s trademark registration.[111] In Starbucks Corp. v. Mountains and Mermaids, LLC, Starbucks claimed Mountains and Mermaids’s “SIRENS BLEND” coffee was confusingly similar to Starbucks’s “SIREN’S NOTE BLEND” coffee.[112] However, Starbucks did not have priority under the abandoned 1998 trademark “SIREN’S NOTE BLEND” coffee, so Starbucks created a new “SIREN’S BLEND” coffee and attempted to tack to a 1998 priority date.[113] The court held that Starbucks abandoned the 1998 trademark and denied Starbucks’s unauthorized tacking and opposition to Mountains and Mermaids, a family-run business.[114] The continuing commercial impression standard is inconsistent because even if a consumer may easily recognize a trademark as similar enough to have a continuing commercial impression, the legal equivalence standard is so narrow that it is overly difficult to satisfy.[115]

As courts apply the continuing commercial impression evaluation of the legal equivalent test for tacking, courts inconsistently determine whether parties may use tacking. In doing so, courts narrowed the tacking doctrine, preventing parties from tacking for the policy purposes of maintaining priority by slightly altering a previously registered trademark.[116] Courts evaluate continuing commercial impression through the visual and aural aspects of a trademark, the manner a party uses their trademark, and the context of the parties’ business or services.[117] This inconsistency creates confusion because no court has clearly said what constitutes a continuing commercial impression, yet courts continue to narrowly evaluate whether trademarks have the same continuing commercial impression.

B. Competing Considerations Underlying the Similarity of Goods and Services Requirement

Once a party meets the legal equivalence test and proves a continuing commercial impression among trademarks for tacking purposes, the next evaluation courts make is whether the goods or services that are sold under each version of the trademark are the original trademark’s legal equivalents.[118] Historically, this test has not been a significant impediment to tacking because the legal equivalence test is so narrow; wherever courts found a legal equivalence for infringement, they generally also found the goods or services sufficiently similar as well.[119] However, the Federal Circuit recently addressed whether all the goods or services of two trademarks must be the same for tacking to apply, or whether just one identical good or service among the trademarks was sufficient.[120]

In Bertini, the Federal Circuit narrowed the similarity of goods and services required for tacking by holding that all goods and services must be substantially identical or “within the normal evolution of the previous line of goods or services.”[121] Bertini, a professional jazz musician, sued Apple for trademark infringement of his “APPLE JAZZ” [122] trademark that dated back to 1985, claiming it had priority over Apple’s “APPLE MUSIC” trademark, registered in 2015.[123] However, Apple argued that “APPLE MUSIC” should have the priority date of 1968 once it tacked “APPLE MUSIC” to its “APPLE” trademark.[124] Before this case reached the Federal Circuit, the TTAB ruled “APPLE MUSIC” AND “APPLE” had the same continuing commercial impression and thus allowed Apple’s tacking.[125]

The Federal Circuit reversed and held that the goods and services behind Apple’s two trademarks were not entirely the same, and, therefore, disallowed tacking.[126] Apple registered “APPLE MUSIC” in connection with “live musical performances” and “production and distribution of sound recordings” as goods and services, whereas its original “APPLE” trademark was for “gramophone records” and “audio compact discs.”[127] The court held that even if the production and distribution of sound recordings could be tacked to gramophone records, all the goods and services were not substantially the same because live musical performances could not be tacked to a trademark for gramophone records.[128] Therefore, to tack, a trademark must establish priority for the same goods and services as the original trademark; just tacking to one identical good or service amongst many is insufficient.[129]

In Bertini, Apple attempted to purchase an old trademark, tack it to a new trademark, and gain priority to evade infringement.[130] Apple acquired the 1968 “APPLE” trademark in a 2007 settlement with Apple Corps.[131] Therefore, Apple was not the original owner or creator of the 1968 “APPLE” trademark but aimed to utilize it for priority over Bertini.[132] So, when Apple tried to tack the 2015 “APPLE MUSIC” trademark to the 1968 “APPLE” trademark to precede Bertini’s 1985 priority date, it failed due to the differing goods and services of the two trademarks. As with any company that acquires a trademark almost fifty years older than the allegedly infringing one, Apple was unlikely to prove the goods and services between 1968 “APPLE” and 2015 “APPLE MUSIC” were the same considering the technological transformations and nature of the trademarked product.[133]

For this trademark protection strategy to work under the tacking law: Apple Corps must not have abandoned the 1968 trademark; the 1968 trademark must be a legal equivalent of the current trademark; and, the 1968 trademark must identify sufficiently similar goods and services.[134] The Federal Circuit drastically narrowed tacking in Bertini by finding the goods and services behind “APPLE” and “APPLE MUSIC” were not sufficiently similar despite their mutual connection to music performances.[135]

III. Proposal

If there is one thing for certain about tacking, it is that courts rarely allow it.[136] As a result, the jurisprudence of permitted tacking use is sparse, only making it more difficult for parties to understand when to assert tacking.[137] Just because the tacking doctrine rarely applies does not mean that it never should or that parties should have such uncertainty surrounding the doctrine.[138] There are legitimate policy reasons for permitting tacking including reasons that have been recognized by courts for almost a century.[139] Instead of causing confusion and further narrowing the use of tacking, courts should clarify the test for tacking and address its proper role in trademark law.

The Supreme Court has had numerous opportunities to clarify the tacking doctrine and tacking use, yet has declined to do so—likely because of tacking’s narrow application.[140] But tacking is here to stay. Lower courts established tacking as a trademark doctrine; parties continue to invoke it in their briefs and motions; and, legal scholars recognize its value.[141] Scholars called for courts to alter the tacking requirements and, specifically, the continuing commercial impression requirement.[142] For example, Intellectual Property Professor Alan Durham urged fact-finders to decide if a trademark is legally equivalent based on whether the alteration contributed to the confusion of the competing mark instead of comparing both versions of the marks as a whole.[143] Aaron McIntyre, another trademark law scholar, called for rectifying the ambiguity with congressional legislation or a Supreme Court decision on acceptable trademark tacking.[144] However, courts steadfastly require that parties prove there is a continuing commercial impression and similarity among goods and services when comparing old and new trademarks in order to establish a tacking claim.[145] For parties to understand how courts evaluate tacking, the Court needs to delineate the relationship between the continuing commercial impression requirement and the necessary similarity of goods and services instead of permitting lower courts to inconsistently evaluate trademark tacking.[146] Unless the Supreme Court otherwise clarifies the tacking doctrine, other circuit courts should consider imposing a clear approach to tacking that holistically encompasses the relevant requirements and policy values.

The Court should propose a clearer standard for determining whether trademarks are legally equivalent based on both requirements: a continuing commercial impression and the similarity of goods and services. The Federal Circuit hinged its recent tacking analysis on a narrower application of the similarity of the goods and services requirement instead of on the continuing commercial impression requirement.[147] The Court must remedy this inconsistency through a jurisprudential standard that combines both evaluations to determine whether the trademarks are legal equivalents.

In the legal equivalence standard—combining both the continuing commercial impression and substantially identical goods and services requirements—the Court should require a holistic comparison of not only the trademarks’ appearances and effects but also of all the goods and services in conjunction. According to Bertini, the goods and services must be “within the normal evolution of the previous line of goods or services.”[148] Thus, if one good or service is identical to the trademark being tacked, then a holistic evaluation to see if the other goods or services are within—or even related to—the normal evolution will suffice.[149] With the approach of a holistic standard to tacking, the fact-finder may evaluate two trademarks for their commercial impression visually, orally, phonetically, and based on the similarity of their overall goods and services.[150] This standard would improve tacking doctrine because parties could explicitly see how the Court will evaluate their trademarks, and the fact-finder may decide whether the trademarks are legally equivalent on a clearer basis.

The TTAB has previously evaluated tacking through an essentially holistic analysis for legal equivalence. In 1972, the TTAB allowed Opposer, John Winkler’s Sons, to tack “CAREFREE CRUISE” to “THE CAREFREE PLAN” because it was “a natural transition” that “did not change the essential nature of the mark or term” in consideration of its household moving and storage business among steamship lines.[151] The TTAB noted that the goods and services for the trademarks are broadly related to travel-oriented and insurance-oriented activities throughout the world.[152] Using the tacking doctrine, John Winkler’s Sons prevailed against American Express’s claim that it had abandoned its trademark.[153] Lastly, this evaluation satisfies the policy purposes of tacking because a party could effectively modernize a trademark without losing priority.[154]

If the Supreme Court establishes the legal equivalence standard for tacking, it will need to also decide whether a jury should determine tacking use based on the standard. In Hana Fin., the Supreme Court found that juries must decide the continuing commercial impression of trademarks.[155] The Court should now extend the jury’s authority to rule on the similarity of the goods and services as well. After the Federal Circuit brought the similarity of the trademarks’ goods and services to the forefront of the tacking doctrine in Bertini, the type of goods and services is an increasingly important requirement in the tacking analysis.[156] In Hana Fin., the Supreme Court also stated that the jury must have clear and careful jury instructions to avoid misapplying the legal standard for tacking.[157] Once the Court announces the legal standard for evaluating the continuing commercial impression and similarity of goods and services in conjunction, jury instructions may clearly present this standard to the jury to properly apply and evaluate it. Thus, the Supreme Court must address whether a jury should evaluate a trademark’s continuing commercial impression under only the legal equivalence test, or also by considering the substantial similarity of trademarks’ goods and services.

C. Policy Considerations for a New Tacking Standard

If the Supreme Court proposes such a solution to the inconsistently applied tacking doctrine, it will embrace the values and policy purposes of tacking with the new standard.[158] Based on the current continuing commercial impression requirement, scholars have critiqued the tacking doctrine for lacking a meaningful connection to the values and policies behind tacking.[159] The privilege behind the tacking doctrine is that owners need not lose priority or jeopardize their trademark protection despite modernizing their trademarks with slight alterations.[160] Therefore, the tacking doctrine explicitly allows trademark owners to modify their marks to align with modern market preferences, preserve goodwill among customers, and retain the source‑identifying trademark.[161] Thus, the tacking doctrine evaluation must remain focused on the similarity of the impact that each trademark makes on consumers.[162]

One use of tacking that does not align with this policy rationale is when a trademark owner attempts to tack two trademarks that are not merely differentiated by a minor alteration.[163] In cases where a party attempts tacking among a trademark that the party did not originally own, the subsequent mark would not be a modernized version of the earlier mark even if the trademarks themselves were similar because there was no transformation or evolution.[164] An infringing trademark owner should not gain priority by acquiring an older trademark and tacking the two trademarks where they would not have otherwise had priority. When a trademark owner attempts to tack a newer trademark to an older, different trademark that they acquired, the owner has failed to adhere to the purpose of the tacking doctrine, which is to allow slightly modified, modernized trademarks to tack to previous versions.[165]

If the legal equivalence test used a holistic analysis of both the continuing commercial impression and the similarity of goods and services, courts could also evaluate these types of important contextual details in a trademark proceeding. While the tacking strategy of acquiring older trademarks to establish priority opposes policy justifications, courts could consider whether certain litigation strategies further the purpose of having the tacking doctrine.[166]

Conclusion

The tacking doctrine originated in lower courts to spare parties from market harm and loss of goodwill upon making small changes to their trademarks. The justification for tacking allows parties, businesses, and other trademark owners to update, modernize, and align their marks with market trends and aesthetics. Subsequently, tacking the new trademark to the former one reserves the previous trademark priority for the parties’ new trademark. Assuming the goods or services behind the trademark are “within the normal evolution of the previous line of goods or services,” the trademark’s minimal alteration should not pose a priority problem.[167] However, case law on tacking causes rejection after rejection for parties trying to tack their trademarks due to courts inconsistently applying an overly narrow interpretation of tacking.

As tacking jurisprudence develops, courts narrow the tacking doctrine and limit its use to narrow circumstances. Parties have attempted to misuse the tacking doctrine by tacking a trademark to an unassociated mark to gain priority over a competitor. Despite courts’ pronouncements on what the tacking doctrine requires, inconsistent rulings by courts—with some courts focusing on the continuing commercial impression and others focusing on the similarity among the trademarks’ goods and services—have left the requirements for the tacking doctrine unclear. The Supreme Court needs to unify the standard of the legal equivalence required for tacking so courts may evaluate tacking in a way that aligns with its policies and justification.

A holistic analysis is one solution to clarifying the continuing commercial impression test. Through this analysis, a jury may evaluate two trademarks for their commercial impression visually, aurally, and phonetically; based on the similarity of their goods and services; and in consideration of context relevant to registration. Once courts prohibit parties from misusing the tacking doctrine to gain earlier priority, this evaluation will ensure the goods and services remain substantially similar while not requiring the trademarks to be identical.[168] From here, it is up to the courts to cure the confusion behind the tacking doctrine in trademark law.

  1. C. Aaron McIntyre, Exploring the Dark Bayou: A Need for Clarity and Unity of Trademark Tacking, 5 Loy. L. & Tech. Ann. 81, 82 (2005) (“A protectable trademark can be a ‘word, personal name, design, scent, sound, color, container or any number of other indicators of source.’ The number of protectable trademarks is potentially unlimited.”). ↩︎

  2. J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 17:26 (5th ed. 2024) (“The Federal Circuit has ruled that its continuing commercial impression test applies both to determine if an earlier version can be tacked on to achieve priority and to determine if an earlier version has been abandoned.”); Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419 (2015). ↩︎

  3. Adeolu Bakare, The Ninth Circuit and the Likelihood of Confusion over Tacking, 9 Tul. J. Tech. & Intell. Prop. 419, 420 (2007). ↩︎

  4. Kyle Jahner, Apple Music Trademark Ruling Leaves ‘Tacking’ Standard Unclear, BL (Apr. 17, 2023, 5:05 AM), https://news.bloomberglaw.com/ip-law/apple-2 [https://perma.cc/JB7T-6376\] (“Tacking originated in lower courts before the Supreme Court endorsed it in its 2015 Hana Financial v. Hana Bank ruling.”); Anne Gilson LaLonde & Jerome Gilson, 1A Gilson on Trademarks § 3.04 (2023) (“Successful tacking of a prior mark onto a later one negates a claim of abandonment of the prior mark. However, if tacking is not allowed, use of the later mark is not deemed use of the original, and the rules of abandonment apply.”). ↩︎

  5. Hana Fin., 574 U.S. at 419–20 (“Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark.”); Bakare, supra note 3 (“Tacking is a common law doctrine enabling a trademark owner to ‘tack’ its later use of a mark onto its earlier use of a similar, but technically different mark for the purposes of priority.”). ↩︎

  6. LaLonde & Gilson, supra note 4 (“A trademark owner may ‘tack’ its use of an earlier mark onto a later mark for priority purposes.”). ↩︎

  7. Hana Fin., 574 U.S. at 420. ↩︎

  8. Compare Bertini v. Apple Inc., 63 F.4th 1373, 1381 (Fed. Cir. 2023) (rejecting Apple’s use of the tacking doctrine because the goods and services among the trademarks were not all identical or in a normal evolution), with Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1160 (Fed. Cir. 1991) (concluding that Van Dyne-Crotty could not tack a later trademark because the “two marks create differing commercial impressions in the minds of consumers”), and Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir. 2006) (denying tacking argument because the trademarks did not have the same continuing, commercial impression). ↩︎

  9. See infra Part I. ↩︎

  10. See infra Part II. ↩︎

  11. See infra Part III. ↩︎

  12. Compare Hana Fin., 574 U.S. at 422 (focusing on whether two trademarks have the same continuing commercial impression as the tacking standard), with Bertini, 63 F.4th at 1377 (rejecting Apple’s use of the tacking doctrine because the goods and services among the trademarks were not all identical or in a normal evolution). ↩︎

  13. David W. Barnes, One Trademark Per Source, 18 Tex. Intell. Prop. L. J. 1, 3 (2009) (“Protecting source-identification and preventing the fraud and consumer confusion resulting from misuse of source-indicating symbols are the fundamental justifications for trademark law. Protecting source-identifiers reduces consumers\’ search costs by helping them locate suppliers that have satisfactorily served them in the past.”). ↩︎

  14. Id. (“Trademarks are, however, more than source-indicators. They are marketing devices. Suppliers use trademarks to attract consumers\’ attention to their products by suggesting unique characteristics and qualities, by surrounding the products with an aura of superiority or desirability, or simply by being clever or appealing.”). ↩︎

  15. Id. at 5 (“These doctrines reflect a balance between exclusive rights to exploit the signaling power of a mark and the desire to promote competition and inform consumers about the availability of competing products.”); David D. Mouery, Trademark Law and the Bottom Line–Coke Is IT!, 2 Barry L. Rev. 107, 121 (2001): Trademarks therefore, create goodwill for the trademark owner when the owner puts his or her efforts into the promotion of the mark. The trademark identifies their goods and services. When a purchaser, as the Supreme Court said, wants or believes he wants the goods or services symbolized by the trademark, that desire is created by goodwill.

    Id. ↩︎

  16. SPRITE, Registration No. 3,815,261. ↩︎

  17. Id.; Mouery, supra note 15. ↩︎

  18. Samuel M. McClure, Jian Li, Damon Tomlin, Kim S. Cypert, Latane M. Montague,& P. Read Montague, Neural Correlates of Behavioral Preference for Culturally Familiar Drinks, 44 Neuron 379, 385 (2004) (“[T]here is a dramatic effect of the Coke label on subjects’ behavioral preference. Despite the fact that there was Coke in all cups during the taste test, subjects in this part of the experiment preferred Coke in the labeled cups significantly more than Coke in the anonymous task.”). ↩︎

  19. 4 Mod. Fed. Jury Instructions-Civ. ¶ 86A.02 (2023) (explaining that this “instruction concerns the second element required to establish trademark infringement liability, i.e., . . . that the plaintiff establish priority of use of the trademark. This instruction may be of particular importance when each party asserts ownership of the mark in question, because priority of use is essential in establishing ownership”); see LaLonde & Gilson, supra note 4 (“A party may establish trademark priority in several ways: ownership of a prior trademark registration; actual commercial use of a trademark in the ordinary course of trade; filing an intent-to-use application in the USPTO, subject to the later issuance of a registration after making the requisite actual use . . . .”). ↩︎

  20. LaLonde & Gilson, supra note 4. ↩︎

  21. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419 (2015); see 2diam Mod. Fed. Jury Instructions-Civ. ¶ 21.02 (2023); LaLonde & Gilson, supra note 4. ↩︎

  22. Adventis, Inc. v. Consolidated Prop. Holdings, Inc., No. 7:02CV00611, 2006 U.S. Dist. LEXIS 22436, at *5 (W.D. Va. Apr. 24, 2006). ↩︎

  23. See id.; Mouery, supra note 15 (“‘[T]rademarks are symbols of goodwill [that] increases with length of use, advertising, and sales. Trademarks used for a long time on successful highly advertised products have developed tremendous goodwill.”); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979) (“When the goods produced by the alleged infringer compete for sales with those of the trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected.”). ↩︎

  24. See Alan L. Durham, The Trouble with Tacking: A Reconsideration of Trademark Priority, 54 Hous. L. Rev. 1027, 1028 (2017). ↩︎

  25. LaLonde & Gilson, supra note 4 (“A trademark owner that has made prior use of the registered mark may file a petition to cancel another’s registration on the ground of abandonment.”); McCarthy, supra note 2, §17:27 (“Minor changes in a mark which do not change the basic, overall commercial impression will not constitute an abandonment and will not interrupt the user’s chain of ownership back use of the original format.”). ↩︎

  26. LaLonde & Gilson, supra note 4 (“A trademark is abandoned when the mark owner stops using it and does not intend to resume use.”). A period of three years is prima facie evidence of nonuse under the Lanham Act. 15 U.S.C.§1127. ↩︎

  27. 15 U.S.C. § 1064. ↩︎

  28. LaLonde & Gilson, supra note 4 (“[I]f tacking is not allowed, use of the later mark is not deemed use of the original, and the rules of abandonment apply.”). ↩︎

  29. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 422 (2015). ↩︎

  30. Id. ↩︎

  31. See infra Parts I.B., I.C. ↩︎

  32. Laura Scudder’s v. Pac. Gamble Robinson Co., 136 U.S.P.Q. (BL) 418, 419–20 (T.T.A.B. 1962). Although the court did not use the term “tacking,” the TTAB allowed tacking of the mark “BLUE BIRD” to “BLUE ROBIN” where both marks “create substantially the same general impression, namely, that of a blue-colored bird.” Id. Eventually, the continuing commercial impression rule adopted the term “tacking.” See Navistar Int\’l Transp. Corp. v. Freightliner Corp., No. 96-C-6922, 1998 U.S. Dist. LEXIS 17711, at *12 (N.D. Ill. Nov. 3, 1998) (“This rule, [the continuing-commercial-impression rule,] also known as the ‘tacking’ rule, allows a party to establish priority of use based on a predecessor mark if that mark makes the same commercial impression as the current mark.”). ↩︎

  33. Hana Fin., 574 U.S. at 419, (“Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark.”). ↩︎

  34. Bakare, supra note 3 (explaining that tacking, a common law doctrine, enables a trademark owner to “tack” a prior trademark onto a current trademark); LaLonde & Gilson, supra note 4 (“A trademark owner may ‘tack its use of an earlier mark onto a later mark for priority purposes.”). ↩︎

  35. Brookfield Commc’ns., Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1048 (9th Cir. 1999) (“Without tacking, a trademark owner\’s priority in his mark would be reduced each time he made the slightest alteration to the mark, which would discourage him from altering the mark in response to changing consumer preferences, evolving aesthetic developments, or new advertising and marketing styles.”); Durham, supra note 24, at 1053 (“[T]he modern concept of a trade-mark is not so rigid as to forbid slight variations necessitated by trade discoveries, newer and more economical methods of making the same product, or changed manufacturing conditions, even in a secret formula to which the trade-mark is appurtenant.”). ↩︎

  36. Hana Fin., 574 U.S. at 420. ↩︎

  37. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979) (explaining that trademark infringement requires showing a “likelihood of confusion”). Likelihood of confusion occurs “[w]hen the goods produced by the alleged infringer compete for sales with those of the trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several other factors are added to the calculus.” Id. ↩︎

  38. Barnes, supra note 13, at 46–47 (“Marks are legally equivalent if they possess the same connotation in context, but not if consumers would ‘clearly differentiate’ them . . . . [T]he standard is ‘exceedingly strict,’ ‘considerably higher than the standard for likelihood of confusion,’ and applied ‘only in rare instances.’“);

    Nat’l Bakers Servs. v. Hain Pure Food Co., 207 U.S.P.Q. (BL) 701, 706 (T.T.A.B. 1980):

    However, in the case where a party in a particular proceeding is seeking to register a particular mark, and attempting to tack on thereto the prior use or registration of another mark, the test is indeed much narrower, and is, in effect, a finding as to whether or not the marks are and would be recognized as substantially the same mark, projecting the same image and symbolizing a single and continuing commercial impression.

    Id. ↩︎

  39. 74 Am. Jur. 2d Trademarks and Tradenames § 9 (“Legal equivalence for tacking purposes, by which prior use of a trademark is tacked onto a later use for seniority purposes, does not exist simply because the two marks a party seeks to tack are confusingly similar.”); Barnes, supra note 13, at 46; Hana Fin., 574 U.S. at 420 (“This doctrine is called ‘tacking,’ and lower courts have found tacking to be available when the original and revised marks are ‘legal equivalents’ in that they create the same, continuing commercial impression.”). ↩︎

  40. Barnes, supra note 13, at 46; Spice Islands v. Frank Tea & Spice Co., 505 F.2d 1293, 1296 (C.C.P.A. 1974); Navistar Int’l Transp., 1998 U.S. Dist. LEXIS, at *18 (N.D. Ill. Nov. 3, 1998) (“[T]he tacking inquiry could be made by a comparison of the ‘aural and visual’ aspects of the two marks.”). ↩︎

  41. Bakare, supra note 3. ↩︎

  42. LaLonde & Gilson, supra note 4. ↩︎

  43. LaLonde & Gilson, supra note 4; 15 U.S.C. § 1051(a)(3)(d). ↩︎

  44. Id. (“This requirement is generally not contested; decisions on tacking are typically concerned with the similarity between the marks . . . .”). ↩︎

  45. Bertini v. Apple Inc., 63 F.4th 1373, 1381 (Fed. Cir. 2023) (“Apple is not entitled to tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ 1968 use of APPLE for gramophone records”); Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1160 (Fed. Cir. 1991) (Van Dyne-Crotty acquired a trademark for “CLOTHES THAT WORK. FOR THE WORK YOU DO” from a small clothing manufacturer that had priority over opposing party to which it tried to tack a later trademark). ↩︎

  46. See infra Part II.B. ↩︎

  47. Bertini, 63 F.4th at 1381 (“This inquiry depends, at least in part, on whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services.”) (citing J. Wiss & Sons Co. v. W. E. Bassett Co., 462 F.2d 567, 569–70 (C.C.P.A. 1972)). ↩︎

  48. 15 U.S.C. § 1114 (2023). ↩︎

  49. 15 U.S.C. § 1064 (2023). ↩︎

  50. LaLonde & Gilson, supra note 4 (“The party asserting priority bears the burden of proving that the prior use was sufficiently public and extensive so that the term or slogan has become identified in the public mind with the source of the goods.”). ↩︎

  51. Compare Solar Sun Rings, Inc. v. Secard Pools, No. ED-CV-14-2417, 2016 U.S. Dist. LEXIS 185136 (C.D. Cal. Jan. 13, 2016) (where Plaintiff Solar Sun Rings established trademark priority under the tacking doctrine between “Solar Sun Square” and “Solar Sun Rings” to establish priority and prevail against Defendant Secard Pools for trademark infringement claim), and Reynolds Consumer Prods. v. Handi-Foil Corp., Civil Action No. 13-CV-214, 2014 U.S. Dist. LEXIS 26932 (E.D. Va. Feb. 27, 2014) (where Plaintiff Reynolds Consumer Products prevailed in a trademark infringement claim because Plaintiff’s two aluminum foil boxes met the continuing commercial impression burden for tacking and established priority over Defendant), with Am. Paging, Inc. v. Am. Mobilphone, Inc., 13 U.S.P.Q.2d (BL) 2036, 2038 (T.T.A.B. 1989) (where Defendant American Mobilphone could not tack “AMERICAN MOBILPHONE” to “AMERICAN MOBILPHONE PAGING” as legal equivalents, and thus, was liable for infringement on Plaintiff American Paging, Inc.’s “AMERICAN PAGING” mark which had priority over the “AMERICAN MOBILPHONE PAGING” mark), and Brookfield Commc’ns., Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1049 (9th Cir. 1999) (where Defendant West Coast Entertainment could not tack “moviebuff.com” to “The Movie Buff’s Movie Store” to prevail against Plaintiff Brookfield Communities’ claim of trademark infringement over the trademark, “moviebuffonline.com.”). ↩︎

  52. Jack Wolfskin Ausrustung Fur Draussen GMBH & Co. v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1369 (Fed. Cir. 2015); McCarthy, supra note 2, at § 17:26

    The change in form of a mark does not constitute abandonment or a break in continuous use if the change neither creates a new mark nor changes the commercial impression created by the old mark . . . . [A] change of format which alters the overall commercial impression of a mark results in a case where the mark owner cannot claim priority of use dating from first use of the old form of the mark.

    Id. ↩︎

  53. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 421 (2015). ↩︎

  54. Id. at 420 (“The question presented here is whether a judge or a jury should determine whether tacking is available in a given case.”). See David J. Stewart, Jason D. Rosenberg & Emily Chambers Welch, Supreme Court Holds That Juries Decide Issues of Trademark Tacking, Alston & Bird (Apr. 2015), https://www.alston.com/en/insights/publications/2015/04/supreme-court-holds-that-juries-decide-issues-of-t [https://perma.cc/4D8M-PP8Y\] (“The Supreme Court granted certiorari to resolve a circuit split on whether tacking is a question of fact for the jury, as held by the Fifth, Seventh and Ninth Circuits, or a question of law for the court, as held by the Federal and Sixth Circuits.”); LaLonde & Gilson, supra note 4 (“The Supreme Court declared in Hana Financial that ‘the tacking inquiry operates from the perspective of an ordinary purchaser or consumer.’“). ↩︎

  55. Hana Fin., 574 U.S. at 421. ↩︎

  56. Id. at 423 (“This is certainly not to say that a judge may never determine whether two marks may be tacked. If the facts warrant it, a judge may decide a tacking question on a motion for summary judgment or for judgment as a matter of law.”); see generally Fed. R. Civ. P.. 50, 56(a). Because tacking is a question of fact, courts have disregarded the tacking question at the motion to dismiss stage, considered whether a reasonable jury would find the marks tacked at the summary judgement stage, and reserved the tacking inquiry for a jury at the trial stage. LaLonde & Gilson, supra note 4 (“Summary judgment is still possible in tacking cases. The tacking question may be resolved as a matter of law if the evidence points to only one possible conclusion.”); see Kelley Lowe, Supreme Court Holds Doctrine of Trademark Tacking Is a Question for the Jury, McCormick Barstow LLP (Feb. 17, 2015), https://www.mccormickbarstow.com/supreme-court-holds-doctrine-of-trademark-tacking-is-a-question-for-the-jury/ [https://perma.cc/N5NT-FW7F\] (“[Hana Fin.] effectively makes summary judgment and judgment as a matter of law unavailable in all but the weakest tacking cases.”); Cap. Grille Holdings, Inc. v. Hist. Hotels of Nashville, LLC, 448 F. Supp.3d 819, 834 (M.D. Tenn. 2020) (“whether Plaintiff may invoke the doctrine of tacking to gain priority over Defendant’s mark for its word mark and second design mark requires a factual inquiry”); LaLonde & Gilson, supra note 4 (“[A]pplying law to facts has typically been accomplished by jurors, who would be able to apply the legal standard of the ‘legal equivalents’ test. If the parties have chosen to try their case in a bench trial, then a judge can act as factfinder and decide a tacking question.”). ↩︎

  57. Hana Fin., 574 U.S. at 422. ↩︎

  58. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1160 (Fed. Cir. 1991); McIntyre, supra note 1, at 89. See e.g., One Indus., LLC. v. Jim O’Neal Distrib., 578 F.3d 1154, 1161 (9th Cir. 2009); Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir. 2006) (denying priority for Plaintiff Quiksilver’s attempt to tack “ROXY” to “QUIKSILVER ROXY” without the same continuing, commercial impression, thus allowing defendant Kymstea’s “ROXYWEAR” trademark to prevailed against Quiksilver’s infringement claim). ↩︎

  59. One Indus., 578 F.3d at 1157. ↩︎

  60. Id. at 1161; see Durham, supra note 24, at 1052 (“[I]n the first version the apostrophe was separated from the ‘O,’ and in the second the apostrophe (which now resembled a triangle) was connected. In addition, some lines on the later mark were thicker, and the ‘O’ looked more like a lemon.”). ↩︎

  61. One Indus., 578 F.3d at 1161. The court explained:

    The apostrophes are markedly different: in the Rounded O’ mark it is entirely separated from the O and appears to be a standard apostrophe. In contrast, the Angular O’ mark’s apostrophe is connected to the main image and looks like a triangle. The lower and upper horizontal lines on the Rounded O’ mark are thinner than the corresponding lines on the Angular O’ mark. While the Rounded O’ mark is boxy, the Angular O’ mark looks like the outline of a lemon. These differences, in our view, establish that the two marks are not “indistinguishable.”

    Id. But see Scott Douglass & Dominic Rota, Thinking of Rebranding Post-Pandemic?: The ‘Tacking’ Doctrine May Say Otherwise, 57 Tenn. B.J. 18, 21 (2021) (explaining that the Ninth Circuit “addressed numerous, miniscule, subtle differences between these two marks that added up, in sum, to dissimilar marks”). ↩︎

  62. See John Winkler’s Sons, Inc. v. Am. Express Co., 175 U.S.P.Q. (BL) 442, 444 (T.T.A.B. 1972); Std. Int’l Mgmt., LLC v. One Step Up, Ltd., 2019 TTAB LEXIS 419, *7–8 (T.T.A.B. Nov. 26, 2019):

    As to this final element, one of the considerations in determining “whether two opposition proceedings, against two applications, involve the same ‘claim’ for purposes of the claim preclusion doctrine [is to] look[] to whether the mark involved in the first proceeding is the same mark, in terms of commercial impression, as the mark involved in the second proceeding . . . .” Institut National des Appellations d’Origine v. Brown-Forman Corp., 47 U.S.P.Q.2d 1875, 1894 (T.T.A.B. 1998). Such a determination requires more than that the marks be “similar enough to each other, in terms of commercial impression, to be deemed to be confusingly similar under a likelihood of confusion analysis . . . .” Id. at 1895. “[T]he proper test for determining whether two marks have the same commercial impression, for purposes of the claim preclusion doctrine, is the test used in tacking situations, i.e., whether the marks are legal equivalents.” Id. Marks will be considered as legal equivalents if they “create the same, continuing commercial impression so that consumers consider both as the same mark.”

    Id. (internal citations omitted). ↩︎

  63. See Southernties v. C.O. Branded Corp., 2020 TTAB LEXIS 167, *14 (T.T.A.B. Mar. 19, 2020) (“It is also the burden of the party that seeks to benefit from tacking to prove by a preponderance of the evidence that the involved marks are legal equivalents.”); Gideon Mark & Jacob Jacoby, Continuing Commercial Impression: Applications and Measurement, 10 Marq. Intell. Prop. L. Rev. 433, 438 (2006) (“The party seeking to tack bears the burden of establishing the required elements.”). ↩︎

  64. Bear P’ship v. Bear U.S.A., Inc., 2004 TTAB LEXIS 705, *19–21 (T.T.A.B. Nov. 30, 2004). ↩︎

  65. Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 U.S.P.Q.2d (BL) 1856, 1862 (T.T.A.B. 2007) (abrogated by Safer, Inc. v. OMS Invs., 94 U.S.P.Q.2d (BL) 1031 (T.T.A.B. 2010) concerning the admissibility of printed publications). ↩︎

  66. Id. ↩︎

  67. Id.; Durham, supra note 24, at 1035. A recent example can be found in Paris Glove where a “rectangular” version of the mark AQUA STOP for rain boots (one word printed above the other) had been replaced by a “semicircular” version (both words together and arranged on a curve, as though hugging the upper portion of a circle). Paris Glove, 84 U.S.P.Q.2d at 1862. ↩︎

  68. Paris Glove, 84 U.S.P.Q.2d at 1862. ↩︎

  69. Nat’l Bakers Servs. v. Hain Pure Food Co., 207 U.S.P.Q. (BL) 701, 707 (T.T.A.B. 1980). ↩︎

  70. [Id.]{.underline} ↩︎

  71. Id. ↩︎

  72. Bear P’ship v. Bear U.S.A., Inc., 2004 TTAB LEXIS 705, *19–21 (T.T.A.B. Nov. 30, 2004). ↩︎

  73. For example, in Corporate Fitness Programs, Inc. v. Weider Health & Fitness, Inc. the TTAB did not allow Applicant Weider Health & Fitness to tack “SHAPE” to a previously used mark, “SHAPE UP.” 2 U.S.P.Q.2d (BL) 1682, 1689 (T.T.A.B. 1987). The TTAB held that the Opposer Corporate Fitness Programs had priority because Applicant failed to use the “SHAPE UP” mark for five years until the “token use . . . for the purpose of maintaining applicant\’s registration of the mark.” Id. at 1688–89. ↩︎

  74. Southernties v. C.O. Branded Corp., 2020 TTAB LEXIS 167, *14–15 (T.T.A.B. Mar. 19, 2020):

    [T]here is more detail in the wing feathers in Southernties’ right-facing pelican mark and it has longer legs and feet. This contrasts with the less-defined wing of the left-facing pelican mark that also has shorter, flat feet. The left-facing pelican also has a neck bending backwards and a bill that curves around its midsection.

    Id. Here, C.O. petitioned to cancel Southernties’s left-facing pelican mark, and Sourthernties alternatively pled priority over C.O. Id. ↩︎

  75. Id. (“While these distinctions appear to be minor or not readily noticeable, we hasten to add that we are applying the stricter standard necessary for determining whether the marks are legal equivalents.”). ↩︎

  76. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1158 (Fed. Cir. 1991). ↩︎

  77. Id. ↩︎

  78. Generally, petitions to cancel proceed before the U.S. Patent and Trademark Office, but federal courts also have authority to order the cancellation of registrations “in any action involving a registered mark.” 15 U.S.C. § 1119. See Van Dyne-Crotty, 926 F.2d at 1157 (Van Dyne-Crotty “appeal[ed] from the final decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board (‘Board’), granting Wear-Guard Corporation’s (‘Wear-Guard’) petition to cancel VDC’s registration”). ↩︎

  79. Van Dyne-Crotty, 926 F.2d at 1159 (holding the marks were not legal equivalents because “purchasers seeing these two marks would clearly differentiate them and would simply not consider them to be the same mark”). The Federal Circuit affirmed the cancellation of Van Dyne-Crotty’s mark because the mark would cause “confusion, mistake, or deception” with Wear-Guard’s marks. Id. at 1157. In addition, the Federal Circuit held that the newer mark could not tack onto an older mark with a broader commercial impression because the newer mark had a narrower commercial impression. Id. at 1160. Further, some courts require that parties using tacking as a defense to infringement must plead tacking as an affirmative defense for notice purposes. H.D. Lee Co. v. Maidenform, Inc., 87 U.S.P.Q.2d (BL) 1715, 1720 (T.T.A.B. 2008) (holding that the applicant failed to put the opposing party on notice when the applicant did not include the reliance on the previous mark as an affirmative defense in the plea). A party’s pleading must assert that the opposed mark is the legal equivalent of a previous mark as the basis for priority and prior use. DrDisabilityQuotes.com, LLC v. Krugh, 2021 TTAB LEXIS 70, *18–19 (T.T.A.B. Mar. 5, 2021) (holding that a defendant who raised tacking defense at the motion to dismiss stage imposed an inappropriate time for the Court to evaluate tacking because the defendant must sufficiently plead the defense in their answer); Dexas Int’l, Ltd. v. Ideavillage Prods. Corp., 2018 TTAB LEXIS 279, *63 (T.T.A.B. July 24, 2018) (holding the affirmative defense of tacking failed to provide sufficient notice to the party opposing the trademark application where the applicant’s “ambiguous references to its prior registration, made in the course of discovery and its motion to dismiss, in no way contended that its registered and applied-for marks were legal equivalents, creating the same, continuing commercial impression”). However, implied consent of tacking as an affirmative defense may suffice as a party’s notice. Citigroup Inc. v. Cap. City Bank Grp., Inc., 94 U.S.P.Q.2d (BL) 1645, 1656 (T.T.A.B. Feb. 17, 2010) (holding that the trademark applicant’s use of tacking implied consent for the opposer because the applicant “introduced exhibits chronicling applicant\’s historical use of CAPITAL CITY BANK including, CAPITAL CITY BANK GROUP, as well as CAPITAL CITY NATIONAL BANK.”) (affirmed by Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, (Fed. Cir., Mar. 28, 2011)). Nonetheless, some courts will only analyze tacking for priority from constructive use if the defendant cites authority, even regarding a viable tacking claim. See Target Brands, Inc. v. Gottlieb, 2008 TTAB LEXIS 616, *7 (T.T.A.B. May 13, 2008) (“Applicant has not cited to any authority for the proposition that an applicant may tack the constructive use of a mark to establish priority, and we are not aware of any such authority.”); see Lalonde & Gilson, supra note 4 (“Constructive use is imputed use that gives nationwide priority of use dating back to the filing of the application.”). ↩︎

  80. See Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 420 (2015). ↩︎

  81. See id. at 426 (holding that tacking is a question for the jury but not directly ruling on the party’s tacking use but accepted the jury’s finding). ↩︎

  82. See e.g., D&J Master Clean, Inc. v. Servicemaster Co., 181 F. Supp. 2d 821, 825 (S.D. Ohio Jan. 22, 2002) (allowing Servicemaster to tack “SERVICE MASTER CLEAN” to “SERVICE MASTER” trademark because “[t]he word ‘Clean’ is purely descriptive and adds nothing of significance to the original mark.”); Solar Sun Rings, Inc*.* v. Secard Pools, et al No. EDCV14-2417, 2016 U.S. Dist. LEXIS 185135 at *7–8 (C.D. Cal. Jan 13, 2016) (allowing tacking after considering the visual appearance of the Solar Sun Rings and Solar Sun Squares solar hearing products for pools and spas because “Solar Sun Rings and Solar Sun Squares are written in the same font and the same color, on the same sized package, over the same four images encased in the shape described in the mark (a circular ring and a square, respectively)”; Reynolds Consumer Prods. v. Handi-Foil Corp., Civil Action No. 13-CV-214 2014 U.S. Dist. LEXIS 26932 at *4 (E.D. Va. Feb. 27, 2014) (finding plaintiff Reynolds Consumer Products prevails in a trademark infringement claim because plaintiff’s two aluminum foil boxes met the continuing commercial impression burden for tacking and established priority over defendant). ↩︎

  83. Compare One Indus., LLC. v. Jim O’Neal Distrib., 578 F.3d 1154, 1161–62 (9th Cir. 2009) (finding no error in the district court’s holding that the marks lacked the same commercial impression) with Brookfield Commc’ns., Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1066 (9th Cir. 1999) (granting a preliminary injunction to appellant and reversing the district court’s ruling that appellee was senior user of the mark after tacking it to a previously registered trademark). ↩︎

  84. See generally Bertini v. Apple Inc., 63 F.4th 1373, 1381 (Fed. Cir. 2023); Hana Fin., 574 U.S. at 420; Van Dyne-Crotty, 926 F.2d at 1160; D&J Master Clean, 181 F. Supp. 2d at 825; George & Co. v. Imagination Ent. Ltd., 575 F.3d 383, 402 (4th Cir. 2009); Starbucks Corp. v. Mountains & Mermaids, LLC, 2023 TTAB LEXIS 187, *11 (T.T.A.B. May 8, 2023); Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 759–60 (9th Cir. 2006); Brookfield Communs., 174 F.3d at 1048; One Indus., 578 F.3d at 1157. ↩︎

  85. Compare Hana Fin., 574 U.S. at 422

    Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury. Indeed, we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.

    Id. With Bertini, 63 F.4th at 1379 (“This case raises a question of first impression regarding the appropriate tacking standard in the registration context: whether a trademark applicant can establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application.”); LaLonde & Gilson, supra note 4 (“Strict application of the tacking rules should serve to avoid consumer confusion over source, preventing changes—either gradual or substantial—to a mark that consumers are familiar with.”); Mark & Jacoby, supra note 63, at 440 (“Courts determining whether tacking is available have a more difficult time because no comparable multi-factor test has been developed. Nevertheless, some guidelines have emerged over the years as courts have sought to apply the Van Dyne-Crotty standard.”). ↩︎

  86. Hana Fin., 574 U.S. at 420. ↩︎

  87. Id. ↩︎

  88. Laura A. Heymann, Trademark Law and Consumer Constraints, 64 Ariz. L. Rev. 339, 369 (2022). An example:

    [O]ne court found that the marks CYCLONE and TORNADO for wire fencing were similar despite their lexical differences because both marks referred to strong wind conditions. A consumer in a store intending to purchase CYCLONE fencing but seeing only TORNADO fencing might have remembered only that the desired fencing had an association with wind and thus believed that the TORNADO fencing was the one she wanted. Judges can bring their own backgrounds and biases to the table regarding these dimensions, such as finding no similarity between two marks if the pronunciation of the marks is the result of “correct” or “careful speech.”

    Id. ↩︎

  89. Id. at 369–70 (“Trademark doctrine typically directs that . . . marks should be considered in their entirety with respect to the impression they leave on the consumer. Nevertheless, if one feature . . . dominates, courts can accord more weight to that aspect of the mark in making their comparison.”). ↩︎

  90. See 74 Am. Jur. 2d Trademarks and Tradenames § 9; Heymann, supra note 88 at 369–70

    Thus, many courts have given more weight to the word portion of the marks in question because of their conclusion that the word is how consumers will order or talk about the product associated with the mark. This is, as J. Thomas McCarthy has termed it, a ‘literacy presumption’ in that it assumes that consumers will use the word portions of marks to identify the products in question.

    Id. ↩︎

  91. Hana Fin.,574 U.S. at 422 (“The commercial impression that a mark conveys must be viewed through the eyes of a consumer.”) (quoting DuoProsSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 1253 (C.A. Fed. 2012)). ↩︎

  92. See, e.g., Corp. Fitness Programs, Inc. v. Weider Health & Fitness, Inc., 2 U.S.P.Q.2d (BL) 1682, 168822 (T.T.A.B. 1986) (Board rejected tacking a later trademark, “SHAPE,” to the earlier mark, “SHAPE UP”); Viviane Woodard Corp. v. Roberts, 181 U.S.P.Q. (BL) 840, 841 (T.T.A.B. 1974) (finding earlier trademark, “ALTER EGO,” could not be tacked onto the later trademark, “EGO”); Polo Fashions, Inc. v. Extra Special Prod., Inc., 451 F. Supp. 555, 560 (S.D.N.Y. 1978) (preventing tacking of earlier mark, “Marco Polo,” to “Polo”). ↩︎

  93. Durham, supra note 24, at 1038 (“Many tacking cases involve word marks that have been altered by additions, subtractions, or substitutions. Sometimes these changes have deprived the trademark owner of the benefit of its earlier version of the mark, and sometimes they have not.”). ↩︎

  94. Am. Paging, Inc. v. Am. Mobilphone, Inc., 13 U.S.P.Q.2d (BL) 2036, 2039 (T.T.A.B. 1989) (“In making our decision, we recognize that visually registrant’s two marks are quite similar. Both are dominated by the word AMERICAN and the same star and double bar design. The words MOBILPHONE and MOBILPHONE PAGING are, of course, depicted in subordinate fashion.”). ↩︎

  95. Id. at *11 (“Nevertheless, even if the marks are visually barely distinguishable, they are distinguishable when spoken. Moreover, as noted above, in terms of connotation, the mark AMERICAN MOBILPHONE PAGING and design is more informative than and hence legally different from AMERICAN MOBILPHONE and design.”). ↩︎

  96. Pro-Cuts v. Schilz-Price Enters., 27 U.S.P.Q.2d (BL) 1224, 1226–27 (T.T.A.B. 1993). ↩︎

  97. See *id.*at 1227:

    A black and white drawing of a square and a square Description automatically generated{width=“1.426781496062992in” height=“0.32891513560804897in”} A black text with ears Description automatically generated{width=“1.2659722222222223in” height=“0.5127187226596676in”}

    But see First Mich. Bank Corp. v. First Nat. Bank, 887 F.2d 1095, 1095 (Fed. Cir. 1989) (finding two trademarks were identical acronyms except for the logo surrounding the letters, thus allowing tacking despite the older logo having the letters “placed in abutting diamonds” compared to the later, more modernized mark because the marks created the same continuing commercial impression). ↩︎

  98. Heymann, supra note 88, at 357. ↩︎

  99. Id. at 371. ↩︎

  100. Id. ↩︎

  101. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 422 (2015). ↩︎

  102. Id. at 426. ↩︎

  103. *Id.*at 420. From the Ninth Circuit judgment that the Supreme Court later affirmed:

    In light of this combination of facts, the jury could reasonably conclude that throughout the time period at issue, the ordinary purchasers of these services had the continuous impression that the advertised services were being offered by the Bank and that there were no material differences between the marks. In other words, viewing the marks in context and in their entirety, the ordinary purchasers could perceive them as conveying the same idea or meaning or evoking the same mental reaction. Consequently, there was sufficient evidence to support the jury’s verdict on trademark priority.

    Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1167 (9th Cir. 2013). ↩︎

  104. Hana Fin., 735 F.3d at 1167. The court found:

    The evidence showed that the Bank offered financial services to Korean-speaking American consumers. It advertised in Korean-language newspapers, including the name “Hana Overseas Korean Club” in English next to its “Hana Bank” mark in Korean. Its distinctive dancing man logo — which has not changed — appeared in all of the advertisements. The application forms contained similar information. The ordinary purchasers of the Bank’s services were likely aware of the Bank and its services from their experiences in Korea, given that by 1994, it had been known as “Hana Bank” for several years.

    Id. ↩︎

  105. Id. (“[V]iewing the marks in context and in their entirety, the ordinary purchasers could perceive them as conveying the same idea or meaning or evoking the same mental reaction.”). ↩︎

  106. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1160 (Fed. Cir. 1991) (“[O]ur inquiry must focus on both marks in their entirety to determine whether each conveys the same commercial impression.”). ↩︎

  107. Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 754 (9th Cir. 2006). ↩︎

  108. Id. at 759–60. According to the court:

    McKnight testified that, when the “ROXY” brand was launched, he decided to associate the “ROXY” brand with “QUIKSILVER” because he was concerned that “no one would know who Roxy was.” Randy Hild, Quiksilver’s Senior Vice President of Marketing, confirmed that, without combining the “ROXY” brand with “QUIKSILVER,” some people would not have recognized the “ROXY” brand as being from the Quiksilver company, and the presence of “QUIKSILVER” next to the “ROXY” brand could make a difference on how a consumer perceives the trademark. Finally, Dodd stated that the name of the brand given to the juniors’ line was “QUIKSILVER ROXY” because “no one would have known what ‘Roxy’ was.”

    Id. ↩︎

  109. See also KeyCorp v. Key Bank & Tr., 99 F. Supp. 2d 814, 820 (N.D. Ohio2000) (rejecting tacking among trademarks “KEY FEDERAL SAVINGS & LOAN ASSOCIATION” and “KEY FEDERAL SAVINGS BANK” because KeyCorp should not maintain priority of its originally registered trademark after intentionally altering the trademark enough to disassociate from the previous version following a loan scandal); Heymann, supra note 88, at 372

    Consideration of the consumer experience is also relevant to how trademark law thinks about private label goods. Also referred to as house brands or store brands, private label goods are a mainstay for many large retailers, whether the product is sold under the trademark of the retailer or whether the retailer establishes its own mark for its private label goods.

    Id. ↩︎

  110. Heymann, supra note 88, at 369 (“Courts typically consider similarity along the dimensions of sound, sight, and meaning—that is, not only how the marks appear but also how they sound when spoken aloud or the meaning of the lexical equivalent of the marks.”). ↩︎

  111. Starbucks Corp. v. Mountains & Mermaids, LLC, 2023 TTAB LEXIS 187, at *1 (T.T.A.B. May 8, 2023). ↩︎

  112. Id. ↩︎

  113. Id. at *11 (“reject[ing] Opposer’s claim of priority arising from its new SIREN’S BLEND coffee, launched after Applicant’s priority date, based on tacking to SIREN’S NOTE BLEND coffee, which dates back to 1998, and was discontinued by March 2006 at the latest, when Opposer’s registration for this mark was cancelled”). ↩︎

  114. Our Battle with Starbucks, Mountains & Mermaids (Aug. 11, 2023), https://mountainsandmermaids.com/pages/our-battle-with-starbucks [https://perma.cc/VJ7V-Q425?type=image\]. ↩︎

  115. Starbucks, 2023 TTAB LEXIS at *15; see also George & Co. v. Imagination Ent. Ltd., 575 F.3d 383, 401–02 (4th Cir. 2009) (characterizing George & Co. as a century-old retailer of board games and party games, could not tack their “LCR” trademark to an earlier trademark use of “LEFT CENTER RIGHT” because they “look and sound different” and were not confusingly similar despite the trademarks consisting of an acronym to the game’s full name). ↩︎

  116. Douglass & Rota, supra note 61, at 22 (“While courts make it difficult to extend protection of original marks onto subsequent marks, tacking permits marks to be modernized to benefit from their historical appearance while accounting for changing consumer tastes—or rebranding in a post-pandemic world.”). ↩︎

  117. See, e.g., Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 420 (2015) (trademarks both included “the name ‘Hana Bank’ in Korean and respondent’s ‘dancing man’ logo); George & Co., 575 F.3d at 402 (noting the trademarks “look and sound different”); Starbucks, 2023 TTAB LEXIS 187 at *15 (“the deletion of the word NOTE changes the appearance, sound, connotation and commercial impression of the marks in a significant enough way that they are not essentially the same”); KeyCorp v. Key Bank & Tr., 99 F. Supp. 2d 814, 820 (N.D. Ohio 2000); Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 754 (9th Cir. 2006) (denying tacking where “KEY BANK & TRUST rearranges two of the terms in KEY FEDERAL SAVINGS BANK, drops two of the terms in the former name, and adds two new terms”); First Mich. Bank Corp. v. First Nat. Bank, 887 F.2d 1095, 1095 (Fed. Cir. 1989) (allowing tacking where “the mark ‘FNB’ with the letters placed in abutting diamonds” creates the same continuing commercial impression as First National\’s modernized “FNB” mark). ↩︎

  118. Scott D. Locke, Trademark Priority and Tacking, N.Y.L.J. Online (July 14, 2023) (“However, trademark rights exist only in connection to goods and services. Therefore, when a trademark owner expands its product line or services, one must consider whether there are limits to the application of the tacking doctrine beyond the require of two trademarks being “legal equivalents.’“). ↩︎

  119. Pro-Cuts v. Schilz-Price Enters., 27 U.S.P.Q.2d (BL) 1224, 1226 (T.T.A.B. 1993). ↩︎

  120. Bertini v. Apple Inc., 63 F.4th 1373, 1379 (Fed. Cir. 2023). The court held a trademark applicant cannot “establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application.” Id. This was a case of first impression for the Federal Circuit. Id. ↩︎

  121. Id. at 1381 (“This inquiry depends, at least in part, on whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services.”); Jahner, supra note 4 (“The Federal Circuit’s reversal laid down standards cabining tacking’s reach to different goods and services.”). ↩︎

  122. Bertini, 63 F.4th at 1376 (“Bertini . . . filed a notice of opposition to Apple’s application. Bertini has used the mark APPLE JAZZ in connection with festivals and concerts since June 13, 1985 . . . .”). ↩︎

  123. Id. (“Apple began using the mark APPLE MUSIC on June 8, 2015, when it launched its music streaming service.”). ↩︎

  124. Id. at 1379. (“Apple attempts to claim priority for all of these services by tacking onto Apple Corps’ 1968 use of APPLE for gramophone records.”). ↩︎

  125. Id.. ↩︎

  126. Id. at 1380. According to the court:

    The Board improperly focused only on Apple’s ability to tack its use of APPLE MUSIC for production and distribution of sound recordings and did not consider live musical performances. Even assuming Apple is entitled to tack its use of APPLE MUSIC for production and distribution of sound recordings onto Apple Corps’ 1968 use of APPLE for gramophone records, this does not give Apple priority as of 1968 for live musical performances. Nor does it give Apple a 1968 priority date for the laundry list of other services in its application.

    Id. ↩︎

  127. Id. at 1376 (“The ‘964 registration covers the mark APPLE for ‘[g]ramophone records featuring music’ and ‘audio compact discs featuring music’ and claims a date of first use of August 1968.”). Apple’s application asserted 15 goods and services for use of the “APPLE MUSIC” trademark, but the Federal Circuit held that tacking between trademarks with one identical good or service “does not grant priority for every other good or service in the trademark application.” Id. at 1379; Federal Circuit: Trademark Board Erred in Dismissing Opposition to ‘Apple Music’ 31-14 Mealey’s Litig. Rep. Intell. Prop. 15 (2023) ([T]he Federal Circuit rejected Apple\’s position . . . that its application is grantable for all 15 listed goods and services by tacking those goods and services to the use . . . of ‘Apple.’“). ↩︎

  128. Bertini, 63 F.4th at 1381; see Jahner, supra note 4 (“[T]he Federal Circuit rejected the retroactive expansion of rights and said Bertini’s priority on musical performances sank the application.”). ↩︎

  129. Bertini, 63 F.4th at 1381. ↩︎

  130. Id. at 1380. The court concluded that:

    We therefore cannot evaluate whether two marks create the same commercial impression without considering the goods or services on which the marks are used. Our tacking cases have focused on whether a trademark owner can tack two different marks which have been used for the same goods or services. We have not addressed the appropriate standard for tacking uses on different goods or services.

    Id.; see also Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1160 (Fed. Cir. 1991). After Wear Guard filed a Petition to Cancel, Van Dyne-Crotty acquired the “CLOTHES THAT WORK. FOR THE WORK YOU DO” trademark from Horace Small Manufacturing Company that dated back to the mid-1970s to tack to their 1985 trademark for priority over Wear Guard’s series of trademarks that dated back to 1983. Id. While not allowing this tacking use, the court stated that Horace Small “targeted a substantially different market” despite its products being similar to those of Van Dyne-Crotty, yet, the court did not directly address whether the good and services were identical. Id. ↩︎

  131. Apple Corps was the Beatles’ record company and fought through various trademark infringement suits with Apple. Bertini, 63 F.4th at 1376 (“Apple purchased Apple Corps’ Registration No. 2034964 in 2007. The ‘964 registration covers the mark APPLE for ‘[g]ramophone records featuring music’ and ‘audio compact discs featuring music’ and claims a date of first use of August 1968.”). See generally Alex Salkever, John, Paul, George, Ringo...and Steve?, Bus. Wk. Online (Sep. 30, 2004), https://web.archive.org/web/20070310204214/http://www.businessweek.com/technology/content/sep2004/tc20040930_9317_tc056.htm [https://perma.cc/J3B7-NH6D\]; Tom Hombry, What’s In a Name? Apple Corp vs. Apple Computer, Low End Mac (Apr. 27, 2014), http://lowendmac.com/2014/whats-in-a-name-apple-corp-vs-apple-computer/ [https://perma.cc/5757-EPK5\]; Apple Computer Triumphs in Beatles Case, Billboard (May 8, 2006), http://www.billboard.com/articles/news/58508/apple-computer-triumphs-in-beatles-case [https://perma.cc/ZJC8-TPTQ\]. ↩︎

  132. Bertini, 63 F.4th at 1376. According to the court:

    Apple began using the mark APPLE MUSIC on June 8, 2015, when it launched its music streaming service, nearly thirty years after Bertini’s 1985 priority date. Apple argued, however, it was entitled to an earlier priority date of August 1968 based on trademark rights it purchased from Apple Corps, the Beatles’ record company.

    Id. ↩︎

  133. Id. at 1376. Because Apple acquired the 1968 trademark from an older company, it would be less likely that the trademarks will be for the same goods and services since the original trademark owners are different, produced different products, and spanned across decades. Id. ↩︎

  134. Id. at 1380–81. ↩︎

  135. Id. at 1381. ↩︎

  136. Durham, supra note 24, at 1059 (“The clearest thing one can say about tacking is that it is seldom allowed.”); Brookfield Commc’ns., Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1047 (9th Cir. 1999) (“. . . only in the exceptionally narrow instance.”). ↩︎

  137. Locke, supra note 118. (“[B]ecause Bertini was a case of first impression, it did not fully flesh out the second prong. Among the unanswered question of Bertini is how to treat genus and species issues.”). ↩︎

  138. Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1168 (9th Cir. 2013). The court stated:

    We reiterate that tacking applies only in rare circumstances and our decision here does not alter the strict tacking standard. But the fact that the doctrine rarely applies does not mean that it never will. Indeed, the tacking doctrine exists for compelling reasons: to protect consumers from being misled about the source of products and facilitate their purchasing decisions.

    Id. ↩︎

  139. Laura Scudder’s v. Pac. Gamble Robinson Co., 136 U.S.P.Q. (BL) 418, 419 (T.T.A.B. 1962) (“That is to say, while the marks in question differ in a number of respects, they nevertheless create substantially the same general impression, namely, that of a blue-colored bird, and hence are believed to symbolize a single and continuing trademark right in applicant.”). ↩︎

  140. Durham, supra note 24, at 1077. ↩︎

  141. See Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 420 (2015); Durham, supra note 24, at 1030; McIntyre, supra note 1, at 81. ↩︎

  142. Durham, supra note 24, at 1030; McIntyre, supra note 1, at 82. ↩︎

  143. Durham, supra note 24, at 1030 (“[T]he fact-finder should determine whether the changes contributed to the potential for confusion. This approach would give trademark owners more freedom to update their brand identities, while providing consumers with better information and a marketplace less prone to confusion.”). ↩︎

  144. McIntyre, supra note 1, at 94–96. ↩︎

  145. See Locke, supra note 118. ↩︎

  146. According to one commentator:

    The Federal Circuit’s recent decision in Bertini v. Apple, implicitly created a two-prong analysis for tacking inquiries: (1) Are the earlier and later marks legally equivalents, i.e., do they create the same continuing commercial impression?; and (2) Is each good and service in the later application substantially identical to a good and service in an earlier registration i.e., if not the same are they within a natural evolution of offerings? Each of these prongs can be cumbersome, but necessary in order to protect one’s brand.

    Id. ↩︎

  147. Bertini v. Apple Inc., 63 F.4th 1373, 1381 (Fed. Cir. 2023). ↩︎

  148. Id. ↩︎

  149. Id. ↩︎

  150. Durham, supra note 24, at 1062: Sometimes the decision requires no more than a comparison of the original and the altered versions of the mark. A court may take into account both the visual effects of the change and, in the case of word marks, changes in pronunciation . . . . Consumer impressions may be shown directly through anecdotal evidence, or through surveys designed for the purpose.

    Id. ↩︎

  151. John Winkler’s Sons, Inc. v. Am. Express Co., 175 U.S.P.Q. (BL) 442, 444 (T.T.A.B. 1972). ↩︎

  152. Id. at *4. ↩︎

  153. Id. at *6. ↩︎

  154. Id. at *3. ↩︎

  155. See Stewart, supra note 54. ↩︎

  156. Bertini v. Apple Inc., 63 F.4th 1373,1380–81 (Fed. Cir. 2023). ↩︎

  157. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 424 (2015). ↩︎

  158. Durham, supra note 24, at 1067–68. To illustrate: Courts have observed that trademarks may need to change to keep up with marketing innovations and evolving tastes. Trademark owners would hesitate to make such changes if it meant putting their investments in jeopardy. Because of the tacking doctrine, a trademark owner can make a small change in the mark without risking giving up seniority, and the rights that come with it, to a junior user. This should lead to more vigorous competition among businesses and brands better suited to the times.

    Id. ↩︎

  159. Id. at 1027. For example: In practice, this standard is not “clear,” nor is it rooted in sound policy justifications. In fact, it could often hamper competition, deny consumers useful information, and lead to the very sorts of confusion that the trademark laws are intended to prevent. This Note proposes, as an alternative, a standard for tacking based on a comparison of the original and the revised trademarks to the intervening mark, the question being whether the changes did or did not contribute to the potential for confusion. Id. ↩︎

  160. Mark & Jacoby, supra note 63, at 438. In particular: Granting a trademark owner the same rights in a new mark that he has in an old mark “helps to protect source-identifying trademarks from appropriation by competitors and thus furthers the trademark law’s objective of reducing the costs that customers incur in shopping and making purchasing decisions.

    Id. ↩︎

  161. Id. In addition: Sound policy considerations support the notion of tacking. Absent the doctrine, a trademark owner’s priority in his mark “would be reduced each time he made the slightest alteration to the mark, which would discourage him from altering the mark in response to changing consumer preferences, evolving aesthetic developments, or new advertising and marketing styles.

    Id. ↩︎

  162. Barnes, supra note 13, at 47 (“The focus of this standard is on the impact of the marks on consumers, on whether consumers consider them the same mark, and the commercial impression as gauged by ‘the impact on the public.’“). ↩︎

  163. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419–20 (2015) (“Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark.”). ↩︎

  164. Barnes, supra note 13, at 46–47 (“Marks are legally equivalent if they possess the same connotation in context, but not if consumers would ‘clearly differentiate’ them. A lack of legal equivalence may be based on visual or aural dissimilarity alone . . . .”). ↩︎

  165. The tacking doctrine supports the owner of the trademark in the market, but it does not purport to support trademark owners acquiring other trademarks for market benefit. See Bakare, supra note 3 (“Tacking balances the trademark owner’s rights to a mark against the practical realities of a market. Without tacking, trademark owners would be unable to change their marks in response to changes in consumer preference or evolving advertising and marketing styles.”). ↩︎

  166. See Bertini v. Apple Inc., 63 F.4th 1373, 1377 (Fed. Cir. 2023) (“Trademark owners often modernize and update their trademarks in response to a changing marketplace.”). ↩︎

  167. Id. at 1381. ↩︎

  168. Durham, supra note 24, at 1045: The proposition that marks must be compared “in their entirety” for purposes of tacking could also be deemed a well-established principle. If tacking depends on a continuous commercial impression, then it can be judged only by comparing the marks as a whole. Hence, one cannot, as the Federal Circuit said, rely simply on the continued use of a portion of the earlier mark.

    Id. ↩︎