Trademark Tacking: An Effective Tool for Preserving the Existing Rights of a Trademark Holder Who is Seeking to Modernize a Former Registration

A fundamental concept in marketing is for brands to be constantly evolving.  For many companies, this means that they are updating the look and feel of their branding on a periodic basis.  For example, many companies regularly revisit their logos to keep them fresh and new to appeal to their most recent potential customers.  Often these involve adjustments to the prior logo, including such items as color, fonts, graphics, etc.

The legal question that arises is what is deemed the first use date for such an updated logo.  One of the issues that often arises when enforcing a trademark-holder’s rights against infringement is to establish the earliest point at which that trademark was used in interstate commerce. That is critical because trademark rights arise from first use and should presumably be traced to the initial point that the trademark applicant can prove they were using the mark in interstate commerce.

Therefore, the question is whether the appropriate first use date is when the updated trademark was launched or whether the client can receive the benefit of the use of the prior iteration of that mark.

Under certain circumstances, this may be possible by using the legal concept arising under trademark law called “tacking.”  That doctrine may allow a trademark owner to “tack” the prior use to its modernized logo, so long as the commercial impression of the two marks remains the same.

The reason this is so important is obvious: the trademark process is premised upon first use; therefore, the fact that a trademark is well-known in interstate commerce for being associated with a particular product or service is only part of what will be considered in any examination by the United States Patent and Trademark Office (“USPTO”). If a company has built significant brand awareness and presence based upon the prior mark–and the new one is similar enough to immediately be recognizable by the consuming public as being for the same product or service as the first—the trademark owner may be allowed to apply the tacking doctrine to establish an ongoing, continuous use of the mark. Indeed, this may well apply even as the prior version of the mark is sunset and the modernized mark replaces it in the marketplace.

How does a court make that determination?  Is it a dry legal analysis or something that can be so complicated it requires a full-blown evidentiary (in other words, evidence-based) hearing before the judge? That question was answered by the United States Supreme Court in Hana Financial, Inc. v. Hana Bank, 574 U.S. 418 (2015).

That case involved a lawsuit between two parties—Hana Financial as plaintiff and Hana Bank as defendant. The confusion was that they were both involved in the financial industry and quite obviously shared the same name: Hana. The question before the court was which of them had the right to use it?

This resulted in a federal lawsuit that made its way to the Ninth Circuit Court of Appeals. The legal issue was whether the defendant Hana Bank could utilize the doctrine of “tacking” to relate its trademark back to an earlier version that it had filed. The earlier version was admittedly a somewhat modified mark than the one currently being used. If so, Hana Bank would presumably have had superior rights to those of the plaintiff Hana Financial, Inc.

The matter was ultimately appealed to the United States Supreme Court. The resulting opinion acknowledged that to determine who had superior rights, the legal and factual question would be framed as whether Hana Bank’s earlier mark was the “legal equivalent” of the current mark. The Supreme Court remanded the case to the trial court, holding that this determination would be left to the jury to decide after hearing testimony and considering the evidence.

The key takeaway was that it is often better to modify a trademark holder’s mark than to nullify it and start all over again with a completely new application. Therefore, when there is a reasonable basis that an earlier mark “creat[es] the same, continuing commercial impression” as the current mark, it may be advisable to make the legal argument that the two marks are simply variations of one another. If successful, a court may hold that they should be deemed to have “tacked” together, thus allowing the mark to be deemed to have been first used when the earlier version began to be employed in interstate commerce.

This can be beneficial for maintaining a trademark registration as well.  Companies often invest significant money in obtaining and maintaining their trademark registrations.  However, registrations with the United States Patent and Trademark Office require periodic renewals, at which time a registrant is required to provide proof that it is continuing to use the mark in the registered-for goods and services in the manner that was depicted in the registration.  If a company has modernized its trademark since obtaining the initial registration, that can be a problem which may be overcome by using the tacking doctrine.

Likewise, the USPTO has a process by which registrants can seek to amend their registration. This may include amending the mark itself.  Again, the legal issue will be whether the amendment of the mark retains the commercial impression of the original.  However, where a subtle modernization has occurred, pursuing a trademark registration amendment could be a viable and more cost-effective manner to protect the new mark. This would avoid incurring the cost of applying anew, yet would likewise preserve the original registration dates.

The Nissenbaum Law Group can Provide Legal Counsel for Trademark Tacking

The Nissenbaum Law Group has a robust legal practice representing trademark holders in a variety of legal matters such as registrations, infringement lawsuits, and post-registration filings. The legal and regulatory framework for doing so is complex, and the firm welcomes inquiries from trademark holders facing such legal issues, as well as those needing general legal representation regarding intellectual property legal matters.