In a unanimous decision, the Supreme Court of United States ruled that whether two trademarks may be tacked for purposes of determining priority is a question for the jury, not judges.
“Because the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, we hold that a jury should make this determination”, the Court said.
The Court said that the tacking inquiry, like most issues in trademark law, should be determined from the perspective of the ordinary purchaser of these kinds of goods or services.
Petitioner (Hana Financial Inc.) sued Respondent (Hana Bank) for trademark infringement and the latter invoked in defense the doctrine of tacking.
Rights in a trademark are determined by the date of the mark’s first use in commerce. The party who first uses a mark in commerce is said to have priority over other users. 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. This doctrine is called “tacking”, the Court said.
“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”, the Court added.
