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Trademark Tacking Requires Substantial Identity

Posted by James Juo | Apr 05, 2023 | 0 Comments

The trademark doctrine known as “tacking” permits minor modifications to a mark over time without losing priority in limited circumstances, so as to “clothe a new mark with the priority position of an older mark.” Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419–20 (2015).

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.” Brookfield Commc'ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1048 (9th Cir. 1999); see also Sunstar, Inc. v. Alberto-Culver Co., 586 F.3d 487, 496 (7th Cir. 2009) (recognizing the need for trademark owners and their licensees to make “modest changes in the appearance or wording of the trademark” to respond to “unpredictable fluctuations in consumer response”).

Strict Burden

The party seeking to tack bears the strict burden to show the old mark and the new mark “‘create the same, continuing commercial impression' so that consumers ‘consider both as the same mark'” such that the marks are “legal equivalents.” Hana, 574 U.S. at 422 (quoting Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991)).

For example, in American Security Bank v. American Security & Trust Co., the trademark applicant could tack its use of AMERICAN SECURITY BANK for banking services onto its prior use of AMERICAN SECURITY for the same services. Id., 571 F.2d 564, 567 (CCPA 1978). The court determined that the two marks were legal equivalents because “the word ‘bank' is purely descriptive and adds nothing to the origin-indicating significance of AMERICAN SECURITY.” Id.

In Ilco Corp. v. Ideal Security Hardware Corp., however, the court determined the trademark owner was not entitled to tack its use of HOME PROTECTION CENTER for display racks onto its prior use of HOME PROTECTION HARDWARE for the same goods. Id., 527 F.2d 1221, 1224–25 (CCPA 1976). The two marks created different commercial impressions even when applied to the same goods because the former mark “signifies a unitary aggregation of goods related to home protection,” while the latter mark “refer[s] to the hardware itself.” Id.

In One Indus., LLC v. Jim O'Neal Distrib., Inc., the Ninth Circuit held that the trademark owner could not tack its angular O' mark onto its rounded O' mark because the two marks were materially different in appearance. Id., 578 F.3d 1154, 1161–62 (9th Cir. 2009).

In George & Co. v. Imagination Ent. Ltd., 575 F.3d 383, 402 (4th Cir. 2009), the Fourth Circuit held that the mark LEFT CENTER RIGHT and the abbreviated mark LCR were not legal equivalents for tacking purposes because the marks are not confusingly similar and “look and sound different.”

APPLE MUSIC Tacking Back to Gramophone Records

In Bertini v. Apple Inc., No. 21-2301, – F.4th – (Fed. Cir. Apr. 4, 2023), the Federal Circuit considered whether a trademark applicant can establish priority for every good or service in its application merely because it has priority through tacking for a single good or service listed in its application. The Court held that it cannot.

Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application. Cf. Van Dyne-Crotty, 926 F.2d at 1160 (“[I]t would be clearly contrary to well-established principles of trademark law to sanction the tacking of a mark with a narrow commercial impression onto one with a broader commercial impression.”). A trademark owner must show tacking is available for each good or service for which it claims priority on that ground.

While an opposer can block a trademark application in full by proving priority of use and likelihood of confusion for any of the services listed in the trademark application, a trademark applicant cannot establish absolute priority for the full application simply by proving priority of use for a single service listed in the application.

          To sustain his opposition, Bertini therefore only needs to show he has priority of use of APPLE JAZZ for any service listed in Apple's application. Bertini's use of APPLE JAZZ overlaps with two of the services in Apple's application: production and distribution of sound recordings; and arranging, organizing, conducting, and presenting live musical performances. 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.

The Federal Circuit also held that “the goods or services must be substantially identical for tacking to apply.” See C.P. Ints., Inc. v. Cal. Pools, Inc., 238 F.3d 690, 700–01 (5th Cir. 2001) (noting “substantially identical” goods or services is the “dominant terminology” for tacking). This “does not require complete identity of the goods or services,” and would allow for technological innovations such as the evolution of music recording formats over time—from gramophone records, to cassettes, to compact discs.

A trademark owner should not lose priority simply because it updates the medium through which it distributes musical recordings, so long as consumers would associate these various music formats as emanating from the same source. See Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 878 (9th Cir. 2009) (“Trademark owners are permitted to make small changes to their products without abandoning their marks.”); 3 McCarthy on Trademarks and Unfair Competition § 17:24 (5th ed.) (“[N]ormal product changes do not disturb the priority of a trademark owner.”). To do so would discourage brand innovation.

But the Court held that no reasonable person could conclude that gramophone records and live musical performances are substantially identical. Accordingly, the Court reversed the Board's dismissal of Bertini's opposition to register APPLE MUSIC because “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.”

An open question for another day is whether an applicant—to successfully defeat an opposition—must establish that the full scope of the goods and services listed in its current application is entitled to tacking, or whether simply tacking just to the services overlapping with the opposer's mark is sufficient.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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