Yesterday, in a unanimous opinion authored by Justice Sotomayor, the U.S. Supreme Court in Hana Financial., Inc. v. Hana Bank et al. decided that trademark tacking is a question of fact to be decided by juries, and that the technical legal criteria for deciding whether a new mark could be “tacked” onto a prior mark is whether the two “tacked” marks are so similar that consumers “consider both as the same mark.” The Justices reasoned that this standard “relies upon an ordinary consumer’s understanding of the impression of the mark,” and should therefore be decided by a jury of ordinary consumers. Today’s decision could greatly affect the predictability of the outcome of trademark infringement cases.

Generally, the party that uses a mark first has priority to that mark and the right to prohibit any other party from using any “confusingly similar” mark. Trademark tacking allows a new mark with a later priority date to utilize the priority date of a prior mark, by treating the new mark and prior mark as one in the same. The Supreme Court decision has important practical implications for trademark enforcement and for defending against infringement claims. Both trademark owners and accused infringers now know that courts will treat the issue of combining similar or “legally equivalent” marks as a question of fact for the jury. As a practical matter, creating and maintaining families of marks and not abandoning old marks should assist trademark owners with tacking and priority arguments.

Of potentially greater significance, the Supreme Court’s decision may also impact the way courts treat the “likelihood of confusion” question that is typically involved in trademark infringement cases. Similar to tacking, Federal Circuit Courts of Appeal are split on whether “likelihood of confusion” is a question of fact or law, and for a judge or jury to decide. Polsinelli’s Intellectual Property and IP Litigation teams will continue to monitor for ongoing developments.