{"id":1640,"date":"2013-04-18T20:57:07","date_gmt":"2013-04-18T20:57:07","guid":{"rendered":"http:\/\/ncjolt.org\/?p=1640"},"modified":"2020-06-04T20:54:01","modified_gmt":"2020-06-04T20:54:01","slug":"circuit-court-split-tacking-old-forms-of-trademark","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/ncjolt\/blogs\/circuit-court-split-tacking-old-forms-of-trademark\/","title":{"rendered":"Circuit Court Split: Tacking Old Forms of Trademark"},"content":{"rendered":"

Thursday, April 18, 2013, by Drew Hargrove
\nTrademark law allows an owner to \u201ctack\u201d an older form of mark if the owner makes slight alterations to the existing mark.\u00a0 \u00a0In order to \u201ctack\u201d the old form of a mark, both the old and new form of the mark must retain the same, \u201ccontinuing commercial impression.\u201d\u00a0 Otherwise, improper tacking can result in abandonment of the old form of the trademark.
\nThe federal courts have differed in how they apply the \u201ccontinuing commercial impression\u201d rule.\u00a0 Most notably, there is a circuit split as to whether the issue of tacking is a question of law or fact.\u00a0 The Sixth and Federal Circuits have held that tacking is a question of law.\u00a0 However, the Fifth, Seventh, and Ninth Circuits have held that tacking is a question of fact.
\nRecently, the Southern District of Texas addressed the tacking issue in holding that a restaurant\u2019s decision to completely redesign its logo prevented it from tacking the old form of the mark.\u00a0 In that case, Louangel, Inc. v. Darden Restaurants<\/i><\/a>, the court expressly recognized the circuit court split on the issue of tacking.\u00a0 However, the court also emphasized that the federal courts apply the same, strict standard, allowing tacking only when the new mark is the \u201clegal equivalent\u201d of the old mark, regardless of whether the issue is treated as a question of law or of fact.\u00a0 The court cites the \u201cuniversally recited\u201d rule as follows:<\/p>\n

The previously used mark must be the legal equivalent<\/i> of the mark in question or indistinguishable<\/i> therefrom, and the consumer should consider both as the same mark. However, for the purposes of \u201ctacking,\u201d even if the two marks are confusingly similar, they still may not be legal equivalents.<\/i> Instead, the marks must create \u201cthe same, continuing commercial impression,\u201d<\/i> and the later mark should not materially differ from or alter the character of the mark attempted to be \u201ctacked.<\/p><\/blockquote>\n

The opinion notes that a particular court\u2019s approach to the tacking issue strongly is related to how that court treats the issue of \u201clikelihood of confusion.\u201d\u00a0 In other words, courts that view \u201clikelihood of confusion\u201d as a question of fact tend to treat the issue of\u00a0 tacking the same way and vise versa.
\nAccording to the opinion, courts treating tacking as a question of law will determine adherence to the rule above by comparing the marks, based on the \u201cvisual or aural appearance of the marks,\u201d which is \u201cin essence an \u2018eyeball\u2019 test.\u201d\u00a0 Here, the court treated the tacking issue as a question of fact, requiring, as the 9th<\/sup> circuit does, a \u201chighly fact-sensitive inquiry. \u201d \u00a0However, even when a court treats the issue as a question of fact, summary judgment may still be awarded, as it was here, when \u201creasonable minds cannot differ and the evidence permits only one conclusion.\u201d<\/p>\n","protected":false},"excerpt":{"rendered":"

Thursday, April 18, 2013, by Drew Hargrove Trademark law allows an owner to \u201ctack\u201d an older form of mark if the owner makes slight alterations to the existing mark.\u00a0 \u00a0In order to \u201ctack\u201d the old form of a mark, both the old and new form of the mark must retain the same, \u201ccontinuing commercial impression.\u201d\u00a0 …<\/a><\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":[],"categories":[51],"tags":[],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/1640"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/comments?post=1640"}],"version-history":[{"count":1,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/1640\/revisions"}],"predecessor-version":[{"id":7595,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/1640\/revisions\/7595"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media?parent=1640"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/categories?post=1640"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/tags?post=1640"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}