The other night, I attended Benjamin Franklin Inn of Court meeting and I really liked it. Like, really liked it. We discussed two things about trademarks: tacking; and functionality. Let’s talk tacking first, but stay tuned for part two of this article covering functionality.
Tacking works like this. You have a registered trademark and one day you decide to make it a little hip. Now you want to register your new trademark, and when you’re asked for the priority date, you use the priority date of the registered trademark. Why can you do this you ask? Well because the presumption is, your registered trademark and your new trademark are similar enough that the consumers will think of the two marks as the same mark.
Here’s the legal way of saying it:
Tacking is available when the original and revised marks are “legal equivalents” in that they create the same, continuing commercial impression. See Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013). It’s important to keep in mind that tacking applies only in “exceptionally narrow circumstances.” See id.
I’m sure you’ve seen tacking before. The one that I really like is the Prudential Financial logo. The picture below is from the Prudential website. First one you see is very detailed, and over time, it’s become more modern and simplified. If you look at their original logo and compare it to the most recent one, you probably won’t think they give off the same commercial impression. But gradual changes over a long period of time allowed Prudential to use tacking.
Another example I like is the Starbucks logo. There was an article that NY Times published a few years ago, which was accompanied by images of potential Starbucks logos in the future. The logos below are from AdWeek. The article talked about how some consumers were alarmed by the change in the logo, but the logo was nevertheless recognizable because the Starbucks siren remained.
Last month, there was a trademark case called Hana Financial, Inc. v. Hana Bank, 574 U.S. ___ (2015), held before the Supreme Court. This case was decided this week. The issue before the Court was whether two trademarks may be tacked for purposes of determining priority is a question for the jury (as opposed to a judge). And the Court unanimously said yes, but this does not mean that a judge may never determine whether two marks may be tacked.
For me, this doesn’t come as a shock, given that tacking happens when two marks give the same commercial impression to consumers… the same people who make up the jury. Nevertheless, Hana Financial made a few arguments and the Court responded:
(Sorry the font is small in the chart. I couldn't figure out how to make a chart so I had to do it on a word doc and copy and paste it.) If you’re thinking about re-branding, you might not have to start from scratch. In fact, it might be good to keep some key elements so that consumers still recognize you, but see you in a new light.
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