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15.14 Infringement—Elements—Ownership—Priority Through Tacking

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15.14 INFRINGEMENT—ELEMENTS—OWNERSHIP—PRIORITY THROUGH TACKING  

The [Plaintiff] [Defendant] asserts that [his] [her] [its] mark has priority through the doctrine of "tacking." Tacking allows a party to claim priority in a mark based on the first use date of a similar but technically distinct mark when the previously used mark is the legal equivalent of the mark in question or indistinguishable therefrom, such that consumers consider both as the same mark. The marks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked. 

Comment

The Ninth Circuit approved a similar instruction in Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158, 1166 (9th Cir.2013), aff’d, 135 S. Ct. 907 (2015). The standard for tacking is exceedingly strict and applies only in "exceptionally narrow" circumstances. Id. A trademark user may tack the date of the user’s first use of an earlier mark onto a subsequent mark only when "‘the two marks are so similar that consumers generally would regard them as essentially the same.’" Id. (quoting Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1048 (9th Cir.1999)). The standard for tacking is considerably higher than the standard for likelihood of confusion. Id. at 1164-65. For examples of types of marks that have been properly and improperly tacked, see 3 J. Thomas McCarthy, Trademarks And Unfair Competition §§ 17:26–28 (4th ed. 2015).