I just skimmed the transcript of the Hana Bank case on “tacking” before the Supreme Court and provided comments and some of the interesting dialogue below. The oral hearings for the case took place about two weeks ago on December 3, 2014. The graphic below is my attempt at using visual design tools to help make cases easier to understand (comments/criticisms welcome). This case is about “tacking”, which often occurs in trademark infringement cases where a earlier user has a trademark and then later alters/updates the trademark to stay current. For example, think of the Pepsi logo and all of it’s evolutions. In between the original and updated trademark, a second user begins using a trademark and then sues the earlier user when it begins using the updated trademark. “Tacking” can be used by the defendant who is the earlier user as a defense, essentially claiming that the rights of the updated trademark began at the time of the original trademark. Thus, the trademark protection of the original mark is “tacked on” to the protection of the updated mark.
However, tacking is only allowed where the updated mark is not too different from the original mark, or in legal terms, the marks must have “the same commercial impression”. To best explain the facts of the Hana Bank case, I’ve made a graphic which I think will make sense of the matter. I would be really interested in hearing your comments about the clarity and even the design of the graphic.
As you see there, the main question in the case is whether the determination of the commercial impression between the original and updated marks should be for a judge or a jury. At the trial level, the determination was made by a jury, and the Petitioner in the Supreme Court was arguing that the question should be one for the judge, and not the jury. The Justices got right into the meat of the matter early on in the hearing:
Justice Ginsburg: “to determine whether there is [a, in] the magic words, ‘same continuing commercial impression to consumers,’ then the one’s that’s better equipped to make that determination are people who are consumers, not jurists…Even the Federal Circuit case that [supports the Petitioner says that the is whether the old and new mark convey the same continued commercial impression to consumers.”
The Petitioner’s lawyer tries to answer, unsuccessfully: “the Federal Circuit adds an additional factor [to the analysis], which is the aural and visual appearance, do the two marks have the same aural and visual appearance? And what I think that shows is if the courts are not looking at this as a factual comparison…”
Justice Ginsberg finishes his sentence: “aural and visual to whom? To the people likely to buy these products, not to the judge.”
Lastly, I thought the Petitioner interestingly brought a case to the discussion which I thought did not support his case at all. The Petitioner was using a case where the original mark was SERVICEMASTER and was later updated to SERVICEMASTER CLEAN. In between, the second user began using MASTER CLEAN. In that case, tacking was allowed for the earlier user, which I thought was not good for illustrating Petitioner’s point that judges can make good calls in determining “same commercial impression”. SERVICEMASTER and SERVICEMASTER CLEAN are far too different to be considered as having the same commercial impression, where the standard is usually quite tight and doesn’t allow for widely varying marks to benefit from tacking.
Due to the high volume of questioning by the Justices of the Petitioner, I’d wager that this case will be in favor of the Respondents, making tacking a question of fact for juries. We’ll know in a few months. I’d be interesting in hearing from others who’ve been following this case, especially if you saw the oral hearing differently.