Circuit Court Split: Tacking Old Forms of Trademark

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

The previously used mark must be the legal equivalent of the mark in question or indistinguishable therefrom, and the consumer should consider both as the same mark. However, for the purposes of “tacking,” even if the two marks are confusingly similar, they still may not be legal equivalents. Instead, 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.

The opinion notes that a particular court’s approach to the tacking issue strongly is related to how that court treats the issue of “likelihood of confusion.”  In other words, courts that view “likelihood of confusion” as a question of fact tend to treat the issue of  tacking the same way and vise versa.
According 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 “visual or aural appearance of the marks,” which is “in essence an ‘eyeball’ test.”  Here, the court treated the tacking issue as a question of fact, requiring, as the 9^th circuit does, a “highly fact-sensitive inquiry. ”  However, even when a court treats the issue as a question of fact, summary judgment may still be awarded, as it was here, when “reasonable minds cannot differ and the evidence permits only one conclusion.”