Document Type
Working Paper
Publication Date
6-15-2017
SSRN Discipline
LSN Subject Matter eJournals; Innovation Disciplines eJournals; ERPN Subject Matter eJournals; Financial Economics Network; IRPN Subject Matter eJournals; Intellectual Property Law eJournals; Innovation Research & Policy Network; Economics Research Network; Legal Scholarship Network; Entrepreneurship Research & Policy Network; Law School Research Papers - Legal Studies; Corporate Governance Network; Law & Society eJournals; Law & Society: Private Law eJournals
Abstract
When trademarks cannot coexist because they are confusingly similar priority generally depends upon first use However through the practice known as "tacking" the junior user can sometimes prevail based on its earlier adoption of a similar but technically distinct trademark The Supreme Court recently determined that tacking is a question of fact to be resolved by a jury under the guidance of "careful jury instructions that make the standard clear" Courts say the standard for tacking is "exceedingly strict" and that tacking is allowed only when the earlier mark and the revised mark are so similar that they convey the "same commercial impression" and consumers would regard both as "the same mark" In practice this standard is not "clear" nor is it rooted in sound policy justifications In fact it could often hamper competition deny consumers useful information and lead to the very sorts of confusion that the trademark laws are intended to prevent This Article proposes as an alternative a standard for tacking based on a comparison of the original and the revised trademarks to the intervening mark the question being whether the changes did or did not contribute to the potential for confusion
Recommended Citation
Alan L. Durham,
The Trouble with Tacking: A Reconsideration of Trademark Priority,
(2017).
Available at:
https://scholarship.law.ua.edu/fac_working_papers/472