54:5 The Trouble with Tacking: A Reconsideration of Trademark Priority

Abstract

When trademarks cannot co-exist 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.