By Sarah Nagae
Last Monday the US Supreme Court granted cert in a trademark case involving “tacking.” Tacking allows a trademark owner to add the time they used a prior version of a mark to the amount of time they have used a current version to arrive at a priority date so long as the prior version is similar enough to the current version that consumers would perceive that a single mark had been used throughout. The specific question involved in the case, Hana Financial, Inc. v. Hana Bank, Supreme Court case number 13-1211, is whether the “similar enough” test is a question of law (to be decided by a judge) or a question of fact (to be decided by the fact-finder, usually a jury). The Ninth Circuit treats it as a question of fact while the Federal and Sixth circuits treat it as a question of law.
This case is interesting because circuit courts of appeal (and the district courts within undecided circuits) treat tacking the same way they treat likelihood of confusion. In other words, if a circuit treats likelihood of confusion as a question of fact, then it also treats tacking as a question of fact. In the words of the Ninth Circuit, this is because tacking and likelihood of confusion are “analogous trademark issue[s].” Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158, n.5 (9th Cir. 2013). While tacking does not come up very often, almost every trademark case turns on the likelihood of confusion question.
On one hand, tacking requires a fact-intensive inquiry that is best determined by the fact-finder. It involves determining whether an ordinary purchaser of the relevant types of goods or services would perceive the marks as conveying the same commercial impression. Commercial impression is “the meaning or idea [a mark] conveys or the mental reaction it evokes.” Hana Financial, 735 F.3d 1158 at 1164 (citations omitted). It makes sense that a jury would be in the best position to evaluate the perception of a trademark in the minds of consumers.
On the other hand, treating likelihood of confusion (and therefore tacking) as a matter of law makes sense from a procedural standpoint for the Federal Circuit. The Court of Appeals for the Federal Circuit is the primary appellate court for the Trademark Trial and Appeal Board (TTAB). The TTAB reviews the decisions of the Director of the USPTO (via its examining attorneys). Typically, TTAB cases are decided by three-judge panels, with one judge assigned to review the full record and report his or her findings and opinion to the other two judges. Thus, TTAB judges act as both fact-finders and as decision-makers for questions of law. The two types of determinations are not always as clearly delineated in TTAB decisions as they are in federal district court cases, where juries produce findings of fact and then apply the law to those findings.
Considering this background, one can understand why the Federal Circuit reviews issues such as tacking as questions of law. Questions of law are decided by appellate courts de novo while questions of fact are decided using a “clearly erroneous” standard. If the Federal Circuit had to decide tacking and likelihood of confusion questions under a clearly erroneous standard, then it would have very little authority over the TTAB. Therefore, while this case is focused on a narrow question related to tacking, the Supreme Court’s decision could affect how likelihood of confusion is decided, the way the TTAB frames its opinions, and the degree of review that the Federal Circuit has over the TTAB.