Westchester Women's Bar Association

Trademark Law and the Tacking Doctrine

Under trademark law, consistent use of a trademark is critical for maintaining rights. Changing a trademark can have significant consequences. Often, trademark owners may want to update the look of its mark to keep pace with the changing market conditions or contemporary culture. Rights in the original format can be lost if the change is material, and if the owner stops using the older version of the mark. The courts have recognized that trademark owners may need to refresh their brands from time to time. To acknowledge this, the doctrine of tacking was developed. This doctrine allows a mark owner to make minor modifications without abandoning ownership of the original trademark. In addition, under the tacking doctrine, the trademark owner can rely on the earlier filing date for purposes of priority for the new version of the mark. This may be critical in a priority dispute, see our web page entitled, Priority Determinations In Trademark Law.

Relying on an earlier form of a trademark, when later using a modernized version of the mark was addressed in Jack Wolfson Ausrustung fur Draussen GmbH & Co. KgaA v. New Millennium Sports, S.L.U., 116 USPQ2d 1129 (Fed. Cir. 2015) [precedential]. The U.S. Court of Appeals for the Federal Circuit (the "CAFC") decided this dispute over priority, holding that if the old form of the mark and the new version are legal equivalents, tacking will be permitted. See also, The Trademark Manual of Examining Procedure ("TMEP") §1212.04(b) where it states: "A proposed mark is the "same mark" as a previously registered mark for the purpose of 37 C.F.R. §2.41(a)(1) if it is the "legal equivalent" of such a mark. A mark is the legal equivalent of another mark if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark."

The modified new version cannot materially differ from or alter the character or commercial impression of the earlier mark. If the two versions are held to be the equivalents, then the earlier mark will not be able to be successfully challenged on abandonment grounds, and tacking will apply. In the Jack Wolfson case, the CAFC noted that the literal term of the subject mark KELME was updated to use a different font style, but the modification did not materially alter the impression of the word KELME. In addition, the Court held that by adding claws to the paw design, the commercial impression was not materially changed. The Court stated that the design in a composite mark is typically thought of as a minor element of the mark, and the literal term considered to be the dominant element of the trademark. Therefore, a minor modification to the design aspect did not materially alter the mark. The CAFC concluded that the two versions were legal equivalents. This was not the first case where tacking was permitted by the Court.

Courts have also allowed tacking to occur in the following cases:

  1. Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 U.S.P.Q.2d 1856 (TTAB 2007) AQUA STOP (in a stylized font) & AQUA STOP (in a different font and in a semi circle design);
  2. D & J Master Clean, Inc. v. Servicemaster Co., 181 F. Supp. 2d 821 (S.D. Ohio 2002) SERVICE MASTER & SERVICE MASTER CLEAN;
  3. In re Umax Data System, Inc., 40 U.S.P.Q.2d 1539, 1541 (Com'r Pat. & Trademarks 1996) UMAX (in a stylized font) and UMAX (in a different stylized font);
  4. Joseph & Feiss Co v. Tempco Quilters, Inc., 171 U.S.P.Q. 378 (TTAB 1971) THIRST AID FIRST AID FOR YOUR THIRST & THIRST AID; and
  5. Humble Oil & Refining Company v. Sekisui Chemical Company Ltd. of Japan, 165 U.S.P.Q. 597 (TTAB 1971) S-LON & ESLON; (6) Miami Credit Bureau, Inc. v. Credit Bureau, Inc., 276 F.2d 565, 568 (5th Cir. 1960) CREDIT BUREAU OF GREATER MIAMI & MIAMI CREDIT BUREAU.

Trademark owners must carefully consider their legal rights when determining if they should modify and modernize a mark. In situations where clients are considering a refresh of a brand, trademark counsel should discuss the tacking doctrine with their clients, and attempt to take advantage of the benefits of simply making minor alterations to a mark so that the marks will be considered legal equivalents, and priority rights of an earlier version can be maintained. If you have questions pertaining to the tacking doctrine or other trademark related questions, please do not hesitate to contact the firm for a courtesy consultation.

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