This week, the U.S. Supreme Court heard oral arguments on two important trademark cases: Hana Financial, Inc. v. Hana Bank and B&B Hardware v. Hargis Industries. In Hana, the Court considers the “tacking” doctrine, whereby mark owners attempt to “tack” the priority of an earlier-used mark onto a later-adopted mark in order to extend back in time the priority of the later-adopted mark. The test for whether tacking will be allowed is whether the party’s original mark and later-adopted mark create the same “commercial impression” in the minds of consumers. The question that the Supreme Court is considering is whether a determination that the same “commercial impression” is created should be made by the trial judge (as a determination of law) or by the jury (as a determination of fact). Below, the trial judge ruled this was a question of fact, and let this go to the jury.
B&B Hardware may be the more important case, as there the Court is taking up the question of whether the Trademark Trial and Appeal Board’s finding of a likelihood of confusion in an administrative challenge before the TTAB will preclude a party from later relitigating that element in federal district court litigation, and (if relitigation in district court is allowed), whether the district court must defer to the TTAB’s findings on confusion absent strong evidence to rebut it. As anyone who has practiced before the TTAB knows, the scope of what the TTAB will consider is much narrower than the scope of issues available in district court litigation. If TTAB findings on confusion become preclusive, it will raise the stakes significantly in TTAB litigation (and will ironically likely result in more district court filings, as respondents in TTAB proceedings will immediately run to district court rather than risk a dispositive finding on confusion before an agency that will consider that issue rather narrowly). This is the first time in over a decade that the Supreme Court has taken up any trademark cases, so stay tuned for more once these decisions issue.