Ninth Circuit Report

ANNE-MARIE DAD Miclean Gleason LLP

On January 21, 2015, the Supreme Court issued a unanimous decision adopting the Ninth Circuit’s standard for tacking.¹ In considering the issue "[w]hether, in a trademark infringement case, the issue of whether tacking was available to determine trademark priority was properly submitted to the jury"² the Supreme Court held that because the inquiry of whether tacking is available to determine trademark priority "operated from the perspective of an ordinary purchaser or consumer, a jury should make the determination."³ In other words, the jury—not the judge—should make the determination about whether tacking is available in a case. While the implications of this recent holding are yet unknown, if the decision is broadened past the narrow issue of trademark tacking, the implications can be widespread. This will especially be the case if the decision is applied to the likelihood of confusion analysis. This issue of the Ninth Circuit Report will center on the Ninth Circuit’s opinion which the Supreme Court upheld.

BACKGROUND

The tacking doctrine allows a trademark owner to "tack" its use of an earlier trademark onto a later trademark "for priority purposes if the two marks are used in connection with the same goods or services and make the "same, continuing commercial impression" on members of the relevant purchasing public."⁴