Intellectual Property Law
New Matter Spring 2015, Volume 40, Number 1
Content
- Licensing Interest Group
- Contents
- Technology, Internet, and Privacy Interest Group
- Trade Secrets Interest Group
- Letter from the Editor-in-Chief
- Sins of Omission: Panduit's Overreach in Patent Model Jury instructions
- The State Bar of California Intellectual Property Alumni
- International Interest Group
- Copyright Interest Group
- MCLE Self-Study Article
- International Ip Developments
- Supreme Court Considers Two Trademark Cases That May Alter How Holders Register, Protect, and Use Their Marks
- Case Comments
- Intellectual Property Section Executive Committee 2014-2015
- Trademark Interest Group
- Litigation Interest Group
- Intellectual Property Section Interest Group Representatives 2014-2015
- Letter from the Chair
- Patent Interest Group
- Legislation Update
- Del Monte International v. Del Monte Corporation: the Battle for the .Delmonte Top-Level Domain
- Ninth Circuit Report
- Entertainment and Sports Law Interest Group
- 2015 New Matter Author Submission Guidelines
- The Licensing Corner
- Federal Circuit Review
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