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Intellectual Property Law

New Matter Spring 2015 Volume 40, Number 1

Supreme Court Considers Two Trademark Cases That May Alter How Holders Register, Protect, and Use Their Marks

DOUGLAS MASTERS Loeb & Loeb’s

Over the last decade, trademark law cases have been thin on the ground at SCOTUS. The trademark bar therefore took note when the U.S. Supreme Court heard oral arguments on two separate cases in the field on two consecutive days in December. While the Court’s rulings in both cases will affect how companies safeguard and prosecute their trademarks, the first case, B&B Hardware, Inc. v. Hargis Industries, Inc.,1 implicates a core trademark issue: how the "likelihood of confusion" analysis in registration proceedings fits into the broader trademark protection landscape. B&B Hardware invites a nuanced analysis, but the second case, Hana Financial, Inc. v. Hana Bank,2—already decided by the Supreme Court—presented a more binary inquiry: whether a jury or a judge is better suited to determine ifa revised trademark creates the same "commercial impression" as a previously-registered mark, so as to justify "tacking" of the revised trademark onto the registered mark.

Neither case is apt to capture the public’s imagination or incite fervent discourse. Hana, in particular, posed a very narrow procedural issue. Comments from the bench were relatively indifferent, and it seemed likely that the Court would render a fairly lopsided decision in favor of juries. Indeed, the Court delivered a unanimous decision on January 21, holding that a jury is generally the appropriate decision-maker to provide the "fact-intensive" answer as to whether two marks are legally "equivalent" for tacking purposes.3 While Hana was framed as a "tacking" case, the operative question was one of continuing "commercial impression." Trademark owners sometimes update their marks over time, and, if the alteration is drastic enough, the revised trademark may be regarded as a completely new mark. If, however, an updated trademark still creates the same commercial impression over time as the previously registered mark, the owner may "tack" the altered mark onto the original mark for purposes of establishing the updated mark’s date of priority. The limited question addressed in Hana was whether a judge or jury should evaluate "commercial impression" "as viewed through the eyes of a consumer."4 "Commercial impression" involves subjective judgment, almost by definition. It is, therefore, unsurprising that the Court found that application of the "commercial impression" test "falls comfortably within the ken of a jury."5 A judge may still resolve that question on a motion for summary judgment or in bench trial. The Court noted, however, that juries are frequently called upon to decide mixed questions of law and fact, and a jury is well situated to resolve the equivalence of two marks, provided that the jury instructions are crafted carefully.6

If Hana required the Court to determine who decides the continuity of a mark, B&B Hardware casts the question of a factfinder’s adequacy in a different light. More specifically, the certified issues in B&B Hardware are, first, whether a "likelihood of confusion" finding by the Trademark Trial and Appeal Board (TTAB) has a preclusive effect in an infringement action litigating the same marks, and, second, if collateral estoppel principles do not apply, what degree of deference, if any, later courts should afford to the TTAB’s findings.7 The Court is forced to examine the function and procedural aspects of TTAB registration proceedings, examining both the law of judgments and trademark law to determine whether trademark registration findings are sufficient to bind—or at least influence—district courts in subsequent infringement actions.

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