Scott D. Locke, Partner and Chair of Dorf Nelson & Zauderer’s Intellectual Property Department, New York Law Journal, “Trademark Priority and Tacking”

Trademark rights arise from use of a trademark in commerce. When two or more entities offer the same or related goods or services under the same or similar trademarks, in general, the first entity that uses a trademark, or files an intent to use trademark application, has seniority.

With seniority comes priority and the right to prevent competitors from using the same or similar trademarks in a manner that is likely to confuse consumers.

However, brand owners often change their trademarks over time and expand their uses by offering new goods and services. With each change, a brand owner must reconsider the competitive landscape and ask whether any new direction for a brand implicates the rights of third parties and if so, who has priority.

When a trademark owner has changed its mark over time but done so in a way such that the new mark is the “legal equivalent” of the earlier used mark, through the doctrine of “tacking,” the trademark owner is permitted to claim priority to, and thus take advantage of, the date of first use of the earlier used trademark. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1047-1048 (Fed. Cir. 1999).

The issue of “legal equivalents” focuses on two iterations of a trademark. However, trademark rights exist only in connection to goods and services. Therefore, when a trademark owner expands its product line or services, one must consider whether there are limits to the application of the tacking doctrine beyond the require of two trademarks being “legal equivalents.”

In a case of first impression, the Court of Appeals for the Federal Circuit recently held that there are strict limits on using the tacking doctrine to take advantage of an earlier use of a mark on different of goods or services. Bertini v. Apple Inc., 63 4th 1373 (Fed. Cir. 2023).

Tacking: Evolution of Trademarks

The doctrine of tacking has traditionally been used to permit trademark owners to make modifications to their trademarks over time without losing the benefit of the goodwill developed during the period in which the trademark owner used earlier iterations of its mark, i.e., there is no loss of priority over others who introduced their trademarks before the changes to the trademark were made. Hana Financial, Inc. v. Hana Bank, 574 U.S. 418, 422 (2015).

Trademark law recognizes the doctrine of tacking because without tacking, a trademark owner would be discouraged from making even slight alterations to its trademarks in response to changing consumers’ preferences, evolving aesthetic developments, and new advertising and marketing styles. Brookfield Comm., 174 F. 3d at 1048.

A trademark owner is able to take advantage of the doctrine of tacking if the earlier and later iterations of its trademark are “legal equivalents,” which is defined as creating the same continuing commercial impression Hana Financial, 574 U.S. at 422.

Whether two iterations of a trademark create the same commercial impression is determined by asking whether the later mark is materially different from or alters the character of the earlier trademark. Brookfield Communications, 174 F.3d at 1048.

This standard is significantly higher than the more familiar “likelihood of confusion” standard that is considered when comparing trademarks of different trademark owners. Id.

Examples of when trademark owners were not permitted to invoke the doctrine of tacking are:

      • Moviebuff.com could not be tacked onto The Movie Buff’s Movie Store. Brookfield Communications, 174 F.3d at 1049.
      • One Industries, LLC v. Jim O’Neal Distributing, Inc.¸578 F.3d 1154, 1161 (9th2009).
      • Pro-Cuts v. Schilz-Price Enters. Inc., 27 U.S.P.Q.2d 1224, 1227 (TTAB 1993).

By contrast, examples of when trademark owners were permitted to invoke the doctrine of tacking are:

      • AWGI, LLC v. Atlas Trucking Company, LLC, 2020 WL 3546100 *41-42 (E.D. Mich).
      • American Security Bank v. American Security & Trust Co., 571 F.2d 564, 567 (CCPA 1978).
      • Hess’s of Allentown, Inc. v Nat’l Bellas Hess, Inc., 169 U.S.P.Q. 673, 674-75 (TTAB 1971).

Issues related to tacking are viewed through the eyes of the consumer and application of the legal equivalents test requires asking what is the impression of the mark, which the Supreme Court has recognized can be fact-intensive. Hana Financial, 574 U.S. at 422.

Thus, trademark owners who wish to take advantage of the doctrine of tacking should be aware that doing so may be cumbersome.

Tacking: Expansion of Goods

Assuming that the doctrine of tacking is available because the earlier and later iterations of two trademarks are legal equivalents, then one must consider whether tacking should apply to all goods and services that are sold under the later iteration of the trademark. The Federal Circuit recently addressed this issue in Bertini v. Apple., 63 F.4th 1373 (Fed. Cir. 2023).

Apple Inc. is the owner of a trademark for APPLE, which is the subject of a registration certificate that issued in 1968. The registration certificate recites the following goods: “Gramophone records featuring music” and “audio compact discs featuring music.” Trademark Registration No. 2034964. (As originally issued, the registration contained additional goods that have since been removed).

In 1985, Bertini began using its common law trademark APPLE JAZZ for “arranging, organizing, conducting, and presenting concerts [and] live musical performances.” Bertini, 64 F.4th at 1376.

In 2015, Apple began using the trademark APPLE MUSIC. That year, Apple filed a trademark application for APPLE MUSIC for a large class of services related to entertainment. U.S. trademark application serial number 86/659,444.

Bertini opposed Apple’s trademark application. The Trademark Trial and Appeal Board (TTAB) held, and the parties agreed, that there was a likelihood of confusion between Bertini’s use of its APPLE JAZZ trademark and APPLE’s use of its APPLE MUSIC trademark. Bertini v. Apple, Inc., 2021 WL 1575580 (TTAB April 16, 2021).

However, the TTAB also held that Apple was entitled to tack its 2015 use of APPLE MUSIC onto the 1968 use of APPLE, thereby giving Apple priority. Id. Consequently, the TTAB dismissed the opposition.

With respect to whether APPLE and APPLE MUSIC were legally equivalents, the TTAB held that the addition of the term MUSIC did not create a different commercial impression because the term is generic when used in connection with sound recordings and the production and distribution of sound recordings. Bertini, 2021 WL 1575580 at *20.

The TTAB emphasized that the inclusion of the term MUSIC was a modernization of the trademark that retained the commercial impression of the trademark APPLE. Id.

The TTAB next considered whether the goods or services that were marketed under the earlier trademark, APPLE, were the same or similar as the goods or services that were marketed under the later trademark, APPLE MUSIC. Id.

It concluded that because sound recordings are inseparable from the production and distribution of sound recordings, the goods offered under APPLE in 1968 were sufficiently related the services offered under APPLE MUSIC. Id.

The TTAB did not consider the degree to which each of the different services recited in trademark application that was the subject of the opposition we were related to goods recited in Trademark Registration No. 2034964.

On appeal from the USPTO, the Federal Circuit addressed “whether a trademark applicant can establish priority for every goods or service in its application merely because it has priority through tacking in a single good or service listed in its application.” Bertini, 63 4th at 1379. The Federal Circuit answered its question in the negative. Id.

The Federal Circuit emphasized that in the trademark application at issue, Apple listed fifteen broad categories of services and that the TTAB had not considered whether each of those categories of services was entitled to claims priority to the 1968 registration. Id.

Instead, the TTAB stopped its inquiry after it found that one of those services, the production and distribution of music, was entitled to claim priority. Id. The Federal Circuit held that the TTAB erred, explicitly noting “A trademark owner must show tacking is available for each good or service to for which it claims priority on that ground.” Id.

Thus, the standard for claiming priority by tacking is not the same for opposing registration: An opposer can block a trademark application in full by showing priority and a likelihood of confusion with respect to any goods or services, but an applicant cannot establish absolute priority, i.e., avail itself of tacking, for all goods and services by simply proving priority of use for a single good or service. Id. at 1379-80.

After holding that tacking inquiry must be made for each good and service in the later application, the Federal Circuit created a standard by which to make this inquiry. The goods and services must be “substantially identical” for tacking to apply. Id. at 1381.

Whether goods and services are substantially identical for purposes of tacking one must ask whether “the new goods or services are within the normal evolution of the previous line of goods or services. …which depends, at least in part, on whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services. Id.

Thus, the Federal Circuit noted that if products evolve because of changes in technology, e.g., from gramophone records to cassettes to compact discs, a trademark owner should not lose its priority, “so long as consumers would associate these various music formats as emanating from the same source.” Id. at 1381.

In the case before it, the Federal Circuit held that the issue on appeal boiled down to whether Apple’s offering of live musical performances (as opposed to the production and distribution of music) were substantially identical to gramophone records. Id. at 1381.

The Federal Circuit held that they were not substantially identical because nothing in the record supported a finding that consumer would think that live musical performances were within the normal product evolution of gramophone records. Id.

Conclusion

The Federal Circuit’s recent decision in Bertini v. Apple., implicitly created a two-prong analysis for tacking inquiries: (1) Are the earlier and later marks legally equivalents, i.e., do they create the same continuing commercial impression?; and (2) Is each good and service in the later application substantially identical to a good and service in an earlier registration i.e., if not the same are they within a natural evolution of offerings? Each of these prongs can be cumbersome, but necessary in order to protect one’s brand.

Additionally, because Bertini was a case of first impression, it did not fully flesh out the second prong. Among the unanswered question of Bertini is how to treat genus and species issues. For example, are haircare preparations substantially identical to shampoos? As these and other issues related to tacking arise, one might expect applicants to consider filing more divisional trademark applications to allow registration of marks for goods and services for which tacking is clearly allowed, while simultaneously appealing from ex parte refusals or defending oppositions when there is a disputed issue over whether the tacking is appropriate.

This article is also on Law.com: Trademark Priority and Tacking

Trademark rights arise from use of a trademark in commerce. When two or more entities offer the same or related goods or services under the same or similar trademarks, in general, the first entity that uses a trademark, or files an intent to use trademark application, has seniority.

With seniority comes priority and the right to prevent competitors from using the same or similar trademarks in a manner that is likely to confuse consumers.

However, brand owners often change their trademarks over time and expand their uses by offering new goods and services. With each change, a brand owner must reconsider the competitive landscape and ask whether any new direction for a brand implicates the rights of third parties and if so, who has priority.

When a trademark owner has changed its mark over time but done so in a way such that the new mark is the “legal equivalent” of the earlier used mark, through the doctrine of “tacking,” the trademark owner is permitted to claim priority to, and thus take advantage of, the date of first use of the earlier used trademark. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1047-1048 (Fed. Cir. 1999).

The issue of “legal equivalents” focuses on two iterations of a trademark. However, trademark rights exist only in connection to goods and services. Therefore, when a trademark owner expands its product line or services, one must consider whether there are limits to the application of the tacking doctrine beyond the require of two trademarks being “legal equivalents.”

In a case of first impression, the Court of Appeals for the Federal Circuit recently held that there are strict limits on using the tacking doctrine to take advantage of an earlier use of a mark on different of goods or services. Bertini v. Apple Inc., 63 4th 1373 (Fed. Cir. 2023).

Tacking: Evolution of Trademarks

The doctrine of tacking has traditionally been used to permit trademark owners to make modifications to their trademarks over time without losing the benefit of the goodwill developed during the period in which the trademark owner used earlier iterations of its mark, i.e., there is no loss of priority over others who introduced their trademarks before the changes to the trademark were made. Hana Financial, Inc. v. Hana Bank, 574 U.S. 418, 422 (2015).

Trademark law recognizes the doctrine of tacking because without tacking, a trademark owner would be discouraged from making even slight alterations to its trademarks in response to changing consumers’ preferences, evolving aesthetic developments, and new advertising and marketing styles. Brookfield Comm., 174 F. 3d at 1048.

A trademark owner is able to take advantage of the doctrine of tacking if the earlier and later iterations of its trademark are “legal equivalents,” which is defined as creating the same continuing commercial impression Hana Financial, 574 U.S. at 422.

Whether two iterations of a trademark create the same commercial impression is determined by asking whether the later mark is materially different from or alters the character of the earlier trademark. Brookfield Communications, 174 F.3d at 1048.

This standard is significantly higher than the more familiar “likelihood of confusion” standard that is considered when comparing trademarks of different trademark owners. Id.

Examples of when trademark owners were not permitted to invoke the doctrine of tacking are:

      • Moviebuff.com could not be tacked onto The Movie Buff’s Movie Store. Brookfield Communications, 174 F.3d at 1049.
      • One Industries, LLC v. Jim O’Neal Distributing, Inc.¸578 F.3d 1154, 1161 (9th2009).
      • Pro-Cuts v. Schilz-Price Enters. Inc., 27 U.S.P.Q.2d 1224, 1227 (TTAB 1993).

By contrast, examples of when trademark owners were permitted to invoke the doctrine of tacking are:

      • AWGI, LLC v. Atlas Trucking Company, LLC, 2020 WL 3546100 *41-42 (E.D. Mich).
      • American Security Bank v. American Security & Trust Co., 571 F.2d 564, 567 (CCPA 1978).
      • Hess’s of Allentown, Inc. v Nat’l Bellas Hess, Inc., 169 U.S.P.Q. 673, 674-75 (TTAB 1971).

Issues related to tacking are viewed through the eyes of the consumer and application of the legal equivalents test requires asking what is the impression of the mark, which the Supreme Court has recognized can be fact-intensive. Hana Financial, 574 U.S. at 422.

Thus, trademark owners who wish to take advantage of the doctrine of tacking should be aware that doing so may be cumbersome.

Tacking: Expansion of Goods

Assuming that the doctrine of tacking is available because the earlier and later iterations of two trademarks are legal equivalents, then one must consider whether tacking should apply to all goods and services that are sold under the later iteration of the trademark. The Federal Circuit recently addressed this issue in Bertini v. Apple., 63 F.4th 1373 (Fed. Cir. 2023).

Apple Inc. is the owner of a trademark for APPLE, which is the subject of a registration certificate that issued in 1968. The registration certificate recites the following goods: “Gramophone records featuring music” and “audio compact discs featuring music.” Trademark Registration No. 2034964. (As originally issued, the registration contained additional goods that have since been removed).

In 1985, Bertini began using its common law trademark APPLE JAZZ for “arranging, organizing, conducting, and presenting concerts [and] live musical performances.” Bertini, 64 F.4th at 1376.

In 2015, Apple began using the trademark APPLE MUSIC. That year, Apple filed a trademark application for APPLE MUSIC for a large class of services related to entertainment. U.S. trademark application serial number 86/659,444.

Bertini opposed Apple’s trademark application. The Trademark Trial and Appeal Board (TTAB) held, and the parties agreed, that there was a likelihood of confusion between Bertini’s use of its APPLE JAZZ trademark and APPLE’s use of its APPLE MUSIC trademark. Bertini v. Apple, Inc., 2021 WL 1575580 (TTAB April 16, 2021).

However, the TTAB also held that Apple was entitled to tack its 2015 use of APPLE MUSIC onto the 1968 use of APPLE, thereby giving Apple priority. Id. Consequently, the TTAB dismissed the opposition.

With respect to whether APPLE and APPLE MUSIC were legally equivalents, the TTAB held that the addition of the term MUSIC did not create a different commercial impression because the term is generic when used in connection with sound recordings and the production and distribution of sound recordings. Bertini, 2021 WL 1575580 at *20.

The TTAB emphasized that the inclusion of the term MUSIC was a modernization of the trademark that retained the commercial impression of the trademark APPLE. Id.

The TTAB next considered whether the goods or services that were marketed under the earlier trademark, APPLE, were the same or similar as the goods or services that were marketed under the later trademark, APPLE MUSIC. Id.

It concluded that because sound recordings are inseparable from the production and distribution of sound recordings, the goods offered under APPLE in 1968 were sufficiently related the services offered under APPLE MUSIC. Id.

The TTAB did not consider the degree to which each of the different services recited in trademark application that was the subject of the opposition we were related to goods recited in Trademark Registration No. 2034964.

On appeal from the USPTO, the Federal Circuit addressed “whether a trademark applicant can establish priority for every goods or service in its application merely because it has priority through tacking in a single good or service listed in its application.” Bertini, 63 4th at 1379. The Federal Circuit answered its question in the negative. Id.

The Federal Circuit emphasized that in the trademark application at issue, Apple listed fifteen broad categories of services and that the TTAB had not considered whether each of those categories of services was entitled to claims priority to the 1968 registration. Id.

Instead, the TTAB stopped its inquiry after it found that one of those services, the production and distribution of music, was entitled to claim priority. Id. The Federal Circuit held that the TTAB erred, explicitly noting “A trademark owner must show tacking is available for each good or service to for which it claims priority on that ground.” Id.

Thus, the standard for claiming priority by tacking is not the same for opposing registration: An opposer can block a trademark application in full by showing priority and a likelihood of confusion with respect to any goods or services, but an applicant cannot establish absolute priority, i.e., avail itself of tacking, for all goods and services by simply proving priority of use for a single good or service. Id. at 1379-80.

After holding that tacking inquiry must be made for each good and service in the later application, the Federal Circuit created a standard by which to make this inquiry. The goods and services must be “substantially identical” for tacking to apply. Id. at 1381.

Whether goods and services are substantially identical for purposes of tacking one must ask whether “the new goods or services are within the normal evolution of the previous line of goods or services. …which depends, at least in part, on whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services. Id.

Thus, the Federal Circuit noted that if products evolve because of changes in technology, e.g., from gramophone records to cassettes to compact discs, a trademark owner should not lose its priority, “so long as consumers would associate these various music formats as emanating from the same source.” Id. at 1381.

In the case before it, the Federal Circuit held that the issue on appeal boiled down to whether Apple’s offering of live musical performances (as opposed to the production and distribution of music) were substantially identical to gramophone records. Id. at 1381.

The Federal Circuit held that they were not substantially identical because nothing in the record supported a finding that consumer would think that live musical performances were within the normal product evolution of gramophone records. Id.

Conclusion

The Federal Circuit’s recent decision in Bertini v. Apple., implicitly created a two-prong analysis for tacking inquiries: (1) Are the earlier and later marks legally equivalents, i.e., do they create the same continuing commercial impression?; and (2) Is each good and service in the later application substantially identical to a good and service in an earlier registration i.e., if not the same are they within a natural evolution of offerings? Each of these prongs can be cumbersome, but necessary in order to protect one’s brand.

Additionally, because Bertini was a case of first impression, it did not fully flesh out the second prong. Among the unanswered question of Bertini is how to treat genus and species issues. For example, are haircare preparations substantially identical to shampoos? As these and other issues related to tacking arise, one might expect applicants to consider filing more divisional trademark applications to allow registration of marks for goods and services for which tacking is clearly allowed, while simultaneously appealing from ex parte refusals or defending oppositions when there is a disputed issue over whether the tacking is appropriate.

This article is also on Law.com: Trademark Priority and Tacking