In Hana Financial v. Hana Bank, 574 U.S. ___ (2015), the U.S. Supreme Court in January resolved a split among the federal circuit courts by holding that juries, rather than judges, should ordinarily decide whether a trademark owner can “tack” together different marks for the purpose of establishing priority. Under the tacking doctrine, a trademark user can make modifications to its trademark over time while still retaining its priority position over other users of the same mark. Whether a trademark user can tack marks together is measured by whether the marks are considered “legal equivalents” or, in other words, whether they create the same continuing commercial impression. In Hana Financial, the Supreme Court concluded that this inquiry must be viewed through the eyes of the ordinary consumer, and therefore is properly determined by a jury in most circumstances.

Trademark law creates the right to adopt and use a symbol or device—the trademark—to distinguish the goods made or sold by the owner of the mark, to the exclusion of others. The origins of trademark law date back to the earliest days of the common law, but federal statutory law—the Lanham Act—was adopted in the 1940s to provide a scheme of national protection for trademarks. State law similarly protects the rights of trademark owners. This entire body of law recognizes the importance of the date of first use of a trademark. Generally, the first user to “plant the flag” of use has the right to exclude all others from using the same or confusingly similar mark. This is known as the owner’s priority. Priority is such an important concept in trademark law that even the owner of a federal registration (which gives the owner powerful weapons to exclude others) may not be able to trump the user of a similar unregistered mark, if that unregistered use predates the use disclosed in the federal registration.

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