Many commentators have weighed-in on the Supreme Court's recent Hana Financial decision, which involved two competing HANA-formative marks for financial services, including one that had been modified over the years to couple HANA with different additional descriptive/generic terms. The decision is noteworthy in that the Supreme Court held that the issue of "tacking" -- which allows a company to slightly modify a trademark while maintaining the original first-use date, so long as the marks create the same impression in the eyes of consumers -- is a factual question, to be decided by juries. The court explained that juries should decide whether tacking is warranted because this question “operates from the perspective of an ordinary purchaser.”
From our perspective, the importance of the Hana Financial decision is in terms of what it means to brand owners, and what the practical takeaways of this decision might mean for maintaining and enforcing brands through the years. Here are five takeaways from the Hana Financial decision that businesses can implement to ensure brand continuity:
- Focus on the core/protectable root house mark. Use and register the root house mark per se, or at least prominently as compared to additional descriptive elements.
- Consider amending registrations for marks to reflect current usage. The U.S. Patent and Trademark Office has recently loosened its standard for accepting petitions to amend and, in some cases, has permitted the deletion of merely descriptive terms from registered marks.
- Keep evidence of intent. Prior analogous use may be tacked if the owner had a continuing “intent to cultivate an association of the Mark with itself and its goods and...such an association was created.” (McCarthy on Trademarks § 20:28) Take steps to educate consumers about the history of the mark. Showing how the mark transitioned from an earlier version to an updated one can be helpful in communicating the message to consumers that a trademark is the same.
- Investigate before enforcing. Investigate whether a possibly infringing third-party mark may be able to claim priority from an earlier non-identical mark prior to objecting.
- Update with care. When updating or modernizing a mark, take care to retain the essential impressions created by the original mark.