Reynolds sued Handi-Foil Corp. for trademark infringement. In reply, Handi-Foil sought to cancel the trademark registrations asserted by Reynolds against Handi-Foil claiming Reynolds had abandoned the registered marks.
Reynolds obtained two registrations in 1977 for its aluminum foil package designs. Reynolds amended those registrations in 1997 to reflect changes to its packaging
In 2007, Reynolds renewed the registrations using a specimen that included additional changes to the registered design. Those changes included a series of curved silver lines to separate the blue and pink areas.
Reynolds later made additional changes to its packaging. The changes included different proportions of the blue and pink areas on the box, and different proportions of the writing in each area. Reynolds also added the text “Trusted Since 1947” on the blue side of the box.
Handi-Foil argued that Reynolds’ current packaging is not identical to its registered marks and thus, Reynolds has abandoned the registered marks. Reynolds did not deny that there are differences in the packaging as compared to the registered mark. In defense, Reynolds argued that its packaging is the “legal equivalent” of the registered mark because it creates the same, continuing commercial impression.
The Court first determined that it should compare the current packaging to the “box as registered with the PTO.” Because the PTO renewed the registration on the basis of the 2007 specimen (Fig. 3 above), the Court determined the 2007 specimen was the proper point of comparison to the current packaging. Despite the changes to the current package, the Court found that the two create a continuing commercial impression. Thus, Reynolds was entitled to summary judgment on Handi-Foil’s abandonment claim.
Reynolds’ defense in this case is based on a legal doctrine called “tacking,” which allows a trademark owner to rely upon earlier use of a non-identical trademark to show continued use of the current form of the trademark. To rely upon “tacking” the trademark owner must establish that the current mark is the “legal equivalent” of the earlier mark. Several courts have made clear that tacking is to be allowed only in rare instances.
Reynolds Consumer Products Inc. v. Handi-Foil Corp., case number 1:13-cv-00214 (E.D. VA, Feb. 2014)