By: Kelsey Shaughnessy
We are constantly surrounded by brands, and their names, logos, and product packaging, in our daily lives. Brands use their trademarks to get our attention, shock us, and create humor, to be memorable to a consumer. Trademarks are vital to brand identity; encompassing tangible and intangible elements, like the history and personality, of a brand. Therefore, changing a trademark after it is used in commerce can have consequences. In trademark law, an owner may modify their mark and “tack” its use of a newer version of a mark onto the older version of a mark if both marks are perceived as the same. Companies must balance whether the benefits of modifying their mark outweigh the legal risks of losing the mark if there is interference with consumers’ impression of their mark.
The Lanham Act controls trademark law in the United States, defining a trademark as a name, logo, product packaging or design, indicating a product’s source. Trademark rights arise from the use of a registered mark in commerce. If the owner is first to use the mark in commerce, they have priority over other users. The courts recognize trademark owners may need to change their marks over time in response to changing consumer preferences and marketing styles. Tacking allows the owner to make modifications to their mark without losing their priority position. Without tacking, trademark rights would reset each time a trademark logo is modified, losing the rights and goodwill attached to the older version of the mark.
The doctrine of tacking allows a trademark owner to “clothe a new mark with the priority position of an older mark” if they are “legal equivalents.” Two marks are considered equivalent if they “create the same, continuing commercial impression” when viewed by a consumer. A commercial impression is determined by a variety of evidence including visual or aural appearance, as well as consumer surveys. However, tacking is only considered by the courts in narrow circumstances, for example, when there are minor modifications made to a mark. Substantial changes to a mark are not considered and may result in a loss of rights to the mark.
A remarkable example of the tacking doctrine is the iconic Morton Salt Girl found on Morton Salt’s blue table salt packaging. Depicted as a young girl standing with an umbrella, the Morton Salt Girl trademark was modified over the past century, making subtle changes to her hairstyle and wardrobe to ensure she remains contemporary. With each revision, the Morton Salt Girl maintained a continual commercial impression; she remained a young girl that held an umbrella in one hand, and under her arm, she still held a package of salt pouring out behind her. Morton Salt flawlessly incorporated modern changes while maintaining the prominent features of their mark. Given their execution, Morton Salt was able to maintain their trademark rights with the original mark, and “tack” the newer version of the mark to the original mark.
Whereas other iconic brands like, Apple, Inc. (“Apple”), demonstrate how even with the best of intentions to adapt and grow their brands by utilizing tacking can miss the mark. In Bertini v. Apple, Inc., most known for their consumer electronics and services, Apple, sought to register APPLE MUSIC, for arranging, organizing, conducting, and presenting live musical performances. APPLE MUSIC was first used in commerce in 2015. Charles Bertini, a professional jazz musician, opposed the registration given his mark, APPLE JAZZ, was already in use in connection with festivals and concerts. Bertini claimed Apple’s use of the mark would likely cause consumer confusion with his mark given his use of the mark since 1987, thirty years earlier. Apple opposed Bertini and sought to tack APPLE MUSIC to the 1968 priority date from its purchase of the Apple brand from Apple Corps, the Beatles’ recording company, in 2007.
The Trademark Trial and Appeal Board dismissed Bertini’s opposition, allowing Apple to tack its 2015 use of APPLE MUSIC to Apple Corp’s 1968 use of APPLE for “gramophone records featuring music” and “audio compact discs featuring music.” However, the Federal Circuit Court of Appeals reversed the Board’s decision holding a reasonable person would not conclude that gramophone records and live music performances “are substantially identical.” Thus, Apple is not entitled to tacking. The court explained, to enjoin the two marks, Apple would have to show that consumers could link Apple Corp’s gramophone records to Apple’s live musical performances. The court’s decision proved the narrow scope of tacking and how tacking can be a difficult strategy to optimize for brand evolution in technology.
Companies must be cognizant of maintaining the same commercial impression when modifying their trademarks. Tacking offers opportunity for a brand to evolve when a consumer can easily view the revised mark as an equivalent to the original mark. Minor modifications to a mark, like a subtle hairstyle or wardrobe change, as seen with the Morton Salt Girl, reinforce the recognizable properties of an original mark to affirm a consumer’s perception of the brand. However, tacking presents challenges when a company is making substantial modifications to their brand identity, given the likelihood of confusion for a consumer. For innovative companies like Apple, tacking is not a viable solution when enjoining old and new goods or services if the description of the goods and services are not substantially identical. Furthermore, popularity and a strong market presence may not assist with tacking on rights to succeed in a trademark dispute. In conclusion, a company should be thoughtful when considering the use of tacking, understanding the implications when modifying a mark to protect their brand.
Student Bio: Kelsey Shaughnessy is a third-year law student at Suffolk University Law School with a passion for Intellectual Property Law, particularly as it intersects with science and design. She is a staff member for the Journal of High Technology Law, where she explores the complexities of protecting creative rights in the digital age. She received a Bachelor of Arts in Finance and Economics from the University of Massachusetts in Amherst.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
