Imagine you built a company five years ago and developed a distinctive logo to emblemize your brand. But now, some time has passed, preferences have evolved, styles changed, and it's just time to refresh your image. To what extent can you modify your logo's appearance before forfeiting any trademark rights?
In the U.S., the first person to use a particular mark (symbol, phrase or slogan) in commerce wins in an infringement action. So, if you tweak your logo too much, you not only run the risk of losing the priority date established by the original mark but also abandoning the original trademark and losing all federally protected rights.
But what if your new logo could piggyback off the rights of the original? In some cases, it can, under a doctrine known as "tacking." To successfully tack your logo, you'll have to meet a strict test that is mostly a question of fact – legal speak for a determination made by a jury of your peers. Or put differently, a group of people justifying the facts with the law will probably decide the outcome of whether your new logo can benefit from the rights of the former. This notion is relatively new to the trademark world, determined by the Supreme Court in 2015. Naturally, jury determinations add an element of uncertainty to trademark tacking. Side note: under limited circumstances, like when both parties agree or a motion for summary judgment, a judge may rule as a matter of law.
Anyway, the law is a bit murky here, so hang with me.
In 2015, the Supreme Court in Hana affirmed that a new logo may be tacked to the old one, if it considers both marks "legal equivalents," such that the two logos "create the same, continuing commercial impression so that consumers consider both as the same mark." Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 190 L. Ed. 2d 800 (2015).
The court goes on to say that tacking is permitted because otherwise, every time a trademark owner responds to changing consumer preferences and aesthetic developments by making minor alterations, they'd risk losing priority rights. I say all of that to emphasize that the courts intend to allow for reasonable adjustments without losing trademark rights. That said, case law also indicates that the doctrine of tacking is "exceedingly strict" (See Louangel, Inc. v. Darden Restaurants, Inc., No. 2:12-CV-00147, 2013 WL 1223653, at *6 (S.D. Tex. Mar. 22, 2013))
Here's few examples. Take note, however, that these decisions were before the decision in Hana Financial, and today a jury will be making this determination.
New Millennium registered the Mark KELME as below in 2004.
In the meantime, they slightly updated their logo to look like this:
The Trademark Trial and Appeal Board (TTAB) found that the changes were "minor stylistic alterations" and that a change in the style of the lettering did not materially affect the impression created by the word. The Board also noted that the addition of the claws to the paw prints was minor since it's common knowledge that animal prints have paws. (See New Millennium Sports, S.L.U. v. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA, No. 91195604, 2014 WL 2997637, at *5 (T.T.A.B. June 10, 2014)). The federal circuit court agreed.
On the other hand, in One Industries v. O'Neal Distributing, Inc., the court refused to tack O’Neals 1997 and 2003 logos. (See One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154, 1157 (9th Cir. 2009)).
O’Neal developed the first O' in 1997 and the second in 2003.
The court reasoned that 1) the apostrophes on the "O" were palpably different, 2) the upper and lower lines were thinner on the first "o'," and 3) the 2003 logo looked more like the outline of a lemon. Id.
So what about your wordmark?
Wordmark examples where tacking didn't work:
"moviebuff.com" was held untackable to the previous mark "The Movie Buff's Movie Store." (Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1047 (9th Cir. 1999))
"American Mobilphone" with a star and stripe design was denied tacking with "American Mobilphone Paging" with the same design (Am. Paging Inc., 13 U.S.P.Q.2d 2036 (T.T.A.B. Nov. 15, 1989)).
"QUICKSILVER ROXY" was not tacked to "ROXY" (Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir. 2006)).
"KEY BANK & TRUST" was not considered a legal equivalent, and thus not tacked to its prior names, "KEY FEDERAL SAVINGS & LOAN ASSOCIATION" and "KEY FEDERAL SAVINGS BANK." (KeyCorp v. Key Bank & Tr., 99 F. Supp. 2d 814, 820 (N.D. Ohio 2000)).
Wordmark examples where tacking did work:
"HESS" and "HESS'S" (Hess's of Allentown, Inc., 169 U.S.P.Q. (BNA) ¶ 673 (T.T.A.B. Mar. 22, 1971)).
"ServiceMASTER Clean" was successfully tacked to "ServiceMASTER" (D & J Master Clean, Inc. v. Servicemaster Co., 181 F. Supp. 2d 821, 825 (S.D. Ohio 2002)).
Courts do allow for some minimal modification to your trademarked logo, but the test for tacking is strict and doesn’t encompass branding overhauls. Err on the side of minor stylistic alterations, or plan on potentially losing your priority rights.