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Abstract

Trademarks serve to indicate an item’s source of origin and distinguish it from other commodities in the market. When there are two or more entities with similar trademarks, who offer related goods or services, the entity to use the mark first has seniority over the other users. Furthermore, the senior user has priority, making him or her “entitled to enjoin other ‘junior’ users from using the mark, or one that is deceptively similar to it” in a way that is likely to confuse consumers. But under certain circumstances a trademark owner can claim priority over a mark by relying instead on “the first-use date of a similar, but technically distinct mark.” This is achieved through a concept known as tacking, which allows a trademark holder to modify or expand their existing mark by “tacking” the first use date of an earlier mark onto a revised mark. This article examines the heightened stringency of the rarely applied tacking doctrine, exemplified by the United States Court of Appeals for the Federal Circuit’s (“Federal Circuit”) decision in Bertini v. Apple. The Bertini court addressed the proper approach when dealing with tacking in the context of differing goods or services, with the decision creating an additional obstacle for trademark holders seeking to successfully tack under these circumstances. Because of this decision, there is a potential for consumer confusion and an increase in trademark application filings, further contributing to the existing backlog at the United States Patent and Trademark Office (“USPTO”). Additionally, this strict application of the doctrine likely contributes to a phenomenon known as trademark congestion, which occurs when “an already-claimed mark is claimed by an increasing number of different trademark owners.” And, as a result, may worsen dilution by blurring and dilution by tarnishment. …

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