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Understanding Trademark Tacking - Part II

In our last post, we began a discussion about trademark tacking. We explained that a case recently decided by the United States Supreme Court may alter the stakes of certain trademark protection cases. This is a vitally important topic, given that trademarked intellectual property may be among the most valuable assets that any given business retains.

The Supreme Court has determined that questions associated with trademark tacking are matters that must be decided by juries, not by judges. What does this mean and why does this decision matter? These are both excellent questions.

Think about a trademarked design that is relatively ubiquitous. Are you thinking about the Nike Swoosh? Or the particular apple that Apple products brands its products with? Sometimes, trademarked material becomes so ubiquitous that the company which has sought trademark protections cannot effectively enforce them. For example, “Kleenex” is a trademarked product manufactured by the Kimberly Clark corporation. However, pop culture has so widely embraced the word “Kleenex” as a term for facial tissue that the trademark protections that Kimberly Clark should enjoy are no longer “tacky” to that trademark. In other words, trademark protections have ceased to stick. Trademark tacking is essentially a defense used by someone accused of infringing upon trademarked material that is particularly ubiquitous.

Because trademark tacking as a defense is now a question for a jury, not a judge, both companies and attorneys will need to alter their legal strategies for both presenting this defense and attempting to counter this specific defense.

Source: Findlaw Free Enterprise, “What Is Trademark Tacking?” Mark Wilson, Jan. 21, 2015

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