In trademark law, “tacking” refers to the practice of allowing a trademark owner to make slight modifications to their existing trademark without losing the priority date of the original trademark. This concept is particularly relevant in cases where a trademark owner wants to update or modify their trademark while maintaining the legal protections associated with the original filing date. The priority date is crucial in trademark law because it determines the rights and protections associated with a specific trademark. The priority date is generally established based on the filing date of the trademark application. The earlier the priority date, the stronger the trademark owner’s rights against later-filed conflicting trademarks.
Tacking comes into play when a trademark owner makes a slight alteration to their existing trademark without changing the overall commercial impression it conveys to consumers. If the modification is considered “tacking,” then the updated trademark is considered to have the same priority date as the original trademark.
For example, if a company has been using a specific logo for their product since 2010 and later decides to make a slight modification to the logo in 2015. If the modification falls within the bounds of tacking (i.e., is the modification still creates the same commercial impression and the goods/services for which it was and continues to be use on are “substantially identical”), the new version of the logo will be treated as if it was first used in commerce in 2010, maintaining the original priority date. This can be important in cases where there might be competing claims to the trademark or when demonstrating a longer history of use is beneficial.
For tacking to be successful, the modification must be minor and should not result in a material change in the overall impression of the trademark in the minds of consumers. Courts will assess whether consumers would still consider the two versions of the trademark to be essentially the same and associated with the same source of goods or services.