Trademark law continues to be the cornerstone of brand identity. One concept that introduces a unique set of challenges in trademark law is “tacking.” Tacking is the ability of a trademark owner to modify their mark without forfeiting its priority status. This article explores the significance of tacking as a vital strategy that allows businesses to evolve their brand image while preserving their trademark rights in a competitive market.

Why is tacking important to trademark law?

Changing a trademark can have significant consequences. A mere “refresh” to a logo is typical for trademark owners who want to maintain their competitive edge in a changing market. However, substantial changes to a logo can affect established trademark rights. Rights can also be lost if a trademark owner stops using its original logo. Tacking allows owners to make minor modifications without abandoning their prior rights to the original mark.

Another common example of tacking arises when trademark owners develop a new line of products. The key is for trademark owners to ensure that despite a new line of products with a modified logo, consumers will view the mark as the same as the original. As the 9th Circuit Court of Appeals held in an opinion affirmed by the Supreme Court in 2015, two marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two marks that “create the same, continuing commercial impression" so that consumers consider both as the same mark. That is, because the marks are considered legally the same, trademark owners may tack the use of the different marks together and date their priority from the first use of the first version of the mark.

Companies must evaluate whether modifications of their trademarks will disrupt the continuity of the impression made by the mark. Major retail brands have had to tread carefully in recent trademark infringement disputes. Two recent cases – one involving Apple, Inc. in the United States, and the other involving Louis Vuitton in France – demonstrate that even iconic brands can stumble in their attempts to stretch the concept of tacking too far.

Apple v. Bertini: A Case of Tacking in Brand Evolution

In Apple v. Bertini, which involved the computer and cellphone maker’s attempt to register APPLE MUSIC for arranging, organizing, conducting and presenting live musical performances, Charles Bertini, a jazz musician who has used APPLE JAZZ in connection with festivals and concerts since 1985, petitioned to cancel the registration. Bertini argued that Apple’s mark would likely cause confusion with his common law trademark. Although Apple only began using the APPLE MUSIC mark in 2015, it sought to tack its right to the mark to its previous purchase of the Apple brand from Apple Corps, which the Beatles launched. The Trademark Trial and Appeal Board dismissed Bertini’s cancellation action, stating that Apple was entitled to a 1968 priority date based on trademark rights purchased from Apple Corps in 2007. The Board found that Apple was entitled 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.”

The Federal Circuit Court of Appeals reversed the Board's decision. Stating that the tacking doctrine is narrow in scope, the court held that Apple is not entitled to tack its use of APPLE MUSIC for live musical performances onto the Beatles' 1968 use of APPLE for gramophone records because "no reasonable person could conclude that gramophone records and live musical performances are substantially identical." Thus, even if Apple successfully established its priority rights in 1968, Apple would have to show that consumers could link Apple's live musical performances to a normal evolution of Apple Corp's gramophone records. Notwithstanding Mr. Bertini’s early success, on March 20, 2024, the Trademark Trial and Appeal Board ultimately denied Mr. Bertini’s petition to cancel Apple, Inc.’s APPLE mark because Mr. Bertini failed to make a prima facie showing of Apple’s abandonment of the APPLE mark for entertainment services.

Bertini v. Apple requires trademark owners to evaluate the evolution of their marks. Trademark owners should be mindful of whether their marks create the same commercial impression on consumers and that the link between the new and old goods or services is “substantially identical” to establish the same commercial impression.

Louis Vuitton v. Zadig and Voltaire: Tacking in the Fashion Industry

Tacking issues have revealed themselves even across the pond in Paris. In Louis Vuitton v. Zadig and Voltaire, the luxury fashion house Louis Vuitton pursued legal action against French fashion brand Zadig and Voltaire for trademark infringement. Louis Vuitton alleged that Zadig and Voltaire adopted a similar design element that resembles Louis Vuitton’s “LV” on its “Twist” collection of handbags, constituting an infringement of its trademark rights.

Louis Vuitton’s argument relied on the world-renowned reputation and fame of its original LV monogram logo, which has been in use since the mid-1800s.

This logo was modified for use in connection with a newer collection of handbags that bear a “twist” LV logo:

Meanwhile, Zadig and Voltaire introduced a line of handbags with a logo that utilized its initials:

Louis Vuitton sued Zadig and Voltaire for trademark infringement, arguing that the ZV logo was confusingly similar to the LV logo on the “Twist” line of products. In doing so, it pointed to the fame of its original logo, which has been in use since the 19^th century. In response, Zadig and Voltaire said that it had been using its initials as its corporate name since 1997 and as a trademark since 2005, while the “twist” logo of Louis Vuitton had only been in use for about eight years.

The French Court did not allow Louis Vuitton to tack its “twist” logo to the classic logo that had been in use for over 150 years. The court noted that the classic mark used serif type while the twist mark was sans serif; and that the letters in the classic mark were at different elevations, whereas the twist mark showed the letters at the same elevation. Because of these and other stylistic differences, the fame attributed to the classic mark did not benefit the new “twist” version.

The court found that Louis Vuitton had not introduced enough evidence to show that the twist mark was entitled to the protection afforded famous marks. With that finding, the court proceeded to compare the twist mark and the Zadig and Voltaire marks without giving any special deference to the Louis Vuitton mark because of the fame of its classic mark. The Paris Court favored Zadig and Voltaire and ordered Louis Vuitton to pay the Zadig and Voltaire’s costs.

Implications and Best Practices For Businesses

While tacking may offer flexibility for brands to adapt their trademarks in an evolving market, it also comes with risks. These cases demonstrate that a brand’s popularity or fame may not be substantial enough to tack on earlier rights and prevail in a trademark dispute. Further, companies must continue to consider whether the description of goods and services of its original marks will remain relevant as the brand’s goods and services evolve. Tacking presents challenges and opportunities for brands to ensure a delicate balance between adaptation and preservation of rights. Understanding the implications of tacking is integral for trademark owners to safeguard their overall brand value and reputation.