OneIndustries, LLC v. Jim O’Neal Distributing, Inc., No.08-55316, 2009 (9th Cir.)

When trademark rights are contested, a party might turn to “tacking” to establish that it made first use of the mark and thereby has senior rights to that mark. Tacking allows a trademark owner to claim priority in a mark based on the first use date of a similar, but technically distinct, mark.

Courts, however, don’t always buy into this strategy; tacking is allowed in only extremely narrow instances. The Ninth U.S. Circuit Court of Appeals recently tackled the tricky issue of tacking in One Industries, LLC v. Jim O’Neal Distributing, Inc.

REVVING THEIR ENGINES

O’Neal, a leader in the motocross racing industry,began using a stylized “O” as a mark in 1991 and experimented with additionalversions in 1992, 1993, 1997 and 2003. In 1999, its competitor One Industriesdeveloped and registered the “One Icon,” comprising two interlacing number “1”sthat form an “O.”

When O’Neal accused One Industries of infringingits 2003 mark, One Industries countered that the One Icon, registered in 1999,was senior to the 2003 mark. On appeal, O’Neal argued that its 2003 mark shouldhave been tacked back to an earlier version, which would establish priority.

DRIVING TOWARD A DECISION

Because the One Icon was first used in 1999, the courtfocused on the O’Neal marks that were developed in 1997 (the “Rounded O’ mark”)and 2003 (the “Angular O’ mark”). The court noted that tacking is allowed onlyin narrow circumstances in which the marks create the “same, continuingcommercial impression, and the later mark [does] not materially differ from oralter the character of the mark attempted to be tacked.” Here it found that O’Neal’stwo marks did not satisfy the standard for tacking, because they differed inseveral material respects.

For example, though both consisted of a stylized “O” followed by an apostrophe, theapostrophes were markedly different. In the 1997 mark, the apostrophe wasentirely separate from the “O” and appeared as a standard apostrophe. In the2003 mark, the apostrophe was connected to the main image and looked like atriangle. In addition, while the 1997 mark was boxy, the 2003 mark looked like theoutline of a lemon.

CROSSING THE FINISH LINE

The court cited cases from other circuits and from the Trademark Trial and Appeal Board confirming that tacking is allowed only if the marks are virtually identical. As the Ninth Circuit drove home, the standard for tacking is “exceedingly strict.”