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Bracewell & Giuliani LLP Co-Files Amicus Brief in the Supreme Court of the United States on Behalf of the International Trademark Association

October 31, 2014

HOUSTON Bracewell & Giuliani LLP, along with attorneys from Skadden, Arps, Slate, Meagher & Flom LLP, and Stroock & Stroock & Lavan LLP, filed an amicus curiae brief, on behalf of the International Trademark Association (INTA), before the Supreme Court of the United States.

The case concerns trademark tacking, a doctrine of trademark practice that permits a trademark holder to change the appearance of its mark without losing trademark protection in the “new” mark by “tacking” the mark to the older mark. Specifically, the case requires the Supreme Court to determine whether tacking should be decided by a judge as a question of law or by a jury as a question of fact. The case has profound implications for trademark law, rights of trademark priority and the level of evidence necessary to prove entitlement to this rule.

INTA’s amicus brief argues that trademark tacking should be treated as a question of fact because tacking depends on whether the original and modified mark create the same continuing commercial impression. INTA asserts that continuing commercial impression requires factual evidence of consumer perception and consumer impression of the marks as encountered in the marketplace. INTA’s brief hopes to aid the Supreme Court by providing historical context for and explanation behind the split in courts that treat tacking as fact or law, as well as illustrating the outcomes of the fact or law question through hypothetical examination of real-world trademarks that have been modernized over time but intended to retain the same continuing commercial impression.

The Supreme Court is expected to hear oral argument in the case on December 3, 2014, and rule on the case before the conclusion of the current term in June 2015. The case is Hana Financial, Inc. v. Hana Bank et al., case no. 13-1211.

Bracewell attorneys involved in the brief include:

Partners: David J. Ball and Mark N. Mutterperl

Senior Counsel: Jessica S. Parise

Associate: Kedar S. Bhatia