In the latest installment of Knobbe Martens’ Law360 series on noteworthy Federal Circuit opinions, associate Jessie Yang and partners Daniel Kiang and Paul Stewart write about a recent decision in Bertini v. Apple, Inc., a case where the Federal Circuit addressed two issues of first impression regarding the tacking doctrine in trademark law.
Yang, Kiang and Stewart write, “The first of those issues is whether a trademark applicant can establish priority for every good or service listed in its application merely by establishing priority through tacking for a single listed good or service. The second addresses the question of appropriate standard for tacking uses on different goods and services, as opposed to tacking based on different marks.”
In the decision, the Federal Circuit held that a trademark applicant cannot establish priority for every good or service listed in an application based on tacking for a single good or service, and that tacking can apply between different goods or services, so long as the new goods or services are “within the normal evolution of the previous line of goods or services.”
The authors analyze the Court’s decision in the case and explore other questions not addressed by the decision that might eventually arise in future lawsuits related to the tacking doctrine.
