The first part of this series of blog postings looked at the two trademark decisions that the Supreme Court considered since 2010 that were most likely to have an impact on other areas of IP law. This blog will discuss the remaining three trademark decisions that were considered during this time period. These decisions concern issues that can impact other areas of the law but are, at their core, trademark law issues.

Tacking

In Hana Financial, Inc. v. Hana Bank, 574 U.S. ____ (2015), the Supreme Court considered the issue of tacking. Tacking occurs when a trademark owner or registrant relies on an earlier filed registration or use of a similar trademark to obtain priority over another trademark. In order to rely on the legal concept of tacking, the two trademarks must be considered legal equivalents.

The specific issue that was resolved by the Supreme Court in Hana was whether the jury or a judge will determine whether the marks are legal equivalents. The Supreme Court held that it was an issue that had to be decided by the jury.

Antitrust

In American Needle, Inc. v. Nat'l Football League, 560 U.S. 183 (2010), the Supreme Court considered an aspect of the rarely explored intersection between antitrust law and trademark law. In the case, an Illinois-based hat maker brought an antitrust suit against the National Football League, which is composed of 32 professional football teams that formed a single trademark-licensing entity. The Supreme Court held that this particular arrangement could provide the basis for a claim under antitrust law.

Preemption of the Lanham Act by the Federal Food, Drug and Cosmetic Act

The final trademark-law case that was decided by the Supreme Court over this six-year period concerned the intersection of the Lanham Act and the Federal Food, Drug and Cosmetic Act (FDCA). The Lanham Act is a federal law that governs federal trademark law in the U.S. The FDCA is a federal law that gives the Food and Drug Administration (FDA) the ability to regulate food and beverage labels.

The Lanham Act gives private entities the right to sue one another for violations of trademark law. The FDCA vests essentially all of the enforcement power in the federal government. In POM Wonderful LLC v. Coca-Cola Co., 573 U.S. ___ (2014), the Supreme Court had to decide whether the FDCA preempted the Lanham Act, which would eliminate the ability of private parties to sue under the Lanham Act for deceptive food and beverage labels.

The Supreme Court found that the FDCA did not preempt the Lanham Act.