W.D. Va. Discusses Split Re Whether Tacking Is Question of Law or Fact; Holds That Tacking Is Issue of Fact
Per Adventis, Inc. v. Consolidated Property Holdings, Inc., Slip Copy, 2006 WL 1134129 (W.D. Va. April 24, 2006):
The tacking doctrine is essentially a constructive use theory that recognizes the ability of a trademark owner to claim priority in a mark based on the first use date of a similar, but technically distinct, mark.
. . .
Although the courts that have addressed the tacking doctrine have universally allowed it, the issue of whether tacking is one of law or fact has garnered differing opinions.
The Federal, Sixth, and Ninth Circuits have held that the issue of tacking is a legal conclusion premised upon whether two designs are legal equivalents. See Van-Dyne Crotty, Inc., 926 F.2d at 1159, Data Concepts, Inc., 150 F.3d at 623; Brookfield Comm'ns, Inc., 174 F.3d at 1048. A district court in the Seventh Circuit, however, has held that the issue of tacking is one of fact. See Navistar Int'l Transp. Corp. v. Freightliner Corp., 52 U .S.P.Q.2d 1074, 1079 (N.D.Ill.1998). Similar to the circuit split on the issue of likelihood of confusion, certain circuits have held that that issue is one of fact, while the remaining circuits have held it is a mixed issue of law and fact. Compare Adventis, Inc., 124 Fed. Appx. at 173 (citing Anheuser-Busch, Inc. v. L. & L. Wings, Inc., 962 F.2d 316, 318 (4th Cir.1992), for the holding that likelihood of confusion is an issue of fact in the Fourth Circuit) with Little Caesar Enters., Inc. v. Pizza Caesar, Inc. ., 834 F.2d 568, 570 (6th Cir.1987) (holding that likelihood of confusion is a mixed question of law and fact). As an issue of first impression, the court holds that whether two designs should tack is an issue of fact.