Trademark Tacking: Can I Change My Mark After Registering it?

Brands and logos evolve over time. However, trademark registrations are based on a defined mark, for defined goods and services, and protection of that mark relates back to its date of first use in commerce. If a business completely changes its brand or logo, it must register the new trademark, and the protection begins to run from the date of first use of the new mark in commerce. And if a business stops using its old mark, its rights in that mark will eventually be abandoned. But what happens if a name or logo is only slightly changed or updated? That is where the doctrine of tacking comes in.

What is the Tacking Doctrine?

The tacking doctrine allows trademark owners to register a slightly altered mark and retain the same priority date as the originally registered mark. The tacking doctrine recognizes that trademark users should be permitted to make certain modifications to their marks over time without losing priority in the mark and thus allows trademark owners in certain limited circumstances, to “clothe a new mark with the priority position of an older mark.” Tacking is allowed because without it, a trademark owner’s priority in a mark would be reduced each time even the slightest alteration to the mark is made, which would prevent a trademark owner from making modest changes in response to changing consumer preferences, evolving aesthetic developments, or new advertising and marketing styles.

When is Tacking Permitted?

The standard for a trademark owner to invoke the tacking doctrine is narrow and strict. To invoke the tacking doctrine, the trademark owner must show that the old mark and the new mark create the same, continuing commercial impression so that consumers consider both to be the same mark. The commercial impression of a trademark is the meaning or idea that it conveys or the reaction that it invokes with respect to its source.

Does Tacking Give Priority to New Goods and Services?

If tacking does apply, the new mark only has the priority date of the original mark for goods and services that are “substantially identical to” or “within the normal evolution of” those covered by the original registration. Any goods or services changed or added to the registration for the new mark will receive the priority date of the date on which the mark was first used in commerce in connection with those goods and services.