modernize a mark without losing priority the proponent of tacking must demonstrate that the later mark does not unreasonably expand the legal effect of the earlier mark to decide whether a change is a permissible modernization or in in from a simple expansion a quote consider the extent to which the new market if tax could unfairly squeeze out intervening users and it will examine the circumstances in which past cases have permitted tacking in assessing the legal effects of the marks the quote would consider their oral and visual appearance and consumer impression but tacking ultimately turns on the court's judgment as to whether the legal effect of the new mark is sufficiently identical to that of the old work if you it is a question of law attacking would be unavailable here the mark on a bank has a very different legal a fact then the earlier mark on an overseas korean club as well as the intermediary mark on a world center three factors together we believe support the conclusion that tacking should be viewed an issue of law for the court the nature of the issue itself is a legal comparison that courts are suited to make second pragmatic considerations demonstrate that this is the kind of issue that should be put to a court in third the history of the issue demonstrates that a court has always resolved tacking without any particular role for a jury or factual infringement is a question for the jury right there is a circuit split on that question i think there are reasons one could think that there is  happening here is a legal comparison between the marks that requires an assessment of the legal a fact of the earlier mark compared against a later mark it's not a factual comparison as to whether or not the marks would have the likelihood to confuse a jury or even simply if  the key issue the commercial impression of and and meaning how these marks were used and the commercial impression you know i don't think that's the ultimate inquiry that's one of the factors that will be considered but that ultimately what the court must evaluate is whether or not they have the same legal effect and i think an example might highlight this distinction i'm in the blueberry if it at page five the first example we give is the example of the american mobile phone paging the website is the earlier mark american mobile phone on the right side of the market that the company used three years later american mobile phone paging now if this were put to a jury in the so question where do these two marks seem to have the same consumer impression i think many juries would say that they do because the two marks used the same kind of font they have the same star they have the same stripes i think a jury would likely think that these are from the same company and give off the same impression however the teachers have the trademark trial an appeal board viewing this is a question of why deny tacking in this case in the federal circuit affirmed i think that's the right answer in the right result in the reasoning behind that is what happened in between these two marks in between these two marks a competitor arrived on the scene using the mark american paging and the determination was made that american paging and american mobile phone are different mark so the the second time the american paging folks had the right to use that mark but if hacking out in this case the effect would be years a few years after the fact sue squeeze out the american paging company even though they couldn't have known at the time that the american mobile phone was later going to try to register and then use the mark american mobile phone paging so i think this all goes to show that if this is put to the jury it's going to be a very different kind of result and the court can't simply be if a jury i'm sorry i lost you a little bit why why is it going to be a very different type of result what  suspicion is that a jury looking at these two marks if instructed just do they have the same consumer impression at least many juries would find that they do what the jury is not asking is whether or not they have the same legal effect in the marketplace that the jury going to be instructed in any way what you just told us was the reason we should view those as differently i don't think that what you're on i think the jury when this is put is a factual question as happened here the jury is simply asked do these have the same consumer impression that the government's position and response position case is that's simply the sole inquiry is that they have to be evidence or instruction on you know consumer impression you have to take into account what happened between these two marks well i suppose your honor that opponents attacking could try to introduce evidence to that effect but that inquiry would not be looking to the legal effect between the two marks and it seems to me that it's rather critical to the contrast you draw i mean it would you're saying is the jury might get it right or the jury might get it wrong and by i could say well the federal circuit maybe got it right of the federal circuit got it wrong but in terms of what the factual issues are going to be in those would include what's happening between the two marks it's it seems to me the jury's information just the way the federal circuit but i don't see the difference between the two other for the jury is whether they look at light but whether they create the same commercial in question and it seems to me the instructions to the jury would say these are the two marks now what you want to know is that after the first there was a competitor came into commerce called american paging and then the mark was changed from american mobile phone to american moment phone paging do you think that that second mark creates a change there was to suppose that an important part of the case was that when the american paging came along for a few years in the united states knew that the first market not many people knew about then it seems to me would be critical to the going to look just at the sole particular marks that happen to exist but a court is going to take a broader perspective and to think about what are the whole range of marks that would be preempted by the earlier in the later to figure out if what's happening if this kind of hacking is reasonable in the circumstance but i think it's an additional reason to think that this should be better viewed as a question of law because similar to as the court held in markman this would have started to size this effect such that when a court makes a determination as to tacking that would have application in future cases involving those same kinds of marks if it's viewed as a question of law one could get different results using the same marks across different cases and i think this is the kind if it's you it is a question of fact you get stronger my apologies if you this question of fact one could have different results of the facts that you think the jury could determine here or should determine in this kind of case in this hacking case no i think the whole inquiry should appropriately be submitted to to a judge if a judge thought that there were particular things that would be useful as advisory questions i thought it could be submitted but i think in the usual case a judge would mean i was such a supposed to do that what a consumer's impression with me what well you know i generally just to figure it out some evidence would have to be presented to him or her it's possible but i think that's similar to what how a judge in the in the context of claim construction would understand what one skilled in the art would would to be they would look at the relevant considerations they would put themselves into that frame of mind and then they would make th that's right on it but also the federal circuit adds an additional factor which is the oral in visual appearance do the two marks have the same oral and visual appearance and what i think that shows is if the courts are not looking at this as a factual well a visual appearance shouldn't that same these two marks as we go equivalent such that we can use this legal fiction of tacking the provides a very valuable benefit to the proponent of tacking that they can effectively go back in time and alter their marks after the point and so this is a constructive use the ninth circuit in particular identified and that kind of determination whether or not that legal benefit would flow i think it's the kind of thing that is appropriately put to a court because it's going to turn on a judgment not just of these marks but what the rover policy considerations are in th case balancing the interests between the rights of the individual trademark owner to modernize or polish up their mark as against everyone else in the marketplace who has an interest in not having marks expanded unduly years after the fact in a way that  and you can't add to it because of what you did later i think that's that's that's right i think right up to a point is that whenever a mark is changed there might be some minor alteration and a court must make the determination is to the amount that the preemptive scope of change is it material is it substantial or is it the kind of small modernization that attacking doctrine is designed to permit such that the mark owner can make these small alterations and that's what's alternately the legal judgment a court must look to see how much of a change has been made in the later market understand that both how much of a change there is how close the change in those factors are to the to the earlier mark and then consider how that applies in that particular and i think if we put it here on of the scopes have to be virtually identical we recognize that there could be some difference in change because whenever a mark is changed there will be some daylight between the two we recognize that that is inherent in tacking that there will always be some change some degree of squeeze out the judgement determination is how much of a change how much of a squeeze out is permissible in one case such that the two marks can be viewed as legally the same mark to allow the tacking doctrine to operate is another was in fact allowed in that context the original mark was the market service master the second in time competitor came on the scene using the mark master clean the third in time then the service master altered their mark to service master cleaning and used that mark to exclude the intervening competitor the master clean competitor and the court permitted tacking again viewing this is a question of law the reason it allowed tapping in that particular case was it sought to understand how close the later mark to the master clean mark this intervening market was to the rights that the trademark owner had in its original mark of service master and it made a judgment finding that it was reasonably forseeable that service master would would adopt the mark service master clean and thus there was nothing unfair in the marketplace to excluding master clean that the implications of hacking in that case were in fact appropriate and i think this this further shows the kind of legal determination and reasoning that turns on the interest of all the market parties and that is uniquely situated to the role that a court can play and i think this again if i could just what is it that you think a jury could not be instructed on in addressing that same consideration what i think a jury would not be able to do the way that a court can is a jury cannot understand what the legal significance of service master compared to the legal significance of master  clean what i mean by legal significance is what is the whole range of marks out there that each of those marks exclude and then making the comparison to figure out just how much of a change has has occurred in the marketplace and then of that change how close is that to the original mark question of fact and i don't think it's the kind of complex determination that requires these prospective judgments that we typically think it's suit it's not the kind of historical application of law to fact that would be in the infringement context or in the other circumstances where  we would think that a jury would be appropriately suited to resolve the question additionally though we think that the pragmatic considerations bear heavily on this point this as i said earlier the star decisis implications of treating this as a consistent  this is the extent of the change that's been permitted and this is the extent of change that's not been permitted and i do think this is one of those sorts of rules where it it really games content through the examples through the past examples illustrate just how  that the starry decisis point is is meant to minimize though if you appreciate the fact that these marks are each one and sort of suit generous i mean i don't know what presidential value i can get from looking at you know the dolphin changes on i'm fifty and the fact that there's a case about the loctite corporation behind i mean i'm sure some are or are similar but it seems to me that each one is is significantly different so i don't know the significance of star decisis in this context well i think it significant two ways the first way is it significant for the actual market that is before the court so if it's authoritative court makes that determination that would control in future cases involving the same kinds of marks and when you have repeat wiggins who often are pretending to protect their trademark it's the kind of circumstance where having consistency from case to case even when there are are going after different infringer a different market competitor i think it's important that soon not even even the ones in capital letters and that is not permitted i cannot for the life of me decide why the one should be permitted and the other should not be permitted what i think one of them i'd much rather blame it on  closely to the narrowness of this doctrine i think the presentation here is a bit gives a different impression because it takes cases that were prior to the american mobile phone era when tackling was used in a far more broad array of circumstances i think when you look to the post one thousand nine hundred ninety s is you find incredible consistency that tacking is denied in all but the most extraordinary case where the marks truly are affectively identical and have the same legal continuing impressions so so i do think if you look to some really cases you see different results but looking to get to the modern era of cases there is far more consistency and further to the extent that any sort of predictability can be established by treating these parks as having legal authority to fact in creating that kind of predictability to the marketplace i think it is better than the alternative of leaving it to simply a case by case by jury determination the next point to make is this is always historically been treated as  a question of law for a court we've we've taken we've looked back and in every tacking case from the early history goes back to the early part of the one thousand nine hundred up to the modern era view this is soley a question for a court and there was never any particular role for a jury in making these determine i'll be there for you which is your cases and a time when equity in and law were separated and there were no rights to jury trials in equity one such distinction was done away with you don't have the plethora of cases that you know not are the case that's correct john but some of the cases were decided as damages cases and were decided at law and did not involve any judge and you don't know how many of those cases the parties agreed to ensure that that's right ana we do not know but even the cases that did proceed as equity actions there was never any view that this was the kind of factual determination that a court was taking substantial amounts of evidence on instead the courts effectively compared the earlier mark to the later mark they sometimes looked at precedent they consulted the relevant parts to determine considerations and then they made a judgement so even though it may have perce right so since were simple by their nature back then but you know in court the courts that today considers the question of law apply that same kind of analysis they look to the marks they look to the relevant precedent and the guidance that can be drawn from those cases and then they make a determination taking all of the relevant considerations into account so i do think that same kind of mode of analysis that was used to store clee is still used today in the sixth circuit in the federal circuit and the courts that view this is a question of loss of that consistent historical approach at least  i think adds some light or add some some depth to our contention that this is appropriately viewed as a question of law as we alternatively argue there are also i think reasons to think that this is a doctrine that has actual underpinnings that this is meant to  chief justice and made please the clerk the issue of trademark tacking should be treated as a question of fact for two principal reasons first the a put the standard exams where the two marks convey the same commercial impression not judicial impression commercial impression to be viewed from the perspective of the relevant consumer a jury with its collective consumer insight is always going to provide a better proxy why don't you deal with the example that the chief justice presented of the american packing company or that was discussed earlier the american model with the jury do with that now one critical consideration in the american mobile phone paging case is that in that case the two marks that were sought to be tacked were in fact used on  very different products and that's the type of extrinsic evidence that should be considered by a jury in determining whether there is truly a continuing i'll take that a step further in the van dyne project case in the federal circuit which is the first circuit a question of law a critical consideration there was that the third time mark had effectively purchased a first in time mark in order to try and leapfrog a second time mark in reality in that case the two marks that were sought to be tacked were used by two different parties on two different sets of products to allow tacking that case would be a legal fiction clearly there's no continuum that a bit of the court there decided to treat tacking as an issue of law it could have cheated as an issue of fact and still decided the issue because it's one of these outlier cases and it can be taken away from the jury hear say if no jury could possibly find tacking appropriate the court could issue judgment as a matter of law and absolutely justice scalia the judge can always set the out of bounds of what is permitted under the taxing doctrine i also agree with with your honor that if you look at the case a body of precedents in this case is completely impracticable predictability in tackling law is not achievable what we should aim for is reliability that you need some predictability for a consumer perspective is what's important but there are other aspects of tacking as well that seem more suited to a court and to a jury well the critical test again is commercial impression which is a consumer  standard the other point is that it involves a great amount of extrinsic evidence which is evidence based which should go to the jury this case provides a perfect example of why marketplace context and extensive evidence is so critical the korean language so it could be viewed as a very simple priority case the jury heard evidence that gets this advertisement was published in korean language publications that the relevant consumers of both parties were by home loans simply because it advertises that product doesn't mean consumers won't view this as an ad for for wells fargo if we're only write this opinion we have to have in the back of our minds what effect it will have on likelihood of confusion likelihood of confusion issue is is there some way that we should treat this is quite quite discrete from the just adopted tacking as a matter of law they don't need done so this is the federal circuit and the sixth circuit because they also treat like the confusion as a as a matter of law and picking up on that reasoning from fans on quality every other circuit that has looked at it has also fallen in lock step with how they treat like the confusion the majority of ten circuits obviously treat like the defense confusion as a as a factual matter again because it hinges very heavily on the consumer impression  circuits send likely confusion to the jury for the terminations the individual like you confusion factors are treated as issues of fact one of those factors is a comparison of the two marks just as you have the petitioner here is promoting a a prospect of analysis of the preemptive scope of the marks which is which which is in contrast with the retrospective analysis we have in tackling where we essentially look at scope argument brings all of the presented here is a decidedly narrow one should those be an issue of fact or one of law it is a similar issue that was presented to this court in the mark martin case upon that it was appropriate to take this this issue away from from the jury because it was something that a judge simply did better it was too sophisticated because a nuanced interpretation of language in a patent claim could have a quite dramatic impact on the scope of the patent here in contrast that we're talking about consumer impression it's a relatively simple inquiry and a body of jurors with its collective ultimately a factual issue for the jury just as it is in in in trademark law where we compare it to marks for potential infringement generally speaking comparative analysis is often treated as a factual issue whether it be a comparison of handwriting samples it etc petitioner also argued that that there is a a fairness element to the taxing analysis and and go so far as to suggest that this is an equitable defense this is not a an equitable offense this is something that goes to the affirmative elements of the plaintiff's case those elements being priority and likely of confusion attacking is just one means of the feeding the excuse the defendants conduct here again we don't get to the point of considering defenses like you would have latches on clean hands etc in this case i should note there were finding specifically of lakshmi's and unclean hands and the judge properly took an advisory verdict from the jury ultimately when the case was appealed to the ninth circuit court of appeals the court only commented on the attacking component of the defense judgement so the latches and unclean hands components are in play as well are there any of the features that your friend says have to go to the court that you think could not be addressed in jury instructions  i think certainly all of these elements could be addressed in jury instructions in this case it was the petitioner who proposed the instruction the proposed instructions did not even make reference incidentally of the legal equivalent standard that they're now promoting it only mention the commercial impression standard and the judge issued instruction which was near identical to the one sought by the petition used in a different language that could instruct the jury to consider specifically the relevant group of consumers to a large extent those types of instructions already embodied in the in the likely of confusion instructions would you repeat what you said about the other defenses latches and what else latches and unclean hands and those are still available on remained potentially so yes that they've not been ruled on by the ninth circuit if the impression and in fact in the district court in this case that was the jury instruction that the petitioner requested exactly that instruction and that was the instruction that was given there was no argument on appeal to the court of appeals that the jury was improperly instructed it wasn't until th that position had changed its tune initially petitioner said i know that the test for talking isn't the commercial impression test the test is whether two marks are legally equivalent then in the reply it shifted gears again and said no now the test is whether two marks have the same preemptive scope me but if you have to decision maker to tell you whether two marks are legally equivalent or whether two marks have the same preemptive scope the decision maker even if that person was a judge couldn't tell you the answer to that and less to do the judge knew what it means for two marks to be legally equivalent or for two marks to have the same preemptive scope and the answer to both of those questions is that the marks have to have the same commercial impression and if they have the same commercial impression you can tack them and then what we say about that is that they're equivalent but that's just a label that we attach to two marks that we know can be checked because they have the same commercial impression that's not the test for inquiring whether you can actually tack to marks are you saying essentially that legally at the end just means equivalent for the purpose of deciding this legal question that's right but that doesn't tell you what question you need to ask to find out if they are legally equipment and same thing for preemptive scope if you said well what's the preemptive scope of a mark we figured out by looking at its commercial impression and so we go equivalence and pre just they just describe things about marks that can be attacked but they don't tell you whether to mark can be tacked there are things that you know after a little confused about that because the roots of a plethora of quotations from the case that  tacking should be of limited thing and not expansive and his scope point early and how do you communicate that to the jury because by nature the evidence a jury's going to see is the change product and the question in terms of are they going to be confused by it they're not because they're going to know it's the same manufacture but what i think it's important to keep separate the tack in question and the likelihood of confusi question taking us to priority which is sort of one element of an infringement suit likelihood of confusion is a different element checking is a constructive use doctrine that's about priority and so when juries are comparing two marks for the purposes of determining whether they should be tacked those are doubt because they will be instructed about when talking is appropriate and in this case epperson as request the jury was instructed the mark should be allowed to be tacked only if they create the same continuing commercial impression i think the word same signal as the narrowness of the  to that's what i mean and a judge in these cases plays the same important roles that a judge plays in every civil jury trial which is to say that the judge decides the legal rules and instructs the jury on that and then the judge also will decide marriage determinations if the evidence that's presented could only lead to one reasonable conclusion about those determinations and so when the judge decides attacking issue on summary judgment a motion to dismiss the judge just setting the outer bounds of the talking doctrine and just the same way it  any other issue that comes up in the civil trial that would be tried to a jury and we don't discount that i mean the judge has a very important role but ultimately the question whether to mark's give the same continuing commercial impression is a question that must be answered from the perspective of the ordinary consumer of the relevant goods that is really essentially a factual question and it's certainly true that a judge could decide that question as as in fact judges do in bench trials and in suits for injunctive relief and motions for summary judgment but the question isn't when you have a jury impaneled the question is whether a judge could decide the question the question is could the jury also decide the question is is there something about this question that a judge is really well equipped to answer and a jury is really ill equipped to answer that was a situation of markham and that's really an outlier situation  and that doesn't come up here because here again the focus is really on the consumer impression and what's a jury a jury is a collection of ordinary consumers and so in some ways a jury is actually better equipped to answer that question than a judge might assume the same would be true of likelihood of confusion if that's the argument that the jury serves as a focus group in the same way for that question yes and i think i may have misspoken when he suggested that counsel when he suggested that there's a circuit split on whether a likelihood of confusion is a question for a jury or a question for a judge i'm not aware of any circuit that has held this a question for a judge only there's a circuit split on whether it's a question of water a question of fact and that affects how you review it on appeal but as far as i know every circuit treats it as a question for the jury and one important element of the likelihood of confusion in our this in every circuit is a comparison of the similarity of two marks she has conceded a jury can make that comparison that's a different you again you're comparing different marks there than you are in talking and it's a different degree of similarity you're looking for but it's not different in kind kind of analysis and there point where it goes to the judge of the jury not as far as i can tell there's a split on whether it's a question of law or a question of fact and in fact that's also the circuit split as to tacking but you know in the second circuit for example they have held that likelihood of confusion is a question of law but they are if you join determinations on likelihood of confusion they just review them without giving them much deference to the jury's ultimate determination those issues are decided by juries in the circuits that have held it's a question of law which doesn't make a lot of sense and we think isn't necessarily the right way to do it but judges have decided tacking questions but none of those cases are cases where a jury was impaneled to decide the infringement issue or all cases that were decided at summary judgment or motion to dismiss that were tried as bench trials or that were suits for injunctive relief and so the treatment of talking in those cases tells us nothing about what we should do when injury is actually impaneled and as far as i know fisher has not identified and i'm not aware of a single case from any period of time in which a jury was empaneled to decide an infringement issue and the judge took the issue away from the jury there just isn't such an example and that's because generally when you have civil trials and you have a jury impaneled these questions of ultimate determinations of factual issues and even when they go to the ultimate legal determinations they're decided by juries who are properly instructed now it's a that there's a lot of a lot of overturn and petitioners argument that we're worried about jurors getting it wrong and there's an argument that the jury got it wrong in this case but i think that shouldn't drive your decision about whether juries or judges should decide this issue because juries just like judges can get things wrong all the time and we have mechanisms in place to correct erroneous story verdicts you can argue that the jury was improperly instructed that wasn't an argument that's ever been made in this case or you can argue that there wasn't sufficient sufficient evidence to support the jury's verdict that was the argument the petitioner made an appeal to the ninth circuit the argument is rejected imposition has not asked this court to review that determination so how do you feel about whether the jury got it right or wrong in this case that shouldn't tell you but doesn't tell you what whether the jury should or shouldn't have had the right to answer the question we think it's clearly a fact based question and it should go to the jury just one last point if i could that has basically asserted that you should only really look at the two marks themselves and that we're almost always tell you what you need to do and we look at present you just look at those two marks and as the justices have suggested it's you know just looking at how other marks in the past have been treated doesn't always tell you the full story and even in the american mobile phone case one of those dispositive considerations in that case was not just looking at the marks and how they looked and what the words were and it wasn't just the fact that there was an intervening mark that was similar they looked picked the court looked at the teacher when the federal circuit approved it looked at how the two different rights had been used in the yellow pages and whether they had been used to advertise the same kind of products or different kinds of products and i just shows that talking is a very context specific inquiry you need to look at how the how the marks are used in advertising respect to the products and with you know how the consumers actually perceive those marks and of course if a company is in a position where it's contemplating amending its mark and it wants to have some sort of certainty about whether that will be allowed it can go to its consumers and do consumer save surveys and say you know do you think if we change it this way would you still have the same consumer impression it can in other words gather a fundamental submission is that there is more going on here than simply the consumer impression tast i think there's a reason that this is called the legal equivalence test and not simply just consumer impression and that's because what's happening here is a deeper legal judgment that corresponds to the legal fiction that that is tacky and i think what's what's deeper about this is just informing the jury that the question is do these two marks have the same consumer impression is going to not just lead to a different result but a very different kind of t court looks at these past examples to truly understand how narrow tackling it is i think if one just reads what the what the standard of concern the consumer impression and then you look to the past cases there is some confusion as to how these cases of come out but these cases show just how narrow the doctrine must be those cases are what give the vibrance and the a bite to the doctor and let us assume that the commercial in question is a jury question that we were to hold that what would be the legal standard that a judge should apply in coming to legal conclusion you know what what is more what is the legal conclusion you want of the judge the judge is going to use the consumer impression if that were factual to understand what the preemptive scope of the first mark in the preemptive scope of the second mark so as you suggested that could be factually terminix what those are but what the legal aspect of that is asking argument that if quoting here if a new market creates a different right of exclusion then the original tacking is not allowed that was our controlling framework from the opening brief and throughout our opening brief we explained that the limitation that's essential on tacking is the competition or the rights of the third parties every court that is explained that there is an outer bound on one tacking can be allowed as explained that that outer boundary rives from the anti competitive effects that would result from retroactively years later  expanding the the initial trademark rights so that that was i think the theme of our of our opening brief and that continued through in the yellow brief the second point i'd like to make is that this is in fact a tru put to the judge so back to the question what happens in that second stage in terms of what's the legal aspect of the test the court will assess how much of a change has been made in the market and then have to compare that against the original mark to see was that reasonable was that foreseeable  people in the marketplace could they have predicted that this kind of change was coming that's the sort of legal determination that a court is going to be making that turns on its assessment of the interaction and the effect of the two marks my final point is  adopted the notion of foreign language equivalents into the concept of trademark hacking and as we demonstrated i think that would be the effects of that would be quite severe because it would create a circumstance where any  jeopardy if there was unknown to them a similar confusingly similar usage of that kind of mark in a foreign language which they would not have the ability to access so it was certainly true that foreign language equivalents can and should it is a doct that is permits an affirmative trademark infringement claim that is not what we have here it's not a doctrine that can be used two years after the fact expand the scope of the trademark with respect to go to the front of the car in the use or reliance on the foreign use of you know we did object to the use of foreign language equivalents the ninth circuit specifically did not reach that issue it stated in a footnote that because it was relying on the broader tacking tacking between one a bank to one overseas korean club it didn't have to consider whether it could use foreign language equivalents we certainly objected that that was an impermissible use we think if the court were to reach that it should certainly hold that that is not a permissible use  foreign language equipment because the effects of it would be really quite substantial thank you counsel cases submitted