Trademark "Tacking" Back to Earlier Registered Version Not Allowed

Case: One Industries, LLC v. Jim O'Neal Distributing, Inc., 9th Cir. No 08-55316 (8/24/09)

The One Sentence Summary: The changes in plaintiff's trademark were too significant to allow tacking of the marks, and summary judgment for defendant was appropriate where the marks were so dissimilar that there was no likelihood of confusion.




What They Were Fighting About: In a trademark dispute between makers of motorcycle gear, the district court granted summary judgment to defendant, ruling the marks were dissimilar.

Ninth Circuit Holdings:

• The plaintiff's stylized "O" marks had changed too much to allow tacking. Tacking of similar marks requires that marks create the 'same, continuing commercial impression' and the marks were too dissimilar.
• There was no likelihood of confusion on the disputed "O" marks or the words "O'Neal" and "ONE". The marks were not at all similar in sight, sound, or meaning.