Reynolds Consumer Products, Inc. v. Handi-Foil Corp.

Tacking is a question of law; the party seeking to tack bears the burden of proving that the current trademark and the registered trademark create a continuing commercial impression.

Opinion (O'Grady): Both parties sell aluminum foil. Reynolds Consumer Products, Inc. ("Reynolds") brought this suit against Handi-Foil Corporation ("Handi-Foil") alleging that the packaging Handi-Foil sells their aluminum in infringes the packaging design used by Reynolds. Reynolds submitted a motion for partial summary judgment with respect to Handi-Foil's counter claim, which alleged that Reynolds abandoned its trademarked designs because the box Reynolds uses is not identical to its registered marks. Reynolds originally applied for and was granted two trademarks in its packaging. Over the years, Reynolds has made changes to its trademarks and submitted updated specimens to the PTO when renewing its registrations. The PTO most recently renewed the registration in 2007. Reynolds did not dispute that their packaging is not identical to the design registered in 2007, but rather claimed that the differences are minor, invoking the legal doctrine of tacking. The court looked to the Federal Circuit's decision in Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F2d 1156, to determine that tacking is a question of law. To determine which party should bear the burden of proving tacking, the Court considered that Reynolds was seeking to tack because it had admitted that its trademarks currently in use are different than its registered trademarks and that Reynolds did not intend to use the previously registered trademarks. Because of Reynolds' posture, the court determined that the burden of tacking should lie with Reynolds. The court also determined that the logical points of comparison are the trademarks currently in use with the trademarks registered with the PTO. The court found that a reasonable juror could not find that the marks in question fail to produce a continuing commercial impression, therefore holding that, as a matter of law, Reynolds had not abandon its marks. The Court GRANTED Reynolds' motion for partial summary judgment regarding Handi-Foil's abandonment counterclaim.