Trademark Tacking, First Use, and Digital Forensics: Hana Financial and the Need for Expert Testimony

Jason H. Eaddy

IP Litigation

Digital Forensics

April 15, 2015

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The Supreme Court’s January ruling in Hana Financial, Inc. v. Hana Bank puts the issue of trademark tacking in the jury’s hands, but the underlying question of when the mark was first used still remains.

In any dispute over trademark ownership, a central question is which party first used the mark at issue. The first party to use the mark has “priority” in that mark. Trademark tacking allows the holder of a mark to “tack” the first use to a similar prior mark.

In our digital world, marks appear in a myriad of electronic locations. They can be found on websites, in email signatures, and in electronic letterhead. The question of when a mark was first used electronically can often be answered with forensic data analysis.

Typical questions include:

• When was a file including the mark created?
• Was a file with the mark distributed in interstate commerce?
• Was the image file containing the trademark accessible and actually referenced on a website when it was added to the server?

The answers to these questions depend on both the reliability of first-person witnesses and correctly understanding the underlying electronic evidence. A computer forensics expert can add support to a mark’s priority date by providing hard evidence around when the ostensible owner of the mark put the mark into use.

What Evidence Exists of First Use (and How Reliable is that Evidence?)

Print advertising made the first use determination easy: in most instances, a magazine or newspaper had the date in question on its face. In the age of the Internet, however, the question of priority can be much less clear.

• Was the mark shown publicly or only used internally?
• Was it a part of an email signature? Was it used on electronic letterhead?
• Did the Internet Archive’s Wayback Machine capture the website on which the mark was first used? Are the dates on the capture reliable?

Expert Help with Dating (Your Trademark)

For those unfamiliar with the field, computer forensic examinations consist of identifying, preserving, analyzing, and presenting facts about the electronically stored information on computer systems and devices. This often includes collecting and analyzing data from computers, networks, smartphones, and USB flash drives.

A computer forensic analyst scientifically collects and analyzes a system’s data, then presents his or her findings (usually in the context of a legal matter).

With regard to establishing trademark priority, forensic experts can analyze an old hard drive, web pages, email archives, and backup files to determine when a mark was first put into use. Giving the jury an expert opinion on when a mark was used adds credibility in an age when magazines and newspapers are no longer the norm.

Forensic experts can be used in trademark infringement actions as well, assisting with the identification of instances of confusion found online, and then proving that such instances were created by actual consumers of the products at issue.

How Do You Know You Need an Expert?

Proper preservation and presentation of evidence can be critical to establishing, or disproving, a claimed first usage date. Whenever your trademark action relies on the validity of dates in electronic evidence, you could need a forensic expert’s assistance.

If your trademark action references electronic evidence, contact us for an initial consultation. On that call, we’ll get information about your matter, the evidence in question, and can offer you advice as to how to proceed, including whether we believe hiring an expert is wise at that point in time.