concurring in part and dissenting in part:
I agree with the majority’s conclusion that O’Neal did not forfeit the tacking argument by failing to raise it in the district court or in its notice of appeal. Maj. op. at 1158-59. I also agree with the majority’s treatment of the One Angular mark/O’Neal mark and the trade dress claim. Maj. op. at 1165. But I disagree with the majority’s holding that the district court committed no reversible error by ruling on the tacking issue — which the majority recognizes as a “highly fact-sensitive inquiry,” maj. op. at 1169 — in the context of a motion for a more definite statement, rather than in post-discovery summary judgment proceedings or later.
As the majority acknowledges, tacking is a question of fact. Maj. op. at 1160-61; Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 759 (9th Cir.2006). Whether tacking is an issue of law or fact was a matter of first impression for the Quiksilver court. 466 F.3d at 759. The Quiksilver court broke with two other circuits, recognizing the fact-dependent nature of certain trademark questions, such as likelihood of confusion and tacking. See Quiksilver, 466 F.3d at 759; cf. Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623 (6th Cir.1998); Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed.Cir.1991).
A court may resolve a question of fact as a matter of law only if reasonable minds cannot differ and the evidence permits but one conclusion. Quiksilver, 466 F.3d at 759. The district court here erred by resolving the tacking question as a matter of law in a motion for a more definite statement, without receiving any evidence or making a supportable finding that reasonable minds could not differ on the issue. The court ruled on the motion on the basis of the parties’ moving papers only, without oral argument.1 The parties began initial discovery more than a month after submit*1167ting their moving papers on the motion by filing a Joint Discovery Plan on December 15, 2006.
In my view, it was inappropriate for the court to decide that O’Neal was not permitted to tack its 2003 mark to its older marks as a matter of law in a pre-discovery Federal Rule of Civil Procedure 12(e) order. At that stage in the litigation, it would have been impossible for the district court to conclude that reasonable minds could not differ and that the evidence permitted only one conclusion regarding tacking. Indeed, the court made no such finding, and the majority itself concedes that this is a “close case.” Maj. op. at 1161.2 The order granting the motion states only that the “Court is unpersuaded by O’Neal’s claim that it uses only one mark that has been slightly altered over the years.” That conclusory statement, unsupported by any evidence in the record at that time, is not enough to decide .the highly fact-dependent question of tacking as a matter of law. I would therefore reverse and remand.
. The court may have been led astray by One Industries' reliance on Sixth Circuit, rather than Ninth Circuit, precedent in its reply in support of the motion for a more definite statement claiming that "[w]hether two variants constitute a single mark is a question of law” (citing Data Concepts, 150 F.3d at 624).
. I am not aware of any precedent in which tacking has been rejected as a matter of law when the two marks are so closely related and alike. Here, both marks involve a non-capital, right-slanted, thick-sided, bold, and stylized "o” with an apostrophe after it at the upper right corner. See maj. op. at 1161. The cases cited by the majority, deciding that tacking was not allowed as a matter of law, either occurred after fuller factual development; or involved the addition, replacement, or subtraction of words or letters (or a conversion from capital to small letters, or vice versa); or both. Maj. op. at 1161-62. None of those changes occurred here.