On January 21, 2015, the U.S. Supreme Court decided Hana Financial, Inc. v. Hana Bank, No. 13-1211, holding that whether two trademarks are “legal equivalents” creating a single, continuing commercial impression and may be tacked together to determine priority of the mark is a question for the jury to decide.
Hana Financial, Inc. is a California corporation that provides financial services to people in the United States. It began using the name “Hana Financial” in 1995 and obtained federal trademark registration for a pyramid logo with the name “Hana Financial” in 1996. Hana Bank began as a Korean entity called Korea Investment Finance Corporation in 1971. In 1991, that entity changed its name to “Hana Bank” and began using that name in Korea. In 1994, it began advertising its services in the United States, using the name “Hana Bank” in Korean in its advertisements. In 2002, Hana Bank began operating a bank in the United States using the name “Hana Bank.” Hana Financial (the California corporation) sued Hana Bank for trademark infringement. Hana Bank asserted in defense that it had a priority interest in the mark based on the tacking doctrine, which permits a party in a trademark action to rely on the first use date of a similar but distinct mark when the two marks are “legal equivalents” that “create the same, continuing commercial impression so that consumers consider both as the same mark.” The jury returned a verdict in favor of Hana Bank after the trial court gave a jury instruction on tacking that was “essentially the instruction [Hana Financial] proposed.” The Ninth Circuit affirmed, holding that the “highly fact-sensitive inquiry” required for tacking is “reserved for the jury,” but acknowledged a circuit split as to whether tacking is a question of law or of fact.
The Supreme Court, unanimously affirming the Ninth Circuit’s judgment, held that “when a jury trial has been requested and when the facts do not warrant entry of summary judgment or judgment as a matter of law, whether tacking is warranted must be decided by a jury.” The Court noted that the tacking inquiry relies on “an ordinary consumer’s understanding of the impression that a mark conveys” and explained that “when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.” Acknowledging that tacking “involves the application of a legal standard,” the Court determined that the resulting mixed question of law and fact is nonetheless for the jury to decide. The Court noted, however, that “[t]his is certainly not to say that a judge may never determine whether two marks may be tacked.” A judge still “may decide a tacking question on a motion for summary judgment or for judgment as a matter of law” when “the facts warrant it.” And when “the parties have opted” for a bench trial rather than a jury trial, “the judge may of course decide a tacking question in his or her factfinding capacity.” The Supreme Court accordingly affirmed the judgment of the Ninth Circuit that the tacking question was within the jury’s province to decide.
Justice Sotomayor delivered the opinion of the unanimous Court.
Faegre Baker Daniels LLP filed a brief in this case on behalf of amicus curiae American Intellectual Property Law Association.