Hana Financial v. Hana Bank—The Supreme Court Reaffirms The Power Of The Jury To Decide Issues Of Commercial Impression In A Trademark Tacking Decision

In the first substantial trademark case in over a decade, the Supreme Court unanimously decided that a jury can apply the tacking doctrine and decide whether two trademarks, used by a single party, convey the same commercial impression. Hana Financial, Inc. v. Hana Bank, et al., 574 U.S. ____ (2015). In doing so, Justice Sotomayor, on behalf of the Court, reaffirmed the power of a jury to decide issues of an ordinary consumer's impression. The opinion, however, appears for now limited to the tacking doctrine. The Court did not address, as Supreme Court watchers had anticipated, the looming circuit split regarding whether a judge or jury should decide the ultimate trademark question: the likelihood of confusion between the two marks.

What is Tacking?: Normally, the first party to use a trademark in commerce owns the right to use that mark and stop others from using the mark. This first user is said to have "priority" in the mark over subsequent users. Trademark law also recognizes that trademark owners should be able to make some changes to their marks without having to restart the clock on their priority date. This doctrine is called tacking. With tacking, a party can "tack" the first-use date of its new modified mark back to the first-use date of the original mark. But tacking is not available for any two similar marks. The marks have to be "legal equivalents" which create the same, continuing commercial impression for consumers.

Who Has Priority in the HANA mark?: In this case, Defendant Hana Bank, asserted the tacking doctrine to defend against the Plaintiff Hana Financial's claims of trademark infringement. At issue was which bank was the first to use, and therefore had priority in, the HANA mark for banking.

Hana Financial began using its HANA FINANCIAL mark in 1995. Rival Hana Bank did not use its HANA BANK mark until 2002. To claim that it had priority, Hana Bank argued that it could "tack" its HANA BANK mark to its 1994 mark, HANA OVERSEAS KOREAN CLUB, in English, over the words, HANA BANK, in Korean. A jury decided that Hana Bank's two marks offered the same commercial impression and thus were "legal equivalents." This finding gave Hana Bank priority over Hana Financial and defeated its infringement claims. Hana Financial appealed to the Ninth Circuit arguing that tacking involved the application of a legal standard and thus should be decided by a judge. The Ninth Circuit noted that other circuits, such as the Federal Circuit's Van...