IP Industry Summary: Trademark Holder Nailed by 'Tacking' Defense

Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013).

In certain cases, the user of a trademark may establish priority over another user's mark by "tacking" the date of its first use of a mark onto its use of a subsequent mark; to do so, the user's two marks must be so similar that consumers would generally regard them as being the same. Courts permit tacking to protect a trademark owner from losing priority in a mark each time it makes a slight alteration in the mark, but have applied the doctrine only in "exceptionally narrow" circumstances.

In Hana Financial, a dispute involving two Korean financial institutions and the word "hana"—which means "number one," "first," "top," or "unity" in Korean—the Ninth Circuit recently held that one such narrow circumstance existed. There, the plaintiff argued that it started using its "Hana Financial" mark in 1995, whereas the defendant Hana Bank did not begin using its mark "Hana World Center" until 2000 and thus the plaintiff's mark enjoyed first use. In response, the defendant argued that it began using its mark "Hana Overseas Korean Club" in 1994 and that it could therefore establish priority over the plaintiff's mark when its use of that mark was tacked to its use of its "Hana World Center" mark.

The district court initially granted summary judgment to the plaintiff on the priority issue; the Ninth Circuit, however, reversed, holding that there was an issue of fact regarding priority and remanded the case for trial. At trial, the district court instructed the jury regarding the tacking doctrine, and the jury returned a verdict in favor of the defendant, finding that the defendant's use of the mark predated the...