Supreme Court Docket Report - June 23, 2014

Keywords: Supreme Court, trademark tracking, Passenger Rail Investment and Improvement Act

Today, the Supreme Court granted certiorari in two cases of interest to the business community:

Trademark Tacking—Question of Fact or Question of Law Nondelegation Doctrine—Passenger Rail Investment and Improvement Act Trademark Tacking—Question of Fact or Question of Law

To have a protected interest in a trademark, a party must be the first to use it. The party that first uses the mark is said to have "priority," and the date of the mark's first use is its "priority date." Because the first use of a trademark is critical to determining ownership, courts have recognized a doctrine called trademark "tacking" to permit the owner of a trademark to make minor changes to the mark without losing priority. The test for trademark tacking, which courts routinely characterize as a narrow doctrine, is whether the old mark and the new mark are "legal equivalents." If tacking is permitted, the priority date of the later mark becomes the party's first use of the earlier mark.

Today, the Supreme Court granted certiorari in Hana Financial, Inc. v. Hana Bank, No. 13-1211, to decide whether trademark tacking is a question of law for a court or a question of fact for the jury. Mayer Brown represents the petitioner in this matter.

Petitioner Hana Financial, Inc., the owner of the federally registered trademark "Hana Financial," sued respondents Hana Bank and Hana Financial Group for trademark infringement based on their use of "Hana Bank." Respondents argued that they had priority based on the trademark tacking doctrine. Specifically, they claimed that the mark "Hana Overseas Korean Club" could be tacked to the later mark "Hana World Center," and that "Hana World Center" could be tacked to "Hana Bank." Relying on Ninth Circuit precedent holding that trademark tacking is a question of fact, the district court had the jury determine whether these marks are "legal equivalents." The jury returned a verdict in favor of respondents.

The Ninth Circuit affirmed. The court explained that "[i]n our circuit, tacking presents a question of fact that must ultimately be decided by the jury unless the evidence is so strong that it permits only one conclusion." Hana Financial Inc. v. Hana Bank, 735 F.3d 1158, 1168 (9th Cir. 2013). The court of appeals went on to conclude that "[Hana Financial, Inc.] has not shown that the jury's decision was unreasonable." Id.

The Ninth Circuit...