Trademark Tacking is Factual Question For Juries Says U.S. Supreme Court

Hana Financial, Inc. v. Hana Bank, 135 S.Ct. 907 (2015)

In its first trademark ruling in a decade, the U.S. Supreme Court in Hana Financial, Inc. v. Hana Bank unanimously held that the question of trademark tacking is a factual one for juries to decide.

"Tacking" developed as a trademark doctrine to accommodate the fact that trademark owners sometimes alter their marks over time. Tacking permits the owner to "tack on" the use of an older mark format to the use of a newer format in order to claim priority back to first use of the older format. Tacking is permitted only where the marks are deemed "legal equivalents," that is, where the marks "create the same, continuing commercial impression so that consumers consider both as the same mark." Hana Financial, Inc. v. Hana Bank, 135 S.Ct. 907, 909 (2015) (internal quotation marks and citation omitted).

Although tacking is a well-established principle in trademark law, courts had differed on whether tacking was a question of fact for the jury or a question of law for the judge. The Ninth Circuit, which adjudicated the Hana case before it was appealed to the Supreme Court, held that tacking is a question for juries. Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158, 1160 (9th Cir. 2013) (tacking "requires a highly fact-sensitive inquiry" that is "reserved for the jury") (internal quotation marks omitted). The Sixth Circuit and Federal Circuit, on the other hand, had held that the question of whether two marks are legally equivalent should be left to a judge. See Van Dyne-Crotty, Inc., 926 F.2d at 1159; Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623 (6th Cir. 1998).

The Supreme Court, however, had no difficulty placing the question squarely before a jury. The Court first noted that "[t]he commercial impression that a mark conveys must be viewed through the eyes of a consumer." Hana, 135 S. Ct. at 910 (internal quotation marks and citation omitted). With that principle established, the Court easily concluded that "[a]pplication of a test that relies upon an ordinary consumer's understanding of the impression that a mark conveys falls comfortably within the ken of a jury." Hana, 135 S. Ct. at 911. The Court went on to remark that "we have long recognized across a variety of doctrinal contexts 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." Id.

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