By Jonathan Kennedy
The Supreme Court recently released its unanimous decision in Hana Financial, Inc. v. Hana Bank, holding 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, the question of whether tacking is warranted must be decided by a jury.”
The case involved use of the "Hana Bank" mark by a Korean financial service provider, which has been known as “Hana Bank” since 1991. However, in 1994 it established a service called “Hana Overseas Korean Club” which was advertised in the United States. In 2000, “Hana Overseas Korean Club” was renamed to “Hana World Center” and finally began operation in the United States as “Hana Bank” in 2002. The petitioner, Hana Financial, is a California company established in 1994 and also in the field of providing financial services. In 1996, after a year of use in commerce, Hana Financial obtained a federal registration for its logo appearing with the name “Hana Financial.” Suit was brought in 2007 by Hana Financial, alleging trademark infringement on the basis that the use of "Hana Bank" infringed the rights in the "Hana Financial" trademark. In response, the respondent invoked the tacking doctrine to assert earlier rights. The tacking issue was ultimately decided by a jury, with the district court denying motions for judgment as a matter of law.
The tacking doctrine recognizes that trademark owners and users should be allowed to make certain changes to their marks over time without losing their claim of priority. Lower courts have traditionally found that tacking is available when the original and revised marks are “legal equivalents” which have the same, continuing commercial impression when viewed through the eyes of the consumer.
Justice Sotomayor delivered the opinion of the Court and noted that it has long been recognized across doctrinal lines that when the viewpoint of an ordinary person is in question, the jury is generally the decision maker. However, the Court distinguished that holding when warranted by the facts, a judge may decide the question of tacking on a motion for summary judgment or for judgment as a matter of law. Furthermore, the Court noted that even if tacking was to be considered a mixed question of law and fact due to the “legal equivalence” requirement, typically these mixed questions are still left to the jury with carefully crafted jury instructions as to the legal standard.