Hana Financial v. Hana Bank
Issues
Is trademark tacking an issue of law or fact?
The Supreme Court will have the opportunity to address the issue of whether trademark tacking is a question of law or fact. In this case, Hana Bank argues that its use of “Hana Overseas Korean Club” should be tacked to its use of “Hana World Center”—as the district court jury seemingly allowed. Hana Financial counters, argues that a judge, not a jury, should decide the tacking issue; and, Hana Bank’s tacking claim fails as a matter of law. The outcome of this case may touch on judicial efficiency, predictability of trademark law, and consumer protection.
Questions as Framed for the Court by the Parties
To own a trademark, one must be the first to use it; the first to use a mark has “priority.” The trademark “tacking” doctrine permits a party to “tack” the use of an older mark onto a new mark for purposes of determining priority, allowing one to make slight modifications to a mark over time without losing priority. Trademark tacking is available where the two marks are “legal equivalents.” The question presented, which has divided the courts of appeals and determined the outcome in this case, is:
Whether the jury or the court determines whether use of an older trademark may be tacked to a newer one is a question of fact?
In the mid-1990s two companies began providing financial services in the United States. See Hana Financial, Inc. v Hana Bank, 735 F.3d 1158, 1161 (9th Cir.
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Additional Resources
- Anthony Lupo et. al.: Supreme Court to hear case on trademark tacking, Lexology (Sept. 3, 2014).
- David Welkowitz: Who should Decide?: Judges and Juries in Trademark Actions, Mercer Law Review (2012).