21 January 2015

Law in Plain English: Hana Financial, Inc. v. Hana Bank

This is one in a series of posts designed to describe court decisions in plain English. For more detail and background on the legal issues, see the link to the case below. For similar posts, click here.

SCOTUSblogHana Financial, Inc. v. Hana Bank

Argument: Dec 3 2014 (Aud.)

Background: Hana Bank began operating in May 1994 as the Hana Overseas Korean Club, but did not attempt to register its trademark until. Hana Financial (HFI) began operating on April 1, 1995, and registered its own trademark in 1996. In 2007, HFI filed a trademark infringement claim against Hana Bank, HFI contended that the Bank's use of its "Hana Bank" mark infringed HFI's "Hana Financial" mark because its use of the word "Hana" in connection with financial services would likely cause confusion. The jury found that Hana Bank had used its mark in commerce prior to April 1, 1995, and therefore had trademark priority over HFI. The jury's finding was based upon the doctrine of tacking, where a party
may claim priority in a mark based on the first date of use of a similar but technically distinct mark where the previously used mark is the legal equivalent of the mark in question or indistinguishable such that consumers consider both as the same mark. The Ninth Circuit affirmed, ruling that tacking is a question of fact that must ultimately be decided by the jury.

Issue: The question before the Court is whether the jury or the court determines whether use of an older trademark may be tacked to a newer one.

Holding: In a unanimous decision, the Supreme Court ruled that whether two trademarks may be tacked for purposes of determining priority is a question for the jury. 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.
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