RESPONDENT: Hana Bank, et al.
LOCATION: U.S. 9th Circuit Court of Appeals
DOCKET NO.: 13-1211
DECIDED BY: Roberts Court (2010-2016)
LOWER COURT: United States Court of Appeals for the Ninth Circuit
CITATION: 574 US (2015)
GRANTED: Jun 23, 2014
ARGUED: Dec 03, 2014
DECIDED: Jan 21, 2015
Sarah E. Harrington - Assistant to the Solicitor General, Department of Justice, for the United States as amicus curiae supporting the respondent
Paul W. Hughes - for the petitioner
Carlo F. Van den Bosch - for the respondent
Facts of the case
In the spring of 1994, Hana Bank, a Korean entity, began to extend its services to the United States under the name Hana Overseas Korean Club. In advertisements distributed during the summer of 1994, Hana Bank included the name "Hana Overseas Korean Club" in English as well as "Hana Bank" in Korean. The advertisements also included Hana Bank's logo, known as the "dancing man." A second, distinct entity, Hana Financial, Inc. (HFI) was founded in California in the fall of 1994. In 1996, HFI obtained a federal trademark for their logo, a pyramid, with the words "Hana Financial" for use in financial services. Hana Bank officials were aware of HFI's use of the name Hana Financial but did not see the need to take any action because the entities did not directly compete with each other.
In 2007, HFI filed a complaint against Hana Bank alleging trademark infringement. The district court jury found that Hana Bank had used the "Hana Bank" trademark in the United States continuously since before HFI began using the "Hana Financial" trademark in 1995 and that Hana Bank's trademark could be "tacked" to their 1994 advertisements, which included a similar, but distinct use of the phrase "Hana Bank." HFI appealed, claiming that the determination of whether a trademark may be "tacked" to a prior mark is a question of law that must be determined by the court, not a question of fact that may be decided by a jury. The U.S. Court of Appeals for the affirmed the jury's decision.
Is the determination of whether a trademark may be tacked to an earlier mark a question of law which a court must decide, or a question of fact for the jury?
Media for Hana Financial, Inc. v. Hana BankAudio Transcription for Oral Argument - December 03, 2014 in Hana Financial, Inc. v. Hana Bank
Audio Transcription for Opinion Announcement - January 21, 2015 in Hana Financial, Inc. v. Hana Bank
John G. Roberts, Jr.:
Justice Sotomayor has the opinion in case 13-1214, Hana Financial v. Hana Bank.
This case comes to us on a writ of certiorari to Court of Appeals for the Ninth Circuit.
It concerns the doctrine of trademark tacking, which lower courts have developed so as to permit trademark users to make certain modifications to their marks while, in limited circumstances, retaining their priority positions.
Priority is important, because rights in a trademark are determined by the date of the mark's first use in commerce.
The lower courts have agreed that tacking is available when the original and revised marks are legal equivalents, which means that they create the same continuing commercial impression.
We granted certiorari to resolve the Circuit split about whether this determination should be made by a judge or jury.
Tests that ask how an ordinary person or community would act or understand something are often assigned to juries in many areas of the law.
This is true even where the test requires the application of a legal standard.
Here the test is about a mark's commercial impression, and that impression is viewed through the eyes of a consumer.
Because determining an ordinary consumer's impression falls easily within the category of things that juries do best, we hold that a jury should decide whether two marks may be tacked.
Of course, if the facts warrant it, a judge may decide a tacking question at summary judgment or on the motion for judgment as a matter of law.
Judges may also decide tacking questions in bench trials.
We hold only that when a jury trial has been requested and when the facts do not warrant summary judgment or judgment as a matter of law, the question of tacking must be decided by a jury.
The judgment of the Ninth Circuit is affirmed.
The decision of the Court is unanimous.