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Hana Fin., Inc. v. Hana Bank - 574 U.S. 418, 135 S. Ct. 907 (2015)

Rule:

The U.S. Supreme Court does not say that a judge may never determine whether two trademarks may be tacked. If the facts warrant it, a judge may decide a tacking question on a motion for summary judgment or for judgment as a matter of law. Fed. R. Civ. P. 50, 56(a). And if the parties have opted to try their case before a judge, the judge may of course decide a tacking question in his or her factfinding capacity. The Court holds only 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 whether tacking is warranted must be decided by a jury.

Facts:

In 1994, respondent Hana Bank established a service called Hana Overseas Korean Club to provide financial services to Korean expatriates, and specifically advertised that service in the United States. Those advertisements used the name “Hana Overseas Korean Club” in both English and Korean, and included the name “Hana Bank” in Korean. In 2002, respondent began operating a bank in the United States under the name “Hana Bank.” Petitioner Hana Financial was established in 1994 as a California corporation. It began using that name and an associated trademark in commerce in 1995. In 1996, it obtained a federal trademark registration for a pyramid logo with the name “Hana Financial” for use in connection with financial services. Hana Financial sued Hana Bank, alleging infringement of its “Hana Financial” mark. Hana Financial denied infringement by invoking the tacking doctrine and claiming that it had priority. The District Court granted the summary judgment to Hana Bank. The Court of Appeals reversed the decision on the ground that there were genuine issues of material fact as to priority. On remand, the infringement claim was tried before a jury. The jury returned a verdict in favor of Hana Bank. The Court of Appeals affirmed the verdict of the jury. Seeking futher review by the United States Supreme Court, Hana Financial argued that tacking is a question of law that should be resolved by a judge, not by a jury.

Issue:

Was the issue in a trademark infringement case of whether tacking was available to determine trademark priority was properly submitted to the jury?

Answer:

Yes.

Conclusion:

The Court held that the issue was a question for the jury. The Court explained that tacking was available when original and revised marks were “legal equivalents” in that they created the same commercial impression. Because the inquiry of what the commercial impression that a mark conveys must be operated from the perspective of an ordinary purchaser or consumer, a jury should make the determination. Finally, the Court added that if the facts warranted it, a judge could decide a tacking question on a motion for summary judgment or judgment as a matter of law, and the issue could be decided in a bench trial. However, when a jury is to be empaneled and when the facts warrant neither summary judgment nor judgment as a matter of law, tacking is a question for the jury. The Court affirmed the judgment of the Court of Appeals.

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