IP Law Daily, TOP STORY: High Court grants petition to review case about trademark “tacking” doctrine, (Jun 23, 2014)

By Thomas Long, J.D.

The U.S. Supreme Court has granted a petition for a writ of certiorari filed by Hana Financial, Inc., requesting review of a decision by the Ninth Circuit that applied the trademark doctrine of “tacking,” which allows a party to tack the date of the user’s first use of a mark onto a subsequent mark to establish priority when the two marks are so similar that consumers would regard them as being the same.

The Ninth Circuit upheld a jury’s determination that a Korean bank (Hana Bank) had priority over Hana Financial, a California financial services company, as the first to use the mark “Hana.” The jury was properly instructed on the doctrine of “tacking” and could have reasonably determined that tacking applied to establish priority in the Korean bank’s mark, according to the Ninth Circuit.

The question presented is whether the jury or the court should determine whether use of an older mark may be tacked to a newer one.

The priority issue turned on whether it was permissible for the jury to find that Hana Bank could tack its use of its present “Hana Bank” mark to its use of the mark “Hana Overseas Korean Club” beginning in 1994. The Ninth Circuit’s treatment of the tacking as a question of fact, rather than a question of law, determined the outcome of the case, the petition asserts.

Hana Financial argued that it was error to treat the question of whether “Hana Overseas Financial Club” is the legal equivalent of “Hana World Center,” which is in turn the legal equivalent of “Hana Bank,” as a factual question rather than a legal one. According to Hana Financial, the approach taken by the Ninth Circuit was plainly wrong and irreconcilable with the standard applied in other circuits.

The petition in Hana Financial, Inc. v. Hana Bank, Dkt. No. 13-1211, was granted June 23, 2014.

Attorneys: Charles A. Rothfeld (Mayer Brown LLP) for Hana Financial, Inc. Carlo Frank Van den Bosch (Michelle LaVoie Wisniewski Sheppard Mullin Richter & Hampton) for Hana Bank.

Companies: Hana Financial, Inc.; Hana Bank

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