IP Law Daily, TRADEMARK NEWS: High Court asked to review trademark “tacking” doctrine, (Apr 8, 2014)

By Peter Reap, J.D., LL.M.

Hana Financial, Inc., has filed a petition for a writ of certiorari, asking the U.S. Supreme Court to review 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.

According to the petition, the question presented, which has divided the courts of appeals and determined the outcome in this action, is whether the jury or the court determines 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 the Bank could tack its use of its present “Hana Bank” mark to its use the “Hana Overseas Korean Club” mark 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 states.

Hana Financial argued that by placing the tacking decision in the hands of the jury, the Ninth Circuit found itself powerless to disturb the conclusion that “Hana Overseas Financial Club” is the legal equivalent of “Hana World Center,” which is in turn the legal equivalent of “Hana Bank.” The approach taken by the Ninth Circuit is both plainly wrong and irreconcilable in a meaningful way with the standard applied in other circuit, Hana Financial contended.

The petition in Hana Financial, Inc. v. Hana Bank, Dkt. No. 13-1211, was filed April 7, 2014.

Attorneys: Charles A. Rothfeld (Mayer Brown LLP) for Hana Financial, Inc.

Companies: Hana Financial, Inc.; Hana Bank

News: Trademark