In a unanimous decision, the Supreme Court held today that the determination of whether a trademark owner can “tack” a new version of its trademark onto an earlier version of the mark is a question of fact that may be resolved by the jury. Hana Financial, Inc. v. Hana Bank, No. 13-1211.
The Court rejected petitioner Hana Financial Inc.’s four arguments as to why tacking, which allows a trademark owner to establish priority over an intervening mark, may only be determined by a judge. Because tacking turns on consumer perception, the Supreme Court held that, in fact, juries are in the best position to determine if marks should be “tacked” because they are “legal equivalents” that create the same, continuing, commercial impression.
Notably, the Supreme Court’s decision does not eradicate a judge’s ability to determine tacking in all situations. While the Court recognized that a jury “should” make this determination, “[t]his is certainly not to say that a judge may never determine whether two marks may be tacked.” For example, a judge can properly decide a tacking question on a motion for summary judgment or for judgment as a matter of law, or when the parties have opted to try their case before a judge.