In HANA FINANCIAL, INC. v. HANA BANK, No. 13-1211, the Supreme Court held that whether two trademarks may be tacked for purposes of determining priority is a question for the jury, because tacking is a factual inquiry based on the perspective of a consumer.
Hana Financial sued Hana Bank for infringing the “Hana Financial” mark. Hana Bank denied infringement by claiming it had priority based on its earlier and continuous use of the mark “Hana Overseas Korean Club.” Although Hana Bank later operated under the marks “Hana World Center” and “Hana Bank,” it argued that it had priority because the two later marks created the same, continuing commercial impression as the earlier mark such that the tacking doctrine applied. The jury returned a verdict in favor of Hana Bank based on tacking. The Ninth Circuit affirmed. The Supreme Court granted certiorari on the issue of whether trademark tacking should be determined by a jury and affirmed the Ninth Circuit’s decision.
The Supreme Court began by stating the general rule that, when the question is how an ordinary person or community would make an assessment, a jury is generally the proper decision maker. Tacking is just such an issue because the relevant question is whether the two marks create the same, continuing commercial impression such that consumers view them as the same mark. In a case where a jury trial has been requested and the facts do not warrant entry of a summary judgment or judgment as a matter of law, tacking should be decided by a jury.
The Supreme Court then addressed Hana Financial’s four arguments in turn. First, the Supreme Court observed the application of a legal standard by a jury is common, and tacking is no different than any other mixed question of law and fact. Carefully crafted jury instructions may address concerns about improper application of legal standards by a jury. Second, the Supreme Court did not agree that a jury making a tacking determination would create new law, and thereby invade the province of the judge, any more than a jury deciding a tort, contract, or criminal case. Third, the Supreme Court did not agree the predictability required for a functioning trademark system mandated that judges decide the tacking issue. The Supreme Court stated that juries often make dispositive applications of legal standards to facts in tort, contract, and criminal cases, and there is no reason to treat trademark tacking differently. Finally, regarding the argument that judges have historically resolved tacking disputes, the Supreme Court determined Hana Financial had pointed to cases arising in the context of bench trials and summary judgments. But such cases do not change the Court’s conclusion that, when a jury is empaneled and when the facts warrant neither summary judgment nor judgment as a matter of law, tacking is a question for the jury.