Under the “tacking” doctrine, trademark users are able to modify their trademarks in certain ways and still have the new, modified mark claim a priority date based on the older mark. On January 21, the Supreme Court unanimously held that whether a trademark user can benefit from tacking is a fact question for the jury.

Petitioner Hana Financial sued Hana Bank for infringement of its Hana Financial mark. Hana Bank sought to avoid infringement by tacking together its long, historical use of a variety of company names and logos that include the word Hana. The jury returned a verdict of no infringement and the court denied petitioner’s motion for judgment as a matter of law. On appeal, the 9th Circuit affirmed the lower court’s decision, but recognized that there was a circuit split as to whether judges or juries should decide the tacking question.

The Supreme Court resolved this split by holding that tacking is an issue to be resolved by a jury. The test for applying the tacking doctrine is whether the original mark and the modified mark “create the same, continuing commercial impression” such that consumers would consider the two marks to be the same. The Supreme Court analogized this test to other jury issues—including ones outside of the trademark context—that rely on the views and understanding of an ordinary person. Nevertheless, the court held open the possibility that under the right factual circumstances, summary judgment and judgment as a matter of law may be appropriate.

Hana Financial, Inc. v. Hana Bank, No. 13-1211, 2015 WL 248559 (U.S. Jan. 21 2015).