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Trademark tacking is a jury question, a unanimous U.S. Supreme Court said in Hana Financial, Inc. v. Hana Bank, resolving a circuit split about whether it's the judge or the jury who makes that determination.
The High Court upheld a decision of the Ninth Circuit (take a picture; it'll last longer) finding that it was the jury that should decide whether facts exist to support trademark tacking. The Ninth Circuit, like the trial court, found in favor of Hana Bank.
Tack It On
First off, if you're afraid to admit that you don't know what "trademark tacking" is, just nod your head and keep reading. Tacking allows a trademark holder to argue that, even though he changed a trademark, it's still recognizable to consumers as the original trademark, so the priority date of the new mark should actually be the priority date of the old mark.
Hana Bank began life as Korea Investment Finance Corporation in Korea in 1971. It changed its name to Hana Bank in 1991, then moved overseas in 1994 under the name Hana Overseas Korean Club. In 2002, it changed its name again to Hana Bank.
Just one problem: A California corporation called Hana Bank was established in 1994. Hana Financial sued Hana Bank in 2002 for infringement of the "Hana Financial" mark. A jury returned a verdict in favor of Hana Bank (the Korean one).
Then Send It to the Jury
The Supreme Court granted cert. because there was a circuit split. The Ninth, at least, says that tacking is a question of fact and as such, should be submitted to a jury. The Sixth and Federal circuits, on the other hand, said tacking was a question of law.
The Court easily decided that the jury should handle this one, partially because tacking, like many trademark issues, depends on "how an ordinary person or community would make an assessment." In this case, the jury was charged with deciding whether the old trademark and the new trademark "create[d] the same, continuing commercial impression" and should be tacked together to determine the priority date.
That's not to say, the Court said, dismissing Hana Financial's concerns, that judges won't play a part sometimes. On motions for summary judgment, or in bench trials, clearly the judge will be finding facts. When a party demands a jury trial, however, juries will do what juries have always done: find facts and apply law.
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