Hana Financial, Inc. v. Hana Bank
190 L. Ed. 2d 800, 2015 U.S. LEXIS 754, 135 S. Ct. 907 (2015)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
In trademark law, the question of whether an earlier trademark may be 'tacked' onto a later one for priority purposes is a question of fact to be resolved by a jury, not a question of law for a judge.
Facts:
- In 1971, the entity that would become Hana Bank was established in Korea.
- In 1991, this entity changed its name to 'Hana Bank' and began using the name in Korea.
- In 1994, Hana Bank established a service called 'Hana Overseas Korean Club' and advertised it in the United States, including the name 'Hana Bank' in Korean and a logo.
- In 1994, Hana Financial, Inc. was established as a California corporation.
- In 1995, Hana Financial began using its name and an associated trademark in commerce in the United States.
- In 2000, Hana Bank changed the name of its service from 'Hana Overseas Korean Club' to 'Hana World Center.'
- In 2002, Hana Bank began operating a physical bank in the United States under the name 'Hana Bank.'
Procedural Posture:
- Hana Financial, Inc. sued Hana Bank and Hana Financial Group in U.S. District Court for trademark infringement.
- The District Court initially granted summary judgment to Hana Bank on the infringement claim.
- Hana Financial, as appellant, appealed to the U.S. Court of Appeals for the Ninth Circuit, which reversed the summary judgment and remanded the case for trial.
- On remand, the case was tried before a jury in the District Court, which returned a verdict in favor of Hana Bank.
- The District Court denied Hana Financial's post-trial motion for judgment as a matter of law.
- Hana Financial, as appellant, appealed again to the Ninth Circuit, which affirmed the District Court's judgment, holding that the tacking issue was a question for the jury.
- The U.S. Supreme Court granted certiorari to resolve a circuit split on whether tacking is a question of law or fact.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Is the determination of whether two trademarks are 'legal equivalents' that create the 'same, continuing commercial impression' for the purpose of the tacking doctrine a question of fact for a jury to decide?
Opinions:
Majority - Justice Sotomayor
Yes. Whether two trademarks are legal equivalents that may be tacked is a question of fact for the jury. The tacking inquiry turns on whether the two marks create the 'same, continuing commercial impression' from the perspective of an ordinary consumer. This determination is a fact-intensive assessment of how an ordinary person perceives the marks, a type of inquiry that falls comfortably within the traditional role and competence of a jury. The Court reasoned that juries have long been entrusted with making 'delicate assessments' based on the 'reasonable person' standard across various legal doctrines. Although tacking involves applying a legal standard to facts, such 'mixed questions of law and fact' are typically resolved by juries. The Court rejected arguments that allowing juries to decide would create legal uncertainty or was contrary to historical practice, noting that judges can still decide the issue on summary judgment or in bench trials where appropriate.
Analysis:
This decision resolves a circuit split, establishing a uniform national standard that entrusts the fact-intensive trademark tacking inquiry to juries. By classifying the issue as a question of fact based on consumer perception, the ruling reinforces the jury's role in trademark litigation and aligns the tacking doctrine with other areas of law that rely on a 'reasonable person' or 'ordinary consumer' standard. The decision may make it more difficult for parties to resolve tacking disputes at the summary judgment stage, potentially leading to more jury trials on the issue of trademark priority. It emphasizes that when the central question is about the impression made on an ordinary person, the collective judgment of a jury is preferred over that of a single judge.
