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13-1211 HANA FINANCIAL, INC. V. HANA BANK DECISION BELOW: 735 F.3d 1158 CERT. GRANTED 6/23/2014 QUESTION PRESENTED: To own a trademark, one must be the first to use it; the first to use a mark has "priority." The trademark "tacking" doctrine permits a party to "tack" the use of an older mark onto a new mark for purposes of determining priority, allowing one to make slight modifications to a mark over time without losing priority. Trademark tacking is available where the two marks are "legal equivalents." The question presented, which has divided the courts of appeals and determined the outcome in this case, is: Whether the jury or the court determines whether use of an older mark may be tacked to a newer one? LOWER COURT CASE NUMBER: 11-56678
The U.S. Supreme Court case Hana Financial, Inc. v. Hana Bank revolved around the issue of trademark infringement and tacking doctrine in 2014. The petitioner, Hana Financial, sued the respondent, Hana Bank for trademark infringement claiming that they had been using their name since 1995 while the latter started using it only from 2002 onwards in US markets. However, Hana Bank argued that under 'tacking' doctrine - a legal principle allowing a company to make minor alterations to its logo or brand without losing its original first-use date - they have been operating under similar names since 1991 internationally and thus hold seniority rights over this name in US as well despite starting operations later than plaintiff here. The main question before court was whether application of tacking should be decided by jury (fact-based) or judge (law-based). The Supreme Court unanimously ruled that such decisions are fact-sensitive and hence should be determined by juries rather than judges unless parties stipulate otherwise; thereby affirming Ninth Circuit's decision favoring defendant i.e., 'HANA BANK'.
In the case of HANA Financial, Inc. v. Hana Bank, there was no dissenting opinion recorded as the decision was unanimous. The Supreme Court held that whether two trademarks may be tacked for purposes of determining priority is a question for jury determination because it involves an ordinary consumer's understanding of the impression that a mark conveys.