Supreme Court Resolves Circuit Split: Jury Should Determine Whether Tacking is Available | Practical Law

Supreme Court Resolves Circuit Split: Jury Should Determine Whether Tacking is Available | Practical Law

In Hana Financial, Inc. v. Hana Bank, the US Supreme Court resolved a circuit split by holding that a tacking determination, in a situation where a jury trial has been requested and the facts do not warrant entry of summary judgment or judgment as a matter of law, is a question for a jury.

Supreme Court Resolves Circuit Split: Jury Should Determine Whether Tacking is Available

by Practical Law Intellectual Property & Technology
Published on 22 Jan 2015 • USA (National/Federal)
In Hana Financial, Inc. v. Hana Bank, the US Supreme Court resolved a circuit split by holding that a tacking determination, in a situation where a jury trial has been requested and the facts do not warrant entry of summary judgment or judgment as a matter of law, is a question for a jury.
On January 21, 2015, in Hana Financial Inc. v. Hana Bank, the US Supreme Court held that trademark tacking is a question for a jury where a jury trial has been requested and neither summary judgment nor judgment as a matter of law is appropriate (No. 13-1211, (S. Ct. Jan. 21, 2015)). The Court thus resolved a circuit split by affirming the US Court of Appeals for the Ninth Circuit.
In 2007, Hana Financial Inc. (HFI) sued Hana Bank (HB), alleging that HB's HANA BANK mark infringed HFI's HANA FINANCIAL mark. HFI's infringement claim was tried to a jury. HB claimed that its mark was entitled to an earlier priority date than HFI's, based on HB's earlier use of a similar mark. The jury was instructed that HB could be entitled to an earlier priority date if its previously-used mark is the legal equivalent of its allegedly-infringing mark. This is known as trademark tacking. The jury determined that tacking applied, and returned a verdict for HB.
On appeal, the Ninth Circuit affirmed, explaining that trademark tacking is based on a highly fact-sensitive inquiry that was properly made by the jury. (For more information on the Ninth Circuit's decision, see Legal Update, Hana Bank Meets Exceptionally Narrow Circumstances to Establish Trademark Priority Through Tacking: Ninth Circuit.)
The Supreme Court granted certiorari to resolve a circuit split on whether tacking should be decided by juries or the court. The Supreme Court explained that two marks may be tacked if they are legal equivalents, which occurs if, from the consumer's perspective, the marks create the same, continuing commercial impression. It further noted that juries are well suited to make this determination citing other contexts where the relevant question is how an ordinary person or community would make an assessment.
Based on this, the Court unanimously held that when a jury trial has been requested and the facts do not warrant entry of summary judgment or judgment as a matter of law, the question of whether two marks may be tacked must be decided by a jury.