by Paul Devinsky

Hana Financial, Inc. v. Hana Bank & Hana Financial Group

In trademark law “tacking” is a practice whereby an applicant for registration can establish an earlier priority date by adding the period of use of an older mark to the period of use of a newer mark.  The U.S. Court of Appeals for the Ninth Circuit concluded that the practice is appropriate only where the two marks are so similar that consumers would generally regard them as the same mark.  In the present case the 9th Circuit noted that tacking is usually a fact intensive issue left to the jury unless the evidence is so strong that only one legal conclusion is possible.  The U.S. Supreme Court has now granted certiorari to determine whether trademark tacking is an issue of law or an issue of fact (for the jury).  Hana Financial, Inc. v. Hana Bank & Hana Financial Group, Case No. 13-1211 (Supr. Ct., June 23, 2014).

The question presented in the petition for certiorari is the following:

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?

© 2014 McDermott Will & Emery