US Supreme Court says juries should handle ‘trademark tacking’
The US Supreme Court has resolved one of two hotly awaited trademark disputes, ruling that cases surrounding ‘trademark tacking’ should be decided by a jury.
The court was ruling on the Hana Financial v Hana Bank case, which centres on a practice known as ‘tacking’, where a party can tack the use of an older trademark onto a newer mark in order to determine priority.
Supreme justices were asked to clarify who should decide if a trademark has been tacked—either a jury, meaning it would be a factual question, or a judge, implying it would a legal one.
In a unanimous decision on Tuesday (January 22), the court’s nine judges said the issue was factual and should therefore be decided by juries.
In the court’s opinion, Justice Sotomayor wrote: “Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury.”
The dispute was triggered by banking company Hana Financial suing Korea-based Hana Bank over the latter’s use of the trademark ‘Hana Bank’.
Despite the Korean company using the mark after Hana Financial, Hana Bank claimed that it actually had priority over Hana Financial due to tacking.
Hana Bank also had earlier registrations for variations of the mark, including ‘Hana Overseas Korean Club’ and ‘Hana World Center’.
A jury at the US District Court for the Central District of California sided with Hana Bank in 2008, as did the US Court of Appeals for the Ninth Circuit in 2013.
Hana Financial then appealed to the Supreme Court, which first heard arguments in December last year.
Timothy Kelly, partner at law firm Fitzpatrick, Cella, Harper & Scinto in New York, said the court’s decision is grounded in the “fundamental precept” that consumers should be protected from confusion.
“As such, consumers ought to be the focus and the ones to decide whether two marks create a similar enough commercial impression to be tacked,” Kelly told WIPR.
He added that the court’s decision “seems likely” to mean that surveys will be a more frequently used tool when the tacking issue is litigated.
Anderson Duff, associate at law firm Wolf Greenfield, in Boston, said: “What remains to be seen is whether this opinion will affect a similar circuit split over the existence of a likelihood of confusion between two marks, which is central to trademark jurisprudence. In most federal circuits, this crucial issue is considered a question of fact.
“While tacking is an important doctrine, it has traditionally not been invoked all that frequently, whereas the question of whether likelihood of confusion exists is at the core of trademark infringement cases.”
The Hana case was one of two hotly anticipated trademark cases that the Supreme Court was due to rule on.
The other, B&B Hardware v Hargis Industries, centres on the level of precedent that is put on findings of confusion by the US Patent and Trademark Office’s Trademark Trial and Appeal Board.
