US Supreme Court to consider key trademark cases

The US Supreme Court is in the midst of considering two hotly anticipated trademark cases that could provide guidance on future litigation surrounding likelihood of confusion and alterations to existing marks.

Oral arguments in the B&B Hardware v Hargis Industries (B&B) case were heard yesterday (December 2), while the Hana Financial v Hana Bank (Hana) arguments are set to be heard today (December 3).

The cases should provide guidance on whether the Trademark Trial and Appeal Board (TTAB) should be able to decide on likelihood of confusion, and whether trademark ‘tacking’ should be decided by judge or jury.

Set to be heard today, the Hana case will discuss the issue of trademark tacking, a practice that allows a party to ‘tack’ the use of an older trademark onto a new mark to determine priority.

In this case, petitioner Hana Financial, a banking company, has a registered trademark for ‘Hana Financial’. The company sued Korea-based Hana Bank for its use of the mark ‘Hana Bank’.

Although Hana Bank started using its mark after Hana Financial, Hana Bank claimed that it actually had priority due to trademark tacking.

Hana Bank said that, while it first used its mark several years after Hana Financial, it actually had priority because it has an earlier registration for the mark ‘Hana Overseas Korean Club’, which later became ‘Hana World Center’, before becoming the current ‘Hana Bank’ mark.

At trial, the US District Court for the Central District of California submitted the dispute to the jury, asking it to determine whether Hana Bank’s marks are “legal equivalents”.

The jury sided with Hana Bank, and the US Court of Appeals for the Ninth Circuit upheld the decision. Hana Financial then appealed to the Supreme Court, which will consider whether such disputes should be heard by a judge or jury.

Heard yesterday, the B&B case centres on two companies that manufacture sealing fasteners.

California-based B&B Hardware owns a trademark for the term ‘Sealtight’, while Hargis used and sought to register the trademark ‘Sealtite’.

B&B filed an opposition to Hargis’s application at the TTAB and, during the opposition proceeding, Hargis admitted that there had been incidents of customer confusion between the two marks. B&B then initiated a separate infringement action.