July 1, 2014
Westlaw Topical Highlights for Intellectual Property provides summaries of significant federal court decisions and legislative and administrative activities affecting Intellectual Property law. A Westlaw subscription is required to access the documents linked from this page.
Priority: Tacking of trademark use as fact issue for jury, not issue of law for court—Certiorari Granted Hana Financial, Inc. v. Hana Bank, 2014 WL 1371915 (U.S.). The United States Supreme Court has granted a certiorari petition posing the question whether a jury determines as a fact issue, or instead the court determines as an issue of law, whether the use of an older trademark may be tacked to the use of a newer one, thereby allowing the trademark holder to make slight modifications to a mark over time, without losing priority, which was earned by being the first to use the mark.
The petitioner, a registered trademark holder, brought a trademark infringement action against the respondent, alleging that the respondent’s use of the mark “Hana Bank” infringed on its “Hana Financial” mark. The district court entered judgment on the jury’s verdict for the respondent and denied the petitioner’s subsequent motion for judgment as a matter of law.
On appeal, a Ninth Circuit panel held that an issue of fact for the jury had been presented, regarding whether the respondent’s “Hana Overseas Korean Club”, “Hana World Center” and “Hana Bank” marks were legal equivalents that conveyed the same commercial impression and possessed the same connotation in context, as would support tacking when calculating priority of use for the respondent.
The panel noted a circuit split. The Federal Circuit and the Sixth Circuit evaluate tacking as a question of law, consistent with their view that the analogous trademark issue of likelihood of consumer confusion is a question of law. But Ninth Circuit precedent has treated likelihood of confusion as a question of fact, and has determined that tacking presents a question of fact.
“Although the other circuits have not decided the issue yet, the district courts in circuits where likelihood of confusion is a question of fact also treat tacking as a question of fact,” the Ninth Circuit panel wrote. (Case below: Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158 (C.A.9–Cal. 2013).) 2014 WL 1371915. (The full-text of the rest of the Topical Highlights is available within Westlaw Next, subscription required).