Supreme Court to Decide if Trademark "Tacking" is properly Determined by Judge or Jury

The U.S. Supreme Court this Monday agreed to hear a case on trademark tacking to resolve the current circuit split. InHana Financial, Inc. v. Hana Bank,the high court will address whether trademark tacking is an issue of law or an issue of fact for a jury to decide.

The doctrine of trademark "tacking" allows a trademark owner to "tack" the use of an older mark onto a new mark for purposes of determining priority, allowing the owner to make slight modifications to a mark over time without losing its date of first use. Trademark tacking is available where the modified marks are "legal equivalents."

Appeals courts are split as to who should decide this question. The Federal Circuit and the Sixth Circuit consider the issue of tacking a question of law; however, the Ninth Circuit considers it a question of fact for the jury.

InHana Financial, a jury in California found that "Hana Bank" was similar enough to the defendant's previously used mark "Hana Overseas Korean Club." The district judge thus ruled that tacking was appropriate, and that the bank's date of first use of "Hana Bank" extended back to when it first used "Hana Overseas Korean Club." Because the bank could tack its use of "Hana Bank" to its earlier priority date for "Hana Overseas Korean Club," the Court held that the bank did not infringe the plaintiff's, Hana Financial's, trademark. The Ninth Circuit affirmed the ruling, finding that the jurors "could reasonably conclude that ... there were no material differences between the marks." But the court noted that "the words 'Hana Overseas Korean Club,' ... and 'Hana Bank' seem aurally and visually distinguishable," stating that other circuits that consider tacking a question of law "might reach a different conclusion on these facts."

The Supreme Court's answer to the "judge-or-jury" question in tacking could have broader implications as the current circuit split over tacking parallels the circuit split as to whether a "likelihood of confusion" is an issue of fact or law.