U.S. Supreme Court Rules Trademark Tacking to be Decided by Jury
On Wednesday, January 21, 2015, the Supreme Court issued its decision in Hana Financial, Inc. v. Hana Bank , No. 13-1211, holding that trademark “tacking” is a question to be decided by a jury.
“Tacking” is a principle in trademark law that permits trademark owners to make changes to an existing mark while retaining the priority date of the original mark. A trademark owner can rely on tacking to establish priority only if the new version of the mark is the “legal equivalent” of the older version. Priority is an important concept in a trademark infringement claim because a trademark plaintiff must demonstrate that its trademark rights predate the rights of the defendant.
In this case, the district court tasked the jury with determining whether Respondent Hana Bank could establish priority over Petitioner Hana Financial by tacking its use of prior marks, Hana World Center and Hana Overseas Korean Club, to its current mark, Hana Bank. The jury found in favor of Respondent Hana Bank. Petitioner moved for judgment as a matter of law, which the district court denied.
The Ninth Circuit affirmed the district court’s decision, noting that the question of tacking is a “highly fact-sensitive inquiry” to be resolved by juries. However, other circuits, such as the Federal Circuit and Sixth Circuit, treated the question of tacking as a question of law to be decided by the judge. The Supreme Court granted certiorari to resolve this circuit split.
The Supreme Court unanimously affirmed the judgment of the Ninth Circuit, holding that tacking is a question for the jury. Writing for the Court, Justice Sotomayer stated that two marks are legal equivalents when they “create the same, continuing commercial impression” so that consumers consider both versions as the same mark. The “commercial impression” of a mark is determined from the perspective of an ordinary consumer’s understanding of the impression that a mark conveys. Accordingly, the Court held that the question of whether tacking is warranted must be decided by a jury.
If you have any questions about the Court’s decision or how it may impact your business, please contact one of our trademark attorneys.
About the authors
Michelle Miller Mikol is a shareholder in Brinks' Washington DC office. Her practice focuses on all aspects of trademark, unfair competition, false advertising and copyright law, both in the U.S. and abroad. Michelle can be contacted at (202) 296-6911 or via email.
Andrew J. Avsec is a senior associate in Brinks' Chicago office focusing on all aspects of domestic and international trademarks, trade dress, advertising, copyright and unfair competition law. Andrew can be reached at (312) 840-3260 or via email.