Hana Financial v. Hana Bank

Summarized by:

  • Court: 9th Circuit Court of Appeals Archives
  • Area(s) of Law: Trademarks
  • Date Filed: 11-22-2013
  • Case #: 11/22/2013
  • Judge(s)/Court Below: Circuit Court Judge Callahan for the Court; Circuit Court Judges Tallman and Clifton
  • Full Text Opinion

Tacking may be found where a properly-instructed jury makes a determination of fact regarding the narrow tacking doctrine that the reasonable consumer could have reasonably concluded that the user of a mark had a consistent, continuous commercial impression of the services defendant offered and their origin.

Hana Bank (the "Bank") is a Korean entity established in 1971. Hana Financial, Inc. ("HFI") is a California corporation incorporated in 1994. The chairmen and CEOs of the company know each other and meet several times a year. HFI brought suit against Hana Bank when the Bank decided to extend its services to the US. HFI argued that the Bank’s use of its mark infringed on HFI’s mark because its use of the word “Hana” in connection with financial services would likely cause confusion. Specifically, HFI argued that the marks used by the Bank in Korea and then in the US were not virtually identical for tacking purposes so trademark priority was improper and secondly that the Bank had abandoned the mark in 1999 or 2000, the court denied the motion. The district court granted the Bank’s motion for summary judgment on trademark priority. The Ninth Circuit held that a trademark user may “tack” the date of the user’s first use of an earlier mark onto a subsequent mark to establish priority where the “two marks are so similar that consumers would regard them as essentially the same.” Here, the Bank continued to target Korean-speaking American consumers, their distinctive dancing man logo did not change, and their application forms contained similar information. All of these facts could lead a reasonable jury to conclude that ordinary purchasers of the financial services likely had a consistent, continuous commercial impression of the services the Bank offered and their origin. To prove the abandonment argument, HFI must show the discontinuance of trademark use and intent not to resume such use. HFI’s abandonment argument fails because the Bank maintained customers in the US from 1994 through the present date, never showing intent to abandon the mark. AFFIRMED.

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