Hana Fin., Inc. v. Hana Bank

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks, Infringement; Priority; Tacking
  • Date Filed: 11-22-2013
  • Case #: No. 11-56678
  • Judge(s)/Court Below: United States Court of Appeals for the Ninth Circuit
  • LexisNexis Citation: 2013 U.S. App. LEXIS 23507
  • Westlaw Citation: 2013 WL 6124588
  • Full Text Opinion

The doctrine of tacking to establish trademark priority is applicable to only an "exceedingly narrow" set of circumstances. This, however, is one of them.

The Korean Investment Finance Corporation adopted the name Hana Bank (hereafter “HB”) in 1991. HB first began offering services in the United States in May 1994 under the title "Hana Overseas Korean Club," and later as “Hana World Center” and “Hana Bank.” “Hana” is the phonetic rendering of the Korean word for “first” or “top.” In August 1994, Hana Financial, Inc. (HFI) was incorporated in California. HB and HFI were on friendly terms and did not raise any trademark infringement claims in part because HFI provided only “factoring” services and there was little overlap between HB and HFI services. In 2001, HB sought to register its mark, but could not register in part because of HFI’s mark. The two companies entered into negotiations over the marks at that point, but failed to reach an agreement. In 2007, HFI filed a trademark infringement claim alleging that HB’s use of the “Hana Bank” mark in advertisements for financial services infringed on HFI’s “Hana Financial” mark. HB, in response, sought to have HFI’s mark canceled based on HB’s prior use and superior rights. In 2008, the district court granted summary judgment in favor of HFI on HB’s mark cancellation counterclaim, but also granted summary judgment in favor of HB’s priority claim. Both parties appealed. In 2010, the case was remanded for trial because HB’s advertisements establishing priority were “relevant” but not dispositive. In 2011, the case was presented to a jury who ruled in favor of HB. HFI appealed, arguing that the district court’s jury instruction on the issue of “tacking” was both flawed and legally inapplicable to HB’s mark because HB could not “tack” its use of “Hana Bank” to its 1994 use of the “Hana Overseas Korean Club” mark. “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 generally would regard them as essentially the same.’” The doctrine is, however, very limited and the fact that a subsequent mark incorporates a portion of a previous mark is not sufficient to establish tacking. Because the case was put to a jury, the court on appeal must view all evidence and inferences in favor of jury’s ruling. Thus, though the use of “Hana” in both marks does not establish tacking as a matter of law, the court AFFIRMED the jury’s finding of tacking in this case and HB’s priority.

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