Hana Financial, Inc, v. Hana Bank, et. al.

Summarized by:

  • Court: United States Supreme Court
  • Area(s) of Law: Trademarks
  • Date Filed: January 21, 2015
  • Case #: 13–1211
  • Judge(s)/Court Below: Sotomayor, J., delivered the opinion for a unanimous Court
  • Full Text Opinion

Trademark priority should be considered a factual question to be determined by a jury.

Respondent is a Korean Bank which specializes in banking services to Korean expatriates and Korean-Americans. Petitioner is a California corporation which provides non-banking financial services to Korean expatriates and Korean-Americans, and is operated by a former employee of Respondent. Both Petitioner and Respondent use “Hana” in their respective entity names and use a similar logo.

Petitioner sued for infringement in district court, and Respondent countersued. The district court granted Respondent’s motion for summary judgement on trademark priority, and Petitioner’s motion for summary judgement on Respondent’s cancellation counterclaim. Both parties appealed. The Ninth Circuit Court of Appeals remanded the trademark priority claim for trial. The district court found that Petitioner's claims were barred by laches and unclean hands. Petitioner appealed again, and the Ninth Circuit Court of Appeals reviewed decision to deny Petitioner’s motions de novo, and affirmed the district court’s decision.

Petitioner petitioned and the United States Supreme Court granted certiorari to address the issue of whether the tacking doctrine to determine trademark priority is a matter of fact, or a matter of law. The Court affirmed the Ninth Circuit Court of Appeals, holding that the tacking doctrine is a question of fact for the jury. The Court reasoned that although a jury trial on questions of fact may lead to to gamesmanship and inconsistent decisions, the fact that another jury, hearing the same case, might reach a different conclusion has never stopped courts from employing juries. Affirmed.

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