Willamette Law Online

United States Supreme Court Certiorari Granted


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Hana Financial, Inc. v. Hana Bank, et

Summarized by: 

Date Filed: June 23, 2014
Case #: 13-1211
Court Below: 735 F.3d 1158 (9th Cir. 2013)
Full Text Opinion: http://cdn.ca9.uscourts.gov/datastore/opinions/2013/11/22/11-56678.pdf

Trademarks: Whether trademark priority under the tacking doctrine should be considered a matter of fact or a matter of law.

Respondent , a Korean Bank, specializes in banking services to Korean expatriates and Korean-Americans. Petitioner is a California corporation that 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, and affirmed Petitioner’s motion for summary judgement. On remand Petitioner filed motion in limine, and later motion for judgement as a matter of law to exclude exhibits presented by Respondent; the District court denied Petitioner’s motions. 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 argues in their petition for certiorari that the priority as a question of fact will lead to gamesmanship and inconsistent decisions in litigation under the Lanham Act 28 USC § 1931. The 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.