Ninth Circuit Report

• Publication year: 2015
• Author: ANNE-MARIE DAD Miclean Gleason LLP

Ninth Circuit Report

ANNE-MARIE DAD Miclean Gleason LLP

On January 21, 2015, the Supreme Court issued a unanimous decision adopting the Ninth Circuit's standard for tacking.¹ In considering the issue "[w]hether, in a trademark infringement case, the issue of whether tacking was available to determine trademark priority was properly submitted to the jury"² the Supreme Court held that because the inquiry of whether tacking is available to determine trademark priority "operated from the perspective of an ordinary purchaser or consumer, a jury should make the determination."³ In other words, the jury—not the judge—should make the determination about whether tacking is available in a case. While the implications of this recent holding are yet unknown, if the decision is broadened past the narrow issue of trademark tacking, the implications can be widespread. This will especially be the case if the decision is applied to the likelihood of confusion analysis. This issue of the Ninth Circuit Report will center on the Ninth Circuit's opinion which the Supreme Court upheld.

BACKGROUND

The tacking doctrine allows a trademark owner to "tack" its use of an earlier trademark onto a later trademark "for priority purposes if the two marks are used in connection with the same goods or services and make the "same, continuing commercial impression" on members of the relevant purchasing public."⁴

In this case, Petitioner Hana Financial, Inc. and Respondent Hana Bank are both providers of financial services in the United States. Respondent was established in 1971, and evolved its name from "Korea Investment Finance Corporation" to "Hana bank" (sometimes concurrently using the name "Hana Overseas Korean Club") and then in 2000, "Hana World Center." Respondent began using the name "Hana Bank" in 2002 physically in the United States.⁵

Petitioner Hana Financial was established in 1994 as a California corporation. By 1996, Petitioner registered a federal trademark "for a pyramid logo with the name 'Hana Financial' to be used in connection with financial services."⁶

Ninth Circuit Decision

The Court began its opinion by recognizing that in Korean, the world "hana" denotes being "number one," "first," "top," or "unity."⁷ It then gave a background on the relationship between the parties. Apparently principles at Defendant Hana Bank and Plaintiff Hana Financial had a close relationship—Hana Financial's former CEO (Charles Kim) would refer to Hana Bank's Chairman (Seoung-Yu Kim) as "big brother."⁸ Indeed, in 1991, Hana Bank's Chairman and Hana Financial's current CEO both worked at an American bank and had discussed with Hana Bank's former CEO the possibility of a joint venture together.⁹ The joint venture never eventuated.

In 1994, Hana Bank established the "Hana Overseas Korean Club to target Korean Americans living in major cities.¹⁰ One month later, Hana Financial incorporated to engage in "lawful acts 'other than the banking business.'"¹¹ Hana Financial obtained a...