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SUPREME COURT OF THE UNITED STATES
HANA FINANCIAL, INC., PETITIONER v.
on writ of certiorari to the united states court of appeals for
the ninth circuit
[January 21, 2015]
Justice Sotomayor delivered the opinion of the Court.
Rights in a trademark are determined by the date of the
markâ€™s first use in commerce. The party who
first uses a mark in commerce is said to have priority over other
users. Recognizing that trademark users ought to be permitted to
make certain modifications to their marks over time without losing
priority, lower courts have provided that, in limited
circumstances, a party may clothe a new mark with the priority
position of an older mark. This doctrine is called
â€œtacking,â€ and lower courts have
found tacking to be available when the original and revised marks
are â€œlegal equivalentsâ€ in that they
create the same, continuing commercial impression. The question
presented here is whether a judge or a jury should determine
whether tacking is available in a given case. Because the tacking
inquiry operates from the perspective of an ordinary purchaser or
consumer, we hold that a jury should make this determination.
Petitioner, Hana Financial, and respondent Hana Bank, a
subsidiary of respondent Hana Financial Group, both provide
financial services to individuals in the United States. Hana Bank
(hereinafter respondent) was established in 1971 as a Korean entity
called Korea Investment Finance Corporation. In 1991, that entity
changed its name to â€œHana Bankâ€ and
began using this name in Korea. In 1994, it established a service
called Hana Overseas Korean Club to provide financial services to
Korean expatriates, and specifically advertised that service in the
United States. Those advertisements used the name
â€œHana Overseas Korean Clubâ€ in both
English and Korean, and included the name â€œHana
Bankâ€ in Korean and respondentâ€™s
â€œdancing manâ€ logo. See App. 206. In
2000, respondent changed the name of the Hana Overseas Ko-rean Club
to â€œHana World Center.â€ In 2002,
respondent began operating a bank in the United States under the
name â€œHana Bank.â€ This enterprise
amounted to respondentâ€™s first physical presence
in the United States.
Petitioner was established in 1994 as a California corporation
called Hana Financial. It began using that name and an associated
trademark in commerce in 1995. In 1996, it obtained a federal
trademark registration for a pyramid logo with the name
â€œHana Financialâ€ for use in
connection with financial services.
In 2007, petitioner sued respondent, alleging infringement of
its â€œHana Financialâ€ mark. As
relevant here, respondent denied infringement by invoking the
tacking doctrine and claiming that it had priority. The District
Court initially granted summary judgment to respondent on the
infringement claim, but the Court of Appeals for the Ninth Circuit
reversed, holding that there were genuine issues of material fact
as to priority. On remand, the infringement claim was tried before
a jury. The District Court adopted in substantial part the jury
instruction proposed by petitioner, and, without objection from
petitioner, instructed the jury as follows:
â€œA party may claim priority in a mark based
on the first use date of a similar but technically distinct mark
where the previously used mark is the legal equivalent of the mark
in question or indistinguish-able therefrom such that consumers
consider both as the same mark. This is called
â€˜tacking.â€™ The marks must
create the same, continuing commercial impression, and the later
mark should not materially differ from or alter the character of
the mark attemptedto be tacked.â€ App. 173; see
at 140 (proposedinstruction).
The jury returned a verdict in favor of respondent, and the
District Court denied petitionerâ€™s motion for
judgment as a matter of law.
The Court of Appeals for the Ninth Circuit affirmed. The court
explained that, although tacking applies only in
circumstances,â€ 735 F.Â 3d 1158, 1160 (2013)
(internal quotation marks omitted), it
â€œÂ â€˜requires a
inquiryâ€™Â â€ that is
â€œreserved for the jury,â€
(quoting One Industries, LLC
Oâ€™Neal Distributing, Inc.
F.Â 3d 1154, 1160 (CA9 2009)). The court acknowledged,
however, that whether tacking should be decided by juries or judges
â€œis the subject of a circuit split.â€
735 F.Â 3d, at 1164, n.Â 5 (noting that the
Federal and Sixth Circuits â€œevaluate tacking as
a question of lawâ€); see Van Dyne-Crotty, Inc.
v. Wear-Guard Corp.
, 926 F.Â 2d 1156, 1159 (CA
Fed. 1991); Data Concepts, Inc.
v. Digital Consulting,
, 150 F.Â 3d 620, 623 (CA6 1998).
We granted certiorari, 573 U.Â S. ___ (2014), and now
As discussed above, the general rule adopted by lower courts has
been that two marks may be tacked when the original and revised
marks are â€œlegal equivalents.â€ This
term refers to two marks that â€œcreate the same,
continuing commercial impressionâ€ so that consumers
â€œconsider both as the same
] Van Dyne-Crotty,
, 926 F.Â 2d, at 1159 (internal quotation marks
omitted); see, e.g., George & Co., LLC
Imagination Entertainment Ltd.
, 575 F. 3d 383, 402 (CA4
2009); Brookfield Communications, Inc.
v. West Coast
, 174 F. 3d 1036,
1047â€“1048 (CA9 1999); Data Concepts,
, 150 F.Â 3d, at 623. â€œThe
commercial impression that a mark conveys must be viewed through
the eyes of a consumer.â€ DuoProSS Medi-tech
v. Inviro Medical Devices, Ltd.
, 695 F. 3d 1247,
1253 (CA Fed. 2012); see 3 J. McCarthy, Trademarks and Unfair
Competition Â§17:26, p. 17â€“71 (4th
impression,â€™ like most issues in trademark law,
should be determined from the perspective of the ordinary purchaser
of these kinds of goods or servicesâ€).
Application of a test that relies upon an ordinary
consumerâ€™s understanding of the impression that
a mark conveys falls comfortably within the ken of a jury. Indeed,
we have long recognized across a variety of doctrinal contexts
that, when the relevant question is how an ordinary person or
community would make an assessment, the jury is generally the
decisionmaker that ought to provide the fact-intensive answer. See,
e.g., United States
,515 U.Â S.
506,512 (1995) (recognizing that
assessments of the inferences a â€˜reasonable
[decisionmaker]â€™ would draw . . . [are]
peculiarly one[s] for the trier of
factâ€™Â â€ (quoting TSC
v. Northway, Inc.
,426 U.Â S.
438,450 (1976); first alteration in original); id.,
n.Â 12 (observing that the jury has a
â€œunique competence in applying the
v. United States
U. S. 87â€“105 (1974) (emphasizing
â€œthe ability of the juror to ascertain the sense
of the â€˜average
personâ€™Â â€ by drawing
upon â€œhis own knowledge of the views of the
average person in thecommunity or vicinage from which he
comesâ€ and his â€œknowledge of the
propensities of a
personâ€); Railroad Co.
, 17 Wall.
657, 664 (1874) (â€œIt is assumed that twelve men
know more of the common affairs of life than does one man, [and]
that they can draw wiser and safer conclusions from admitted facts
thus occurring than can a single judgeâ€).
This is certainly not to say that a judge may never determine
whether two marks may be tacked. If the facts warrant it, a judge
may decide a tacking question on a motion for summary judgment or
for judgment as a matter of law. See Fed. Rules Civ. Proc. 50,
56(a). And if the parties have opted to try their case before a
judge, the judge may of course decide a tacking question in his or
her factfinding capacity. We hold only that, when a jury trial has
been requested and when the facts do not warrant entry of summary
judgment or judgment as a matter of law, the question whether
tacking is warranted must be decided by a jury.
Attempting to overcome our conclusion, petitioner offers four
reasons why, in its view, tacking is a question of law that should
be resolved by a judge. None persuades us.
Petitioner first observes that the â€œlegal
equivalentsâ€ test involves the application of a legal
standard. See Brief for Petitioner 20. True enough, but
â€œthe application-of-legal-standard-to-fact sort
of question . . . , commonly called a â€˜mixed
question of law and fact,â€™ has typically been
resolved by juries.â€ Gaudin
, 515 U. S., at 512;
, at 514 (â€œ[T]he
juryâ€™s constitutional responsibility is not
merely to determine the facts, but to apply the law to those facts
and draw the ultimate conclusion . . .â€); Miller
,474 U. S. 104,113 (1985) (â€œ[A]n
issue does not lose its factual character merely because its
resolution is dispositive of the ultimate . . .
questionâ€). The â€œmixedâ€
analysis that takes place during the tacking inquiry is no
different. And insofar as petitioner is concerned that a jury may
improperly apply the relevant legal standard, the solution is to
craft careful jury instructions that make that standard clear.
Here, however, petitioner can hardly criticize the instruction the
District Court gave the jury, as it was essentially the instruction
Second, petitioner argues that tacking determinations will
â€œcreate new law that will guide future tacking
disputesâ€â€”a task reserved for
judges. Brief for Petitioner 21. It is not at all clear, however,
why a tacking determination in a particular case will
â€œcreate new lawâ€ any more than will
a jury verdict in a tort case, a contract dispute, or a criminal
proceeding. Petitioner insists that tacking questions
â€œhave to beâ€ resolved by comparing
two marks in a given case â€œagainst those
addressed in other tacking cases,â€ id.,
but we do not agree. Of course, in deciding summary judgment
motions, or in making rulings in bench trials, judges may look to
past cases holding that trademark owners either were or were not
entitled to tacking as a matter of law. But petitioner offers no
support for the claim that tacking cases â€œhave
to beâ€ resolved by reliance on precedent. Indeed, in
many of the cases petitioner cites in support of this argument, the
courts in question relied on precedent only to define the relevant
legal standard. See, e.g., Specht
, 758 F.Â Supp. 2d 570,
583â€“585 (ND Ill. 2010),
affâ€™d, 747 F.Â 3d 929 (CA7 2014);
Childrenâ€™s Legal Servs. PLLC
, 2008 WL 1901245, *1â€“*2 (ED Mich.,
Apr. 25, 2008), affÂ â€™d
subÂ nom. Childrenâ€™s Legal Servs.,
P. L. L. C.
v. Saiontz, Kirk & Miles, P. A.
, 2009 WL
1868809 (CA6, June 18, 2009).[2
Third, and related, petitioner worries that the predict-ability
required for a functioning trademark system will be absent if
tacking questions are assigned to juries. See Brief for Petitioner
25â€“27. But, again, the same could be said about
the tort, contract, and criminal justice systems: In all of these
areas, juries answer often-dispositive fac-tual questions or make
dispositive applications of legal standards to facts. The fact that
another jury, hearing the same case, might reach a different
conclusion may make the system
â€œunpredictable,â€ but it has never
stopped us from employing juries in these analogous contexts.
Petitioner has offered no reason why trademark tacking ought to be
treated differently. Moreover, decisionmaking in fact-intensive
disputes necessarily requires judgment calls. Regardless of whether
those judgment calls are made by juries or judges, they necessarily
involve some degree of uncertainty, particularly when they have to
do with how reasonable persons would behave.
Finally, petitioner argues that, as a historical matter, judges
have resolved tacking disputes. See Brief for Petitioner
30â€“35. But petitioner relies on cases in which
judges have resolved tacking disputes in bench trials, at summary
judgment, or the like. See, e.g., Drexel Enterprises,
, 312 F.Â 2d 525, 526 (CA10
1962) (â€œ[This action] was tried without a
juryâ€); Perfectform Corp.
, 256 F.Â 2d 736, 738 (CA3 1958)
(â€œThe district court dismissed the
complaintâ€); John Morrell & Co.
, 20 F.Â 2d 713 (CA9 1927)
(â€œIn the court below, there was a dismissal of
both the bill and of defendantâ€™s
counterclaimâ€); Beech-Nut Packing Co.
, 299 F. 834, 835 (NJ 1924) (equitable claims
tried solely before a judge). As we have noted, it is undisputed
that judges may resolve tacking disputes in those contexts. But
recognizing as much does not gainsay our conclusion that, when a
jury is to be empaneled and when the facts warrant neither summary
judgment nor judgment as a matter of law, tacking is a question for
The Ninth Circuit correctly held that whether two marks may be
tacked for purposes of determining priority is a question for the
jury. Accordingly, the judgment of the Ninth Circuit is
It is so ordered.