The Trademark Tacking Doctrine: What is it and Who Should Decide.

Originally posted 2018-11-19 11:21:53

By Diana Chan |

hana financial Hana-Bank-4-620x245In trademark law, the tacking doctrine allows an existing trademark owner to modify its mark without abandoning ownership of the original trademark.  The key to allowing the modification without abandonment or loss of priority is continuity. In other words, the mark must retain a common element that symbolizes a continuing commercial impression.  The modern test of continuity, or the “legal equivalents” rule, requires the mark to create the same commercial impression and cannot differ materially from one another.  Tacking cases generally involves three marks: the senior user’s mark, the junior user’s intervening mark, and the senior user’s revised mark. If the revised mark is able to be tacked, the senior user can claim the priority date of the earlier mark, allowing the senior user to defeat infringement claims of the junior user and to assert likelihood of confusion claims against the junior user’s mark as to the original and the revised mark.

In June 2014, the U.S. Supreme Court decided it would hear the case Hana Financial, Inc. v. Hana Bank, and on December 3, 2014, the Court heard oral arguments for both sides on the issue of whether or not tacking is question of law (for the judge to decide) or of fact (for the jury to decide). Hana Bank originally used the mark “HANA Overseas Korean Club” and “Hana Bank” (in Korean) in association with a service that allowed Koreans living in the U.S. to remit funds to family and friends in Korea. Hana Financial, Inc. was formed later and registered “Hana Financial” in connection with financial services, operating in Los Angeles. Hana Bank (in English) began operating in New York in 2002 and then announced that it would be entering the Los Angeles market in 2007. As a result, Hana Financial sued Hana Bank for trademark infringement in U.S. District Court in D.C. The case went to trial and a jury found in favor of Hana Bank.

Hana Financial ultimately wants tacking to be a question for the judge to decide, while Hana Bank wants the issue to be a question for the jury to decide.  Allowing a jury to decide would seem like the better result because the jury, as a group of people, better represents the average consumer and is in a better position to determine commercial impression. While it has been argued that a judge’s determination of whether the original and revised marks are “legal equivalents” will lend to more consistent results, trademarks are based heavily on consumer perception, making a jury more representative of consumers generally.

Why does it matter? The result of this decision could be a big blow to Hana Financial because if the Supreme Court affirms the lower court decisions, Hana Bank will have superior rights in the “Hana” trademark, which could mean cancellation of Hana Financial’s trademark, leading to major impacts on the business and branding.


Tacked or Tackled? SCOTUS to Decide Who Determines Trademark Tacking

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