한국어 번역문은 이곳을 클릭해주시기 바랍니다.

Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank.  574 U.S. ___ (2015).  Justice Sotomayor, writing for a unanimous court, affirmed a Ninth Circuit ruling that the doctrine of trademark tacking presents a question of fact appropriate for jury determination.  735 F.3d 1158 (9th Cir. 2013).  This was the first substantive trademark decision by the U.S. Supreme Court in nearly a decade.  Partner Carlo Van den Bosch argued the case before the Supreme Court on behalf of client Hana Bank, who he has represented since the initial filing in 2007 in California federal court.

The Supreme Court resolved a Circuit split on the issue of tacking, which arose when the Federal Circuit and Sixth Circuit treated trademark tacking as a question of law.  The tacking doctrine evolved to allow trademark owners to change their mark over time without disturbing priority rights.  A trademark owner may “tack” its use of an altered mark onto its original mark when both marks convey a “continuing commercial impression.”  This question involves a subjective assessment of how consumers perceive the altered and original marks as they appear in the marketplace.

In 2007, Hana Financial, Inc. (“HFI”), a Los Angeles-based financial services company, filed a complaint for trademark infringement to prevent Hana Bank from using its name in the United States.  Hana Bank argued that it, rather than HFI, was first to use the name “Hana” in the United States.  Hana Bank established its “Hana Overseas Korean Club” in May 1994 and, within months, began advertising in several Korean language newspapers throughout the United States, including the Los Angeles edition of the Korea Times.  HFI did not begin using its name until 1995.  In 2007, the District Court for the Central District of California granted summary judgment in favor of Hana Bank on the basis of its trademark priority.

In 2011, the case was remanded for trial by the Ninth Circuit, and Hana Bank again prevailed before a unanimous jury that found Hana Bank had priority to the “Hana” name.  On appeal, HFI argued that the jury’s priority verdict was erroneously premised on tacking of the phrase “Hana Overseas Korean Club” onto the mark “Hana Bank.”  It argued that the two marks were too different to convey a “continuing commercial impression.”  The Ninth Circuit affirmed the defense judgment in favor of Hana Bank because it deems tacking an issue of fact, and it considered the jury’s conclusion reasonable under the facts of the case.  Hana Financial v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013).

HFI appealed to the U.S. Supreme Court, where it argued that Hana Bank’s trademark priority should be decided by a judge as an issue of law, not by a jury as a question of fact.  The unanimous Supreme Court agreed with Hana Bank that tacking indeed constitutes a question of fact appropriate for jury determination.  The Court reasoned that “[b]ecause the tacking inquiry operates from the perspective of an ordinary purchaser or consumer,” it “must be decided by a jury.”  The Court did not address the impact of its decision on other facets of trademark law, including the likelihood of confusion standard, which similarly involves issues of consumer impression.

In addition to Mr. Van den Bosch, other Sheppard Mullin contributors included Bob Rose, Michelle Wisniewski, and Gazal Pour-Moezzi.  Karin Vogel and Robert Stumpf from the appellate group, and Seth Kim from Korea.

 

Provided, that, in accordance with applicable Korean law, including the Korean Foreign Legal Consultant Act, please be advised that partners of the Sheppard, Mullin, Richter & Hampton LLP Foreign Legal Consultant Office who are registered with the Korean Bar Association may be held liable for intentional or negligently inflicted damages upon a client.

In accordance with applicable Korean law, including the Korean Foreign Legal Consultant Act, please be advised that attorneys of the Sheppard, Mullin, Richter & Hampton LLP Foreign Legal Consultant Office who are registered with the Korean Bar Association are not permitted to provide Korean law legal advice. We provide this blog for general informational purposes only. Because Sheppard Mullin is a law firm and some of the information on the blog might relate to Korean law legal topics, we want you to understand that we do not create an attorney client relationship with you when you use the blog, especially for Korean law related matters. By using the blog, you agree that the information on this blog does not constitute legal or other professional advice, especially for Korean law related matters, and no attorney-client or other relationship is created between you and Sheppard Mullin. Do not consider the blog to be a substitute for obtaining legal advice from a qualified attorney licensed in Korea. The information on the blog may be changed without notice and is not guaranteed to be complete, correct or up-to-date. While we try to revise the blog on a regular basis, it may not reflect the most current legal developments. The opinions expressed at or through the blog are the opinions of the individual author and may not reflect the opinions of the firm or any individual attorney.