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January 26, 2015 Practice Points

Trademark "Tacking" Questions Should Go to a Jury

The Supreme Court issued its first substantive trademark decision of the current term.

By Lesley McCall Grossberg

The Supreme Court issued its first substantive trademark decision of the current term yesterday in Hana Financial, Inc. v. Hana Bank. The district court had charged the jury with determining whether Hana Bank's original mark, HANA OVERSEAS KOREAN CLUB, had the same commercial impression as its revised mark, HANA BANK. The jury found that it did, and the Ninth Circuit affirmed the district court's decision to have the jury determine the question.

The Supreme Court affirmed, in a unanimous opinion authored by Justice Sotomayor, who wrote, "Application of a test that relies upon an ordinary consumer's understanding of the impression that a mark conveys falls comfortably within the ken of a jury." The decision overrules precedent in the Sixth and Federal Circuits that had treated tacking as a question of law. Hana Financial's four arguments, and their disposition by the Supreme Court, were as follows:

  1. The "legal equivalents" test involves the application of a legal standard. Juries are capable of resolving mixed questions of law and fact. The solution is to carefully craft jury instructions on the issue, and here, the district court had charged the jury with Hana Financial's proposed instruction on tacking.

  2. Tacking determinations "will create new law," which is a task that should be reserved for judges. Tacking determinations will not "create new law" any more than jury verdicts in other types of cases.

  3. Jury determinations are unpredictable, to the detriment of the functioning of the trademark system. Again, the same could be said of tort, contract, and criminal cases in which juries "answer often-dispositive factual questions or make dispositive applications of legal standards to facts."

  4. Historically, judges have resolved tacking disputes. Hana Financial had cited to cases involving bench trials and summary judgment decisions in making this argument. Just because the tacking question may be resolved by a judge on summary judgment or following a bench trial, doesn't mean it must, particularly when a jury has been empaneled.

Keywords: litigation, intellectual property, SCOTUS, Hana, Hana Financial, Hana Bank, Sotomayor

Lesley McCall Grossberg is with BakerHostetler in Philadelphia, Pennsylvania.

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Lesley McCall Grossberg – January 26, 2015