## Facts

- Hana Financial, Inc., a California financial-services company, began using “Hana Financial” in 1995 and obtained a federal registration in 1996.
- Hana Bank, a Korean financial institution, marketed U.S.-directed services beginning in 1994 under “Hana Overseas Korean Club,” with advertisements also referring to “Hana Bank” (at least in Korean text).
- In 2002, Hana Bank opened a U.S. bank using the name “Hana Bank.”
- In 2007, Hana Financial sued for trademark infringement and related claims, alleging a likelihood of confusion between “Hana Financial” and “Hana Bank.”
- Hana Bank asserted trademark “tacking,” arguing it could claim priority by tacking its later “Hana Bank” use to earlier uses that allegedly created the same continuing commercial impression.
- After remand from the Ninth Circuit, a jury was instructed that tacking applies when two marks are “legal equivalents” creating the “same, continuing commercial impression,” and the jury found for Hana Bank.
- The district court denied Hana Financial’s motion for judgment as a matter of law; the Ninth Circuit affirmed, treating tacking as a jury issue.

## Issues

1. Whether trademark tacking—determining that two marks are “legal equivalents” creating the same, continuing commercial impression for priority purposes—is a question for the jury (fact) or the court (law).

## Decision

- The Supreme Court unanimously affirmed.
- The Court held that whether two marks may be tacked for purposes of determining priority is ordinarily a question for the jury.
- The Court reasoned that the tacking test turns on how an ordinary purchaser perceives the marks, a type of determination generally assigned to juries.
- The Court noted that judges may still resolve tacking on summary judgment or judgment as a matter of law when no reasonable jury could find otherwise, and that in a bench trial the judge decides as factfinder.

## Legal Principles

- Trademark tacking is permitted only in narrow circumstances when the original and revised marks are “legal equivalents.”
- Marks are “legal equivalents” for tacking only if they create the “same, continuing commercial impression.”
- The tacking inquiry must be evaluated from the perspective of an ordinary purchaser or consumer, making it a fact-intensive, consumer-perception question typically for the jury.
- The presence of a legal standard does not convert the tacking inquiry into a pure question of law; mixed questions that depend on ordinary consumer understanding are commonly resolved by juries.
- Concerns about correct application of the standard are addressed through careful jury instructions and ordinary judicial control through dispositive motions when warranted.

## Conclusion

The Court held that trademark tacking, because it depends on ordinary consumer perception of whether two marks convey the same continuing commercial impression, is ordinarily for the jury to decide, while preserving the court’s ability to decide the issue on dispositive motions when the evidence permits only one reasonable result.


Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907 (2015)