Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158 (9th Cir. 2013).
In certain cases, the user of a trademark may establish priority over another user's mark by "tacking" the date of its first use of a mark onto its use of a subsequent mark; to do so, the user's two marks must be so similar that consumers would generally regard them as being the same. Courts permit tacking to protect a trademark owner from losing priority in a mark each time it makes a slight alteration in the mark, but have applied the doctrine only in "exceptionally narrow" circumstances.
In Hana Financial, a dispute involving two Korean financial institutions and the word "hana"—which means "number one," "first," "top," or "unity" in Korean—the Ninth Circuit recently held that one such narrow circumstance existed. There, the plaintiff argued that it started using its "Hana Financial" mark in 1995, whereas the defendant Hana Bank did not begin using its mark "Hana World Center" until 2000 and thus the plaintiff's mark enjoyed first use. In response, the defendant argued that it began using its mark "Hana Overseas Korean Club" in 1994 and that it could therefore establish priority over the plaintiff's mark when its use of that mark was tacked to its use of its "Hana World Center" mark.
The district court initially granted summary judgment to the plaintiff on the priority issue; the Ninth Circuit, however, reversed, holding that there was an issue of fact regarding priority and remanded the case for trial. At trial, the district court instructed the jury regarding the tacking doctrine, and the jury returned a verdict in favor of the defendant, finding that the defendant's use of the mark predated the plaintiff's use. The plaintiff moved for judgment as a matter of law and for a new trial, but the district court denied the motions, holding that there was sufficient evidence upon which the jury could have based its verdict.
When the case again reached the Ninth Circuit, the court of appeals affirmed the district court. Although the court of appeals found that the evidence could support the plaintiff's position, it stressed that as the losing party the plaintiff carried the burden of showing that its interpretation of the evidence was the only reasonable one. Pointing to the defendant's use of its distinctive dancing-man logo and Korean mark alongside its English marks in its advertising and application forms, the court found that the jury could have reasonably concluded that ordinary purchasers of the defendant's financial services—Korean-speaking Americans—had a continuous, consistent commercial impression of the defendant's services and their origin. Emphasizing that tacking is a question of fact in the Ninth Circuit (as opposed to other circuits that hold that it is a question of fact), the court of appeals held that the plaintiff had failed to show that the jury's verdict was unreasonable.
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