Supreme Court Holds Trademark Tacking to Be Decided by Juries

The Supreme Court ruled that trademark tacking is a question of fact for the jury to decide in Hana Financial, Inc. v. Hana Bank. Tacking allows a trademark owner to alter its mark while maintaining the older first-use date for the original mark. The new mark is “tacked” onto the older priority date.

In Hana Financial, the Plaintiff sued Hana Bank and others for trademark infringement and related claims. The trial court granted summary judgment to Defendants on the infringement claim, but the Ninth Circuit reversed and remanded the case back to the trial due to the factual issues relating to the priority issue. On remand, the jury found in favor of Defendants. The plaintiff moved for judgment as a matter of law, which was denied by the trial court. The plaintiff appealed this case to the Ninth Circuit claiming that the determination of whether a trademark may be “tacked” to a prior mark is a question of law that must be determined by the court, not a question of fact that may be decided by the jury. The Ninth Circuit affirmed the district court’s ruling. The case was then appealed to the Supreme Court. The Supreme Court also affirmed.