__ U.S. __ (2015), 13-1211, Hana Fin., Inc. v. Hana Bank

Docket Nº:13-1211
Citation:__ U.S. __, 135 S.Ct. 907, 190 L.Ed.2d 800, 83 U.S.L.W. 4085, 25 Fla.L.Weekly Fed. S 63
Opinion Judge:Sotomayor, J.
Party Name:HANA FINANCIAL, INC., Petitioner v. HANA BANK, et al
Attorney:Paul W. Hughes argued the cause for petitioner. Carlo F. Van den Bosch argued the cause for respondents. Sarah E. Harrington argued the cause for the United States as amicus curiae, by special leave of court.
Case Date:January 21, 2015
Court:United States Supreme Court
 
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Page __

__ U.S. __ (2015)

135 S.Ct. 907, 190 L.Ed.2d 800, 83 U.S.L.W. 4085, 25 Fla.L.Weekly Fed. S 63

HANA FINANCIAL, INC., Petitioner

v.

HANA BANK, et al

No. 13-1211

United States Supreme Court

January 21, 2015

Argued December 3, 2014

This preliminary Lexis version is unedited and subject to revision.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

Affirmed.

DECISION: Question whether tacking was available to determine trademark priority held to be issue for jury if jury trial was requested, unless facts warranted summary judgment or judgment as matter of law.

LAWYERS' EDITION HEADNOTES:

[190 L.Ed.2d 801]

TRADEMARKS AND TRADENAMES § 3TRIAL § 165

PRIORITY -- TACKING -- JURY DETERMINATION

Headnote:[1]

Rights in a trademark are determined by the date of the mark's first use in commerce. The party who first uses a mark in commerce is said to have priority over other users. Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark. This doctrine is called " tacking," and lower courts have found tacking to be available when the original and revised marks are " legal equivalents" in that they create the same, continuing commercial impression. Regarding whether a judge or a jury should determine whether tacking is available in a given case, because the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, a jury should make this determination.

TRADEMARKS AND TRADENAMES § 3TRIAL § 165

TACKING -- LEGAL EQUIVALENTS -- JURY DETERMINATION

Headnote:[2]

The general rule adopted by lower courts has been that two trademarks may be tacked when the original and revised marks are " legal equivalents." This term refers to two marks that create the same, continuing commercial impression so that consumers consider both as the same mark. The commercial impression that a mark conveys must be viewed through the eyes of a consumer. " Commercial impression," like most issues in trademark law, should be determined from the perspective of the ordinary purchaser of these kinds of goods or services. 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. Indeed, the U.S. Supreme Court has long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.

TRIAL § 165

TRADEMARK -- TACKING QUESTION -- JUDGE -- JURY

Headnote:[3]

The U.S. Supreme Court does not say that a judge may never determine whether two trademarks may be tacked. If the facts warrant it, a judge may decide a tacking question on a motion for summary judgment or for judgment as a matter of law. Fed.R.Civ.P. 50, 56(a). And if the parties have opted to try their case before a judge, the judge may of course decide a tacking question in his or her factfinding capacity. The Court holds only that, when a jury trial has been requested and when the facts do not warrant entry of summary judgment or judgment as a matter of law, the question whether tacking is warranted must be decided by a jury.

TRIAL § 165

TRADEMARK TACKING -- LEGAL EQUIVALENTS -- JURY DETERMINATION

Headnote:[4]

The " legal equivalents" test for tacking of trademarks involves the application of a legal standard, but the application-of-legal-standard-to-fact sort of question, commonly called a mixed question of law and fact, has typically been resolved by juries. The jury's constitutional responsibility is not merely to determine the facts, but to apply the law to those facts and draw the ultimate conclusion. An issue does not lose its factual character merely because its resolution is dispositive of the ultimate question. The " mixed" analysis that takes place during the tacking inquiry is no different. And insofar as there is concern that a jury may improperly apply the relevant legal standard, the solution is to craft careful jury instructions that make that standard clear.

[190 L.Ed.2d 802]

COURTS § 779TRADEMARKS AND TRADENAMES § 3

TACKING QUESTIONS -- PRECEDENT

Headnote:[5]

The U.S. Supreme Court does not agree that tacking questions have to be resolved by comparing two trademarks in a given case against those addressed in other tacking cases. Of course, in deciding summary judgment motions, or in making rulings in bench trials, judges may look to past cases holding that trademark owners either were or were not entitled to tacking as a matter of law. But no support is offered for the claim that tacking cases " have to be" resolved by reliance on precedent.

TRIAL § 153 TRIAL § 165

PATENT TERMS -- TRADEMARK TACKING -- JUDGE OR JURY

Headnote:[6]

The U.S. Supreme Court has held that the task of construing patent terms falls to judges and not to juries. The Court held as much because the construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. The trademark tacking inquiry, by contrast, involves a factual judgment about whether two marks give the same impression to consumers. Making that kind of judgment is not one of those things that judges often do better than jurors.

SYLLABUS

[135 S.Ct. 908] Petitioner, Hana Financial, Inc., and respondent Hana Bank both provide financial services to individuals in the United States. When Hana [190 L.Ed.2d 803] Financial sued Hana Bank for trademark infringement, Hana Bank invoked in defense the tacking doctrine, under which lower courts have provided that a trademark user may make certain modifications to its mark over time while, in limited circumstances, retaining its priority position. Petitioner's claim was tried before a jury, and the District Court adopted in substantial part the jury instruction on tacking proposed by petitioner. The jury returned a verdict in respondent's favor. Affirming, the Ninth Circuit explained that the tacking inquiry was an exceptionally limited and highly fact-sensitive matter reserved for juries, not judges.

Held: Whether two trademarks may be tacked for purposes of determining priority is a question for the jury. Pp. ___ - ___, 135 S.Ct. 907, 190 L.Ed.2d, at 805-807.

(a) Lower courts have held that two marks may be tacked when they are considered to be " legal equivalents," i.e., they " create the same, continuing commercial impression." Van Dyne-Crotty, Inc. v. Wear-Guard Corp. 926 F.2d 1156, 1159. And " commercial impression" " must be viewed through the eyes of a consumer." DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 1253. When the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer. See, e.g., United States v. Gaudin, 515 U.S. 506, 512, 115 S.Ct. 2310, 132 L.Ed.2d 444. Pp. ___ - ___, 135 S.Ct. 907, 190 L.Ed.2d, at 805-806.

(b) Each of petitioner's four arguments in support of its view that tacking is a question of law to be resolved by a judge is unpersuasive. First, it may be true that the " legal equivalents" test involves a legal standard, but such " 'mixed question[s] of law and fact,' [have] typically been resolved by juries." Gaudin, 515 U.S. at 512, 115 S.Ct. 2310, 132 L.Ed.2d 444. And any concern that a jury may improperly apply the relevant legal standard can be remedied by crafting careful jury instructions. Second, petitioner offers no support for its claim that tacking determinations create new law in a unique way that requires those determinations to be reserved for judges. Third, petitioner worries that the predictability required for a functioning trademark system will be absent if tacking questions are assigned to juries, but offers no reason why trademark tacking should be treated differently from the tort, contract, and [135 S.Ct. 909] criminal justice systems, where juries answer often-dispositive factual questions or make dispositive applications of legal standards to facts. Finally, in arguing that judges have historically resolved tacking disputes, petitioner points to cases arising in the contexts of bench trials, summary judgment, and the like, in which it is undisputed that judges may resolve tacking disputes. Pp. ___ - ___, 135 S.Ct. 907, 190 L.Ed.2d, at 806-807.

735 F.3d. 1158, affirmed.

Paul W. Hughes argued the cause for petitioner.

Carlo F. Van den Bosch argued the cause for respondents.

Sarah E. Harrington argued the cause for the United States as amicus curiae, by special leave of court.

OPINION

Sotomayor, J.

Rights in a trademark are determined by the date of the mark's first [190 L.Ed.2d 804] use in commerce. The party who first uses a mark in commerce is said to have priority over other users. Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark. This doctrine...

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