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SUPREME COURT OF THE UNITED STATES
_________________
No. 13–1211
_________________
HANA FINANCIAL, INC., PETITIONER
v. HANA BANK,
et al.
on writ of certiorari to the united states court of appeals for
the ninth circuit
[January 21, 2015]
Justice Sotomayor delivered the opinion of the Court.
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. The question presented here is 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, we hold that a jury should make
this determination.
I
Petitioner, Hana Financial, and respondent Hana Bank, a
subsidiary of respondent Hana Financial Group, both provide
financial services to individuals in the United States. Hana Bank
(hereinafter respondent) was established in 1971 as a Korean entity
called Korea Investment Finance Corporation. In 1991, that entity
changed its name to “Hana Bank” and began using this name in Korea.
In 1994, it established a service called Hana Overseas Korean Club
to provide financial services to Korean expatriates, and
specifically advertised that service in the United States. Those
advertisements used the name “Hana Overseas Korean Club” in both
English and Korean, and included the name “Hana Bank” in Korean and
respondent’s “dancing man” logo. See App. 206. In 2000, respondent
changed the name of the Hana Overseas Ko-rean Club to “Hana World
Center.” In 2002, respondent began operating a bank in the United
States under the name “Hana Bank.” This enterprise amounted to
respondent’s first physical presence in the United States.
Petitioner was established in 1994 as a California corporation
called Hana Financial. It began using that name and an associated
trademark in commerce in 1995. In 1996, it obtained a federal
trademark registration for a pyramid logo with the name “Hana
Financial” for use in connection with financial services.
In 2007, petitioner sued respondent, alleging infringement of
its “Hana Financial” mark. As relevant here, respondent denied
infringement by invoking the tacking doctrine and claiming that it
had priority. The District Court initially granted summary judgment
to respondent on the infringement claim, but the Court of Appeals
for the Ninth Circuit reversed, holding that there were genuine
issues of material fact as to priority. On remand, the infringement
claim was tried before a jury. The District Court adopted in
substantial part the jury instruction proposed by petitioner, and,
without objection from petitioner, instructed the jury as
follows:
“A party may claim priority in a mark based on the first use
date of a similar but technically distinct mark where the
previously used mark is the legal equivalent of the mark in
question or indistinguish-able therefrom such that consumers
consider both as the same mark. This is called ‘tacking.’ The marks
must create the same, continuing commercial impression, and the
later mark should not materially differ from or alter the character
of the mark attemptedto be tacked.” App. 173; see
id., at
140 (proposedinstruction).
The jury returned a verdict in favor of respondent, and the
District Court denied petitioner’s motion for judgment as a matter
of law.
The Court of Appeals for the Ninth Circuit affirmed. The court
explained that, although tacking applies only in “exceptionally
narrow circumstances,” 735 F. 3d 1158, 1160 (2013) (internal
quotation marks omitted), it “ ‘requires a highly
fact-sensitive inquiry’ ” that is “reserved for the jury,”
ibid. (quoting
One Industries, LLC v.
Jim O’Neal
Distributing, Inc., 578 F. 3d 1154, 1160 (CA9 2009)). The
court acknowledged, however, that whether tacking should be decided
by juries or judges “is the subject of a circuit split.” 735
F. 3d, at 1164, n. 5 (noting that the Federal and Sixth
Circuits “evaluate tacking as a question of law”); see
Van
Dyne-Crotty, Inc. v.
Wear-Guard Corp., 926 F. 2d
1156, 1159 (CA Fed. 1991);
Data Concepts, Inc. v.
Digital
Consulting, Inc., 150 F. 3d 620, 623 (CA6 1998).
We granted certiorari, 573 U. S. ___ (2014), and now
affirm.
II
As discussed above, the general rule adopted by lower courts has
been that two marks 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.”[
1]
Van Dyne-Crotty, Inc., 926 F. 2d, at 1159 (internal
quotation marks omitted); see,
e.g., George & Co.,
LLC v.
Imagination Entertainment Ltd., 575 F. 3d 383,
402 (CA4 2009);
Brookfield Communications, Inc. v.
West
Coast Entertainment Corp., 174 F. 3d 1036, 1047–1048 (CA9
1999);
Data Concepts, Inc., 150 F. 3d, at 623. “The
commercial impression that a mark conveys must be viewed through
the eyes of a consumer.”
DuoProSS Medi-tech Corp. v.
Inviro Medical Devices, Ltd., 695 F. 3d 1247, 1253 (CA Fed.
2012); see 3 J. McCarthy, Trademarks and Unfair Competition §17:26,
p. 17–71 (4th ed. 2014) (“ ‘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, we have 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. See,
e.g., United
States v.
Gaudin,515 U. S. 506,512 (1995)
(recognizing that “ ‘delicate assessments of the inferences a
‘reasonable [decisionmaker]’ would draw . . . [are] peculiarly
one[s] for the trier of fact’ ” (quoting
TSC Industries,
Inc. v.
Northway, Inc.,426 U. S. 438,450 (1976);
first alteration in original);
id., at 450, n. 12
(observing that the jury has a “unique competence in applying the
‘reasonable man’ standard”);
Hamling v.
United
States,418 U. S. 87–105 (1974) (emphasizing “the ability of the
juror to ascertain the sense of the ‘average person’ ” by
drawing upon “his own knowledge of the views of the average person
in thecommunity or vicinage from which he comes” and his “knowledge
of the propensities of a ‘reasonable’ person”);
Railroad Co.
v.
Stout, 17 Wall. 657, 664 (1874) (“It is assumed that
twelve men know more of the common affairs of life than does one
man, [and] that they can draw wiser and safer conclusions from
admitted facts thus occurring than can a single judge”).
This is certainly not to say that a judge may never determine
whether two marks 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. See Fed. Rules Civ. Proc. 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. We hold 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.
III
Attempting to overcome our conclusion, petitioner offers four
reasons why, in its view, tacking is a question of law that should
be resolved by a judge. None persuades us.
Petitioner first observes that the “legal equivalents” test
involves the application of a legal standard. See Brief for
Petitioner 20. True enough, 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.”
Gaudin, 515 U. S., at 512; see
id., at 514 (“[T]he jury’s constitutional responsibility is
not merely to determine the facts, but to apply the law to those
facts and draw the ultimate conclusion . . .”);
Miller v.
Fenton,474 U. S. 104,113 (1985) (“[A]n 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
petitioner is concerned that a jury may improperly apply the
relevant legal standard, the solution is to craft careful jury
instructions that make that standard clear. Here, however,
petitioner can hardly criticize the instruction the District Court
gave the jury, as it was essentially the instruction petitioner
proposed.
Second, petitioner argues that tacking determinations will
“create new law that will guide future tacking disputes”—a task
reserved for judges. Brief for Petitioner 21. It is not at all
clear, however, why a tacking determination in a particular case
will “create new law” any more than will a jury verdict in a tort
case, a contract dispute, or a criminal proceeding. Petitioner
insists that tacking questions “have to be” resolved by comparing
two marks in a given case “against those addressed in other tacking
cases,”
id., at 22, but we do not agree. 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
petitioner offers no support for the claim that tacking cases “have
to be” resolved by reliance on precedent. Indeed, in many of the
cases petitioner cites in support of this argument, the courts in
question relied on precedent only to define the relevant legal
standard. See,
e.g., Specht v.
Google Inc.,
758 F. Supp. 2d 570, 583–585 (ND Ill. 2010), aff’d, 747
F. 3d 929 (CA7 2014);
Children’s Legal Servs. PLLC v.
Kresch, 2008 WL 1901245, *1–*2 (ED Mich., Apr. 25, 2008),
aff ’d
sub nom. Children’s Legal Servs., P. L. L.
C. v.
Saiontz, Kirk & Miles, P. A., 2009 WL 1868809
(CA6, June 18, 2009).[
2]
Third, and related, petitioner worries that the predict-ability
required for a functioning trademark system will be absent if
tacking questions are assigned to juries. See Brief for Petitioner
25–27. But, again, the same could be said about the tort, contract,
and criminal justice systems: In all of these areas, juries answer
often-dispositive fac-tual questions or make dispositive
applications of legal standards to facts. The fact that another
jury, hearing the same case, might reach a different conclusion may
make the system “unpredictable,” but it has never stopped us from
employing juries in these analogous contexts. Petitioner has
offered no reason why trademark tacking ought to be treated
differently. Moreover, decisionmaking in fact-intensive disputes
necessarily requires judgment calls. Regardless of whether those
judgment calls are made by juries or judges, they necessarily
involve some degree of uncertainty, particularly when they have to
do with how reasonable persons would behave.
Finally, petitioner argues that, as a historical matter, judges
have resolved tacking disputes. See Brief for Petitioner 30–35. But
petitioner relies on cases in which judges have resolved tacking
disputes in bench trials, at summary judgment, or the like. See,
e.g., Drexel Enterprises, Inc. v.
Richardson,
312 F. 2d 525, 526 (CA10 1962) (“[This action] was tried
without a jury”);
Perfectform Corp. v.
Perfect Brassiere
Co., 256 F. 2d 736, 738 (CA3 1958) (“The district court
dismissed the complaint”);
John Morrell & Co. v.
Hauser Packing Co., 20 F. 2d 713 (CA9 1927) (“In the
court below, there was a dismissal of both the bill and of
defendant’s counterclaim”);
Beech-Nut Packing Co. v.
P.
Lorillard Co., 299 F. 834, 835 (NJ 1924) (equitable claims
tried solely before a judge). As we have noted, it is undisputed
that judges may resolve tacking disputes in those contexts. But
recognizing as much does not gainsay our conclusion that, when a
jury is to be empaneled and when the facts warrant neither summary
judgment nor judgment as a matter of law, tacking is a question for
the jury.
* * *
The Ninth Circuit correctly held that whether two marks may be
tacked for purposes of determining priority is a question for the
jury. Accordingly, the judgment of the Ninth Circuit is
affirmed.
It is so ordered.
