Supreme Court Grants Review In Hana Financial v. Hana Bank Trademark Proceeding

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The Supreme Court will hear Hana Financial's case and make a determination on whether trademark "tacking" is a question of law or fact.

The case presents an important question in trademark law: whether 'tacking' is a question to be resolved by a judge or decided by a jury.

On Monday, June 23, 2014, the United States Supreme Court granted Hana Financial Inc.’s petition for a writ of certiorari in the case of Hana Financial, Inc., v. Hana Bank, No. 13-1211. The case presents an important question of trademark law: whether trademark “tacking” is a question of law to be resolved by a judge or a question of fact to be decided by a jury.

In July 1994, Hana Bank, a Korean entity, first entered the U.S. market using the mark “Hana Overseas Korean Club.” In August 1994, Hana Financial, a California company, was created and shortly thereafter used and registered its “Hana Financial” mark. Years later, in 2002, the Korean company began using its “Hana Bank” mark in the United States. After Hana Financial sued, claiming that the mark “Hana Bank” is confusingly similar to “Hana Financial,” Hana Bank claimed that it had superior rights because it could “tack” its use of “Hana Bank” to its earlier use of “Hana Overseas Korean Club.”

In this proceeding, the United States Court of Appeals for the Ninth Circuit affirmed a jury verdict in favor of Hana Bank, holding that it was entitled to use its “Hana Bank” mark. The court premised its decision on the view that trademark tacking is a question of fact that should be resolved by a jury. The court recognized, however, that other courts have concluded that the propriety of trademark tacking should be determined as a matter of law by a judge rather than by a jury, and also acknowledged that a judge likely would have rejected the claim of trademark tacking in this case. Under such an approach, Hana Financial rather than Hana Bank would be deemed to have priority to the “Hana Financial” mark.

“I could not be any happier by the Supreme Court’s decision to review our case,” said Sunnie S. Kim, President and Chief Executive Officer of Hana Financial, Inc. “Through this long and sometimes arduous journey, we never lost faith in the legal system even when the lower courts decided against us. Doing the right thing is never easy, but we still do it against the odds because we believe that what is right will prevail in the end. Hana Financial is optimistic that the Court will ultimately overturn the decision rendered below.”

Hana Financial is represented by Charles Rothfeld and Paul Hughes of Mayer Brown LLP.

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