The U.S. Supreme Court granted certiorari to a trademark law case that would tackle the issue of “tacking.” Tacking is the trademark law doctrine that allows a trademark owner to avoid abandonment and/or claim priority use in a mark that has been slightly modified from its original form. The standard for whether the updated mark can be legally tacked onto the older form is whether the marks are considered “legally equivalent.” Circuit courts have decided the standard differently; some have held it to be a legal question, while others have left it to juries to decide. Generally, the standard for tacking has been relatively strict. Now the U.S. Supreme Court will attempt to resolve the divide among the circuit courts in Hana Financial, Inc. v. Hana Bank.

In the case at hand, Hana Bank did not start use of the mark until seven years after Hana Financial but claimed it could tack priority use back to its mark, “Hana Overseas Korean Club.” A jury in California agreed and found for the Korean-based Hana Bank, which meant there was no trademark infringement on Hana Bank’s part.

Hana Financial appealed and the Ninth Circuit affirmed the jury’s finding, citing previous rulings and noting that tacking was an issue to be properly decided by a jury. In its holding, the Ninth Circuit noted that while its sister circuits may decide tacking as a question of law, it was bound by prior decisions to try tacking as a question of fact.

Hana Financial then appealed to the U.S. Supreme Court, citing in its petition that the Sixth Circuit, the Federal Circuit, and the Trademark Trial and Appeal Board all hold that tacking is a legal question.

Now the Supreme Court will resolve the split among circuits and decide whether tacking is a question left for juries or judges to decide.

Source: http://www.law360.com/articles/550604/high-court-to-decide-who-determines-trademark-tacking

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