I apologize in advance for setting the bar for excitement too high, but this post is all about STANDARD OF REVIEW (yes, those are fireworks in the distance, and yes, that is a metal guitar solo in the background).
On Monday, the Supreme Court granted certiorari in Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158, 1168 (9th Cir. 2013)(opinion here). The case involved two financial institutions and a dispute over who owned the rights to the mark HANA in connection with banking and other financial services. The main issue in the case was which party had priority to use the mark. Hana Financial sued Hana Bank and, in response, Hana Bank claimed that it had priority to use the HANA mark because of its earlier use of the name HANA OVERSEAS KOREAN CLUB, relying on the doctrine of tacking.
The “tacking” doctrine allows an individual to claim an earlier date of use to a mark based on their earlier use of similar mark for similar services. The test for tacking is whether the two marks are “legal equivalents” such that they would create the same continuing commercial impression in the minds of consumers. The courts all but universally agree (Mars is a holdout) that tacking is a “strict” doctrine that applies only in “exceptionally narrow” circumstances. For example, courts have not permitted tacking between the following marks:
AMERICAN MOBILPHONE and AMERICAN MOBILPHONE PAGING;
SHAPE UP and SHAPE;
HOME PROTECTION HARDWARE and HOME PROTECTION CENTER; and
PRO-KUT and PRO-CUTS.
However, courts have allowed tacking between the following marks:
HOLLYWOOD and HOLLYWOOD HEALTH FOODS;
CAPITAL CITY BANK GROUP and CAPITAL CITY BANK; and now
HANA BANK and HANA OVERSEAS KOREAN CLUB.
It can be difficult to predict whether a court would allow tacking because of the fact-intensive nature of the inquiry. The discrepancy is partially explained by the split among the circuits as to whether the tacking inquiry is a question of law or a question of fact. The Ninth Circuit considers it a question of law, while the Sixth and Federal Circuits consider it a question of fact. While the classification as a question of law or fact may not seem particularly interesting, the Ninth Circuit recognized that “[its] characterization of tacking as a question of fact is arguably dispostive [of the issue].”
It appears that this must be the reason that the Supreme Court granted certiorari in this case, to resolve the circuit split. An interesting aside is that the courts that have addressed the tacking issue also tend to reflect that circuit’s precedent as to whether a likelihood of confusion determination is a question of law or a question of fact. Will the Supreme Court directly address this circuit split as well? Even if it doesn’t directly address it, is the inquiry so similar to a likelihood of confusion analysis that a Supreme Court ruling regarding tacking would be persuasive authority that a likeilhood of confusion inquiry should be treated similarly?
Much conjecture, little fireworks, super possible large-time implications. Stay tuned.