On June 23, 2014, the Supreme Court granted certiorari in Hana Financial, Inc. v. Hana Bank, No. 13-1211, to decide whether trademark tacking is a question of law for a court or a question of fact for a jury. The test for trademark tacking is whether the old mark and the new mark are “legal equivalents,” i.e., whether the two marks are so similar that consumers would generally regard them as being the same. If tacking is permitted, a registrant’s later used mark will be afforded the priority date of the earlier used mark. The tacking doctrine allows registrants to make slight modifications to the mark over time without losing their priority date.
The Ninth Circuit, which heard the underlying case, has long held that the issue of whether two marks are legal equivalents is an issue of fact to be decided by the jury. Other circuits, such as the Sixth Circuit and the Federal Circuit, however, have reached a contrary conclusion holding that the issue of trademark tacking is a question of law to be decided by the Court. By granting certiorari, the Supreme Court will resolve this split among the circuit courts of appeal, which will provide clarity in the law for trademark owners.