Hana Financial, Inc. v. Hana Bank
The Supreme Court ruled that juries, not judges, should decide whether an older and a newer trademark are close enough to be treated as the same mark for purposes of establishing who used it first.
The decision resolves a split among lower courts and confirms that this kind of fact-heavy, consumer-perception question belongs with the jury whenever a case is being tried before one.
How it got here: A jury ruled for Hana Bank after a trial; the Ninth Circuit affirmed, and Hana Financial asked the Supreme Court to decide whether tacking is a judge or jury question.
The Case in Depth
What happened
Hana Financial, a California financial-services company, sued Hana Bank, a Korean bank that later opened U.S. operations, for trademark infringement over their shared use of the name "Hana." Hana Bank defended itself by arguing it could rely on an earlier version of its own name and logo to claim it had used a similar mark first, a doctrine called "tacking."
The question before the Court
When two companies fight over which trademark came first and one side claims an older, similar mark, should a judge or a jury decide whether the two marks count as the same for priority purposes?
Why it matters
Businesses that update their logos, names, or branding over time can still keep their original priority date in a trademark dispute, but if the case goes to trial, a jury — not a judge — will decide whether the old and new versions counted as the same mark in customers' eyes.
What changes now
This is a final merits decision that resolves the circuit split over who decides trademark tacking questions. The Ninth Circuit's judgment in favor of Hana Bank stands, and going forward, whenever a trademark tacking dispute goes to a jury trial and the facts don't settle the issue on summary judgment or as a matter of law, the jury will decide it.
What this does not decide
The Court did not decide whether Hana Bank actually deserves tacking priority in this case — that was already resolved by the jury verdict. It also did not disturb the rule that judges may still decide tacking in bench trials or on summary judgment.
How the Court got there
The legal reasoning, step by step
- The Court explained that lower courts allow 'tacking' when an older and newer trademark are 'legal equivalents' — meaning they create the same continuing impression on consumers — so a business doesn't lose its priority date just for tweaking its brand.
- Because the tacking test asks how an ordinary consumer would perceive the two marks, the Court treated it as the kind of fact-intensive, perspective-of-the-average-person question that juries are traditionally best suited to answer, citing similar reasoning from cases about how a 'reasonable person' would view something.
- The Court rejected the argument that this was purely a legal question for judges, explaining that 'mixed questions of law and fact' — where a legal standard must be applied to particular facts — are routinely resolved by juries in tort, contract, and criminal cases.
- The Court rejected the claim that jury tacking decisions would create binding legal precedent in the way judicial rulings do, finding no support for treating trademark tacking differently from other jury-decided factual disputes.
- The Court clarified that judges can still decide tacking questions when a case is resolved on summary judgment, judgment as a matter of law, or in a bench trial — the jury rule applies only when a jury trial is actually being held and the facts don't resolve the issue as a matter of law.
Doctrinal impact
Cases affected by this decision
Distinguishes Markman v. Westview Instruments, Inc. (517 U. S. 370)
Says patent-term construction, decided by judges, differs from the factual, consumer-perception tacking inquiry.