Thursday, January 22, 2015

Supreme Court Holds That Jury Should Decide Tacking Issue

The U.S. Supreme Court affirmed the ruling of the U.S. Court of Appeals for the Ninth Circuit, holding that a jury should make the determination of whether tacking is available in a given (jury) case. "The Ninth Circuit correctly held that whether two marks may be tacked for purposes of determining priority is a question for the jury. Accordingly, the judgment of the Ninth Circuit is affirmed." Hana Financial, Inc. v. Hana Bank, 113 USPQ2d 1365 (Supreme Court 2015).

When Hana Financial sued Hana Bank for infringement, the latter invoked the tacking doctrine in claiming priority. Tacking applies when the two marks create the same, continuing commercial impression. The later mark should not differ materially from the earlier mark to be tacked. In other words, the two marks must be "legal equivalents." The circuits are split as to whether tacking is a question of law or an issue for the jury.

The Supreme Court ruled that tacking is an issue for the jury to decide.

Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury. Indeed, we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.

Of course, a judge may decide the tacking issue in a non-jury case, and may do so in a jury case if the facts warrant it on a motion for summary judgment or for judgment as a matter of law. But otherwise, when a jury trial has been requested, "the question whether tacking is warranted must be decided by a jury."

The Court found that the district court had properly instructed the jury on the issue, and it therefore affirmed the district court judgment of non-infringement.

Read comments and post your comment here

TTABlog note: The issue of tacking comes up relatively rarely. But does this decision have broader implications? Does it suggest that likelihood of confusion is a jury issue? The circuits are split on the question.

Text Copyright John L. Welch 2015.


At 8:52 AM, Blogger Jonathan Hudis said...

Whether the Supreme Court will consider LOC is a jury issue would only occur if a plaintiff's case is dismissed on SJ or on a motion for JMOL for no LOC, and the high court grants cert to decide the question. Until the Supreme Court granted cert in Hana Financial, I would have thought the chances of the Court granting cert on whether LOC is a question of law or fact would be low. Now, who knows?

At 11:37 AM, Blogger John L. Welch said...

Does the fact that Justice Sotomayor practiced some trademark law play any part in the S. Ct.'s recent willingness to take trademark cases?

At 10:23 PM, Anonymous Tal Benschar said...

The LOC question also has a cognate issue apart from the judge/jury dichotomy. On appellate review, what is the standard? Some circuits say that each of the LOC factors are reviewed for "clear error," but the final LOC concusion is reviewed de novo. Others review the whole thing for clear error. Seems to me that that is the same issue -- is the final conclusion a conclusion of law or fact? The Hana case strongly suggests the latter.


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