Hana Financial, Inc. v. Hana Bank
735 F.3d 1158
| 9th Cir. | 2013Background
- Hana Bank (Korean bank) began U.S. outreach in 1994 using the English name "HANA Overseas Korean Club" in Korean‑language U.S. ads that displayed the bank’s unchanged "dancing man" logo and the bank name in Korean; it later renamed the program "Hana World Center."
- Hana Financial, Inc. (HFI) incorporated in 1994 and began using "Hana Financial" in commerce April 1, 1995; it obtained a federal registration for a pyramid logo with "Hana Financial" in 1996 and targeted Korean‑American customers.
- HFI sued Hana Bank for trademark infringement (priority and likelihood of confusion); Hana Bank counterclaimed for cancellation and raised equitable defenses. The case was remanded for trial on priority.
- At trial the district court instructed the jury on the narrow tacking doctrine; the jury found Hana Bank had used its mark in U.S. commerce before April 1, 1995 and continuously since, and returned an advisory verdict on laches for the Bank.
- HFI moved for judgment as a matter of law arguing tacking and abandonment were inappropriate; the district court denied the motion. The Ninth Circuit affirmed, holding tacking presented a factual question and the jury verdict was supported by substantial evidence.
Issues
| Issue | Plaintiff's Argument (HFI) | Defendant's Argument (Hana Bank) | Held |
|---|---|---|---|
| Whether Hana Bank could "tack" its 1994 use of the "HANA Overseas Korean Club" mark to its later "Hana Bank" mark to establish priority | Tacking inapplicable because the marks ("Hana Overseas Korean Club" / "Hana World Center" vs. "Hana Bank") materially differ and would not create the same continuing commercial impression | The earlier English use of "Hana" alongside the bank’s Korean name and constant dancing man logo created a continuous commercial impression such that consumers would view the marks as the same source | Affirmed: tacking is a fact question; sufficient evidence supported jury finding that tacking applied and Bank had prior use |
| Whether the Bank abandoned the earlier Club mark (nonuse/intent not to resume) | Bank ceased using the Club name (changed to Hana World Center) and therefore abandoned trademark rights by 1999–2000 | Bank maintained U.S. customers, frequent wire transfers, advertising continuity and the unchanged logo—key element of mark remained in use | Rejected: jury implicitly found no abandonment; evidence supported continued use and intent to resume/use key element |
| Adequacy of jury instruction and whether tacking is for the jury or the court | Instruction was improper because tacking is an exceptionally narrow doctrine that should be decided as a matter of law | Tacking is fact‑intensive in Ninth Circuit and properly submitted to the jury with a narrow instruction | Affirmed: Ninth Circuit treats tacking as a question of fact; instruction appropriate and issue for jury unless only one reasonable conclusion exists |
| Standard of review for JMOL on trademark priority after jury verdict | HFI: JMOL warranted because no evidence supported priority/tacking | Bank: jury verdict must be sustained if supported by substantial evidence; review is de novo but must view evidence in favor of verdict | Affirmed: de novo review but verdict upheld because substantial evidence supported it |
Key Cases Cited
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir.) (explaining narrow tacking standard and rationale)
- One Industries, LLC v. Jim O'Neal Distribution, Inc., 578 F.3d 1154 (9th Cir.) (tacking treated as fact question; highly fact‑sensitive inquiry)
- Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749 (9th Cir.) (reversed tacking where marks could create different commercial impressions)
- Van Dyne‑Crotty, Inc. v. Wear‑Guard Corp., 926 F.2d 1156 (Fed. Cir.) (commercial impression test; marks must be viewed in entirety)
- First National Mortgage Co. v. Federal Realty Investment Trust, 631 F.3d 1058 (9th Cir.) (standard for reviewing JMOL and viewing evidence in light most favorable to verdict)
- Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir.) (holding dropping nonessential words may not change overall commercial impression)