On January 21, 2014, the Supreme Court issued its decision in Hana Financial, Inc. v. Hana Bank. This trademark case involved a rule called "tacking", which permits the owner of a trademark to modify the trademark without losing the priority established by being the first user of the trademark. Tacking, however, is only permitted as long as the modified trademark establishes "the same, continuing commercial impression so that consumers consider both as the same mark."
The question in this case was whether the judge or the jury should determine whether a consumer would consider the original trademark and the modified trademark to be the same.
In an opinion delivered by Justice Sotomayor, the Court unanimously held that the jury, rather than a court, should determine whether the use of an older trademark may be tacked to a newer one. The judgment of the Ninth Circuit was affirmed.
To discuss the case, we have Michael Risch, who is a Professor of Law at the Villanova University School of Law.