Hana Financial, Inc. v. Hana Bank is the final case we’ll discuss reviewing the recent Supreme Court decisions. This case involved review of a very specific issue, namely, whether “tacking” is a question of fact or law.
What is “Tacking”?
Under general principles of trademark law, the first party to use a mark generally has the superior rights. Technically, each time a party modifies a trademark, a new trademark is created and use of that mark relates only to that particular mark and not to any prior iterations of the mark.
However, the doctrine of “tacking” has evolved to allow trademark owners the ability to change their marks and still claim priority based on prior versions of a mark. Basically, a trademark owner may “tack” its use of an altered mark onto its use of the original, prior mark when both marks convey a “continuing commercial impression.” The determination of whether there is this “continuing commercial impression” involves an assessment of how consumers would perceive the original and altered forms of the marks as they appear in the marketplace. If the two would be considered as conveying this “continuing commercial impression,” then the rights in the mark would relate back to use of the original mark.
Facts of the Case