The Supreme Court Resolves the Role of the Jury in Trademark Tacking

The day after its ruling in Teva, the Supreme Court settled a split in the lower courts over whether the judge or the jury should make the determination of whether two trademarks may be "tacked" to extend the date of the first use further back in time.  Oral argument in Hana Financial, Inc. v. Hana Bank^[1] occurred on December 3, 2014, and on January 21, 2015, Justice Sotomayor delivered the unanimous decision of the Court.  In the decision, the Court recognized the general rule adopted by lower courts that two marks may be tacked if they are legal equivalents, i.e., that they create the "same, continuing commercial impression so that consumers consider both the same mark."  Resolving a split in the lower courts as to whether the judge or the jury were best suited to make the decision of legal equivalence, Justice Sotomayor wrote, "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."  Focusing on precedent outside the trademark context that the jury is generally the decision maker in questions of how an ordinary person or community would make an assessment, the Court held that the question of whether tacking is warranted must be decided by a jury when a jury trial has been requested if the question has not been decided by the judge on summary judgment or as a judgment of a matter of law. 

_{[1] Hana Financial, Inc. v. Hana Bank, No. 13-1211, U.S. Supreme Court decided Jan. 21, 2015, available at http://www.supremecourt.gov/opinions/slipopinions.aspx.}