Hana Financial, Inc. v. Hana Bank

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
HANA FINANCIAL, INC., a California No. 11-56678
corporation,
Plaintiff-Appellant, D.C. No.
2:07-cv-01534-
v. PA-JWJ
HANA BANK, a Korean corporation;
HANA FINANCIAL GROUP, a Korean OPINION
corporation,
Defendants-Appellees.
Appeal from the United States District Court
for the Central District of California
Percy Anderson, District Judge, Presiding
Argued and Submitted
August 9, 2013—Pasadena, California
Filed November 22, 2013
Before: Richard C. Tallman, Richard R. Clifton,
and Consuelo M. Callahan, Circuit Judges.
Opinion by Judge Callahan
2 HANA FINANCIAL V. HANA BANK
SUMMARY*
Trademark
Affirming the district court’s judgment after trial, the
panel held that the properly-instructed jury was entitled to
make the fact finding that the doctrine of tacking applied to
establish the defendant’s priority as the first to use a
trademark in the sale of goods or services.
The tacking doctrine allows a party to “tack” the date of
the user’s first use of a mark onto a subsequent mark to
establish trademark priority, and thus ownership, where the
two marks are so similar that consumers would generally
regard them as being the same. The panel held that, while the
evidence could be construed to support the plaintiff’s
position, the plaintiff did not make the required showing, as
the losing party in a jury trial, that its interpretation of the
evidence was the only reasonable one. The panel held that
the jury received an instruction that correctly conveyed the
narrowness of the tacking doctrine, and it could have
reasonably concluded that the ordinary purchasers of the
financial services at issue likely had a consistent, continuous
commercial impression of the services the defendant offered
and their origin. The panel rejected the argument that the
defendant abandoned the mark.
*
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
HANA FINANCIAL V. HANA BANK 3
COUNSEL
Steven E. Shapiro (argued), Kim, Shapiro, Park, & Lee, Los
Angeles, California, for Plaintiff-Appellant.
Carlo F. Van den Bosch (argued), Robert D. Rose, and
Michelle LaVoie Wisniewski, Sheppard Mullin Richter &
Hampton LLP, Costa Mesa, California, for Defendant-
Appellee.
OPINION
CALLAHAN, Circuit Judge:
A party claiming trademark ownership must establish that
it was the first to use the mark in the sale of goods or
services. This concept is known as trademark “priority.”
One of the ways that a party may establish priority is through
the constructive use doctrine known as “tacking.” Tacking
allows a party to “tack” the date of the user’s first use of a
mark onto a subsequent mark to establish priority where the
two marks are so similar that consumers would generally
regard them as being the same.
We have previously indicated that tacking only applies
in “exceptionally narrow” circumstances, Brookfield
Communications, Inc. v. West Coast Entertainment Corp.,
174 F.3d 1036, 1047 (9th Cir. 1999), and is properly resolved
“as a matter of law if reasonable minds cannot differ and the
evidence permits only one conclusion,” One Industries, LLC
v. Jim O’Neal Distribution, Inc., 578 F.3d 1154, 1160 (9th
Cir. 2009). Nonetheless, the rule in our circuit is that tacking
“requires a highly fact-sensitive inquiry” generally reserved
4 HANA FINANCIAL V. HANA BANK
for the jury. Id. On the facts of this case, we conclude that
the properly-instructed jury was entitled to find that the
doctrine applied.
I
A
The Korean word pronounced as “hana” means “number
one,” “first,” “top,” or “unity.” The parties in this dispute
both use the English word “Hana” in their names and offer
financial services in the United States. Defendant-Appellee
Hana Bank (the “Bank”) is a Korean entity established in
1971 as Korea Investment Finance Corporation.1 In 1991, it
adopted its current name. Presently, it is the fourth largest
bank in Korea. Plaintiff-Appellant Hana Financial, Inc.
(“HFI”) is a California corporation that was incorporated on
August 15, 1994.
The principals of the two entities were no strangers. The
Bank’s Chairman, Seoung-Yu Kim, and HFI’s former CEO,
Charles Kim, met for the first time in 1985 and met at least
once per year thereafter until 2002, when Charles Kim
became seriously ill. During that time period, Charles Kim
affectionately referred to Seoung-Yu Kim as “big brother.”
1
Hana Financial Group, a defendant in the underlying action, was
incorporated as the Bank’s holding company in 2005, but it does not
provide services in the United States or direct the Bank’s activities in the
United States. The district court dismissed it from the action at the close
of evidence, and we do not understand HFI’s appeal to encompass that
ruling.
HANA FINANCIAL V. HANA BANK 5
Seoung-Yu Kim also knew HFI’s current CEO, Sunnie Kim,2
and met with her annually from 2004 through 2006.
In 1991, Charles Kim and Sunnie Kim were working at an
American bank. At that time, the Bank was considering
offering services to Korean Americans living in Los Angeles
through a partner. Charles Kim and Sunnie Kim met with
Seoung-Yu Kim to discuss a potential equity investment and
strategic alliance. To that end, the companies executed a non-
binding memorandum of understanding. The deal, however,
was never completed. It was initially delayed by regulatory
issues, and after the 1992 Los Angeles riots, the Bank decided
it would take a “wait and see” approach.
In May 1994, the Bank acted on its plan to extend its
services to the United States, establishing the “Hana Overseas
Korean Club” (the “Club”) to provide financial services to
Korean expatriates. The Club’s target customer base
consisted of Korean Americans living in the United States,
particularly in certain areas, such as Southern California, New
Jersey, Chicago, and San Francisco. That July, the Bank
published advertisements for the Club in several Korean-
language newspapers in major cities throughout the United
States, including the Los Angeles edition of the Korea Times.
The advertisements included the name “HANA Overseas
Korean Club” in English. The names “Hana Overseas
Korean Club” and “Hana Bank” also appeared in Korean,
along with the Hana Bank logo, which is sometimes called
the “dancing man.” The dancing man logo has not changed
since then. The Bank subsequently received a number of
applications for the Club from customers in the United States.
2
“Kim” is a very common surname in Korea and among Korean
Americans. The individuals discussed here are not related.
6 HANA FINANCIAL V. HANA BANK
The application materials included the name “Hana Overseas
Korean Club” in English and “Hana Bank” in Korean next to
the dancing man logo.
HFI came into existence one month later. Its Articles of
Incorporation indicated that it could engage in lawful acts
“other than the banking business.” It began using its
trademark in commerce the following year, on April 1, 1995.
On July 16, 1996, it obtained a federal trademark registration
for a pyramid logo with the words “Hana Financial” for use
in connection with factoring3 and certain other financial
services. HFI advertised in Korean-language newspapers
(including the Los Angeles edition of the Korea Times), other
major newspapers, and on television. Its customers were
primarily Korean Americans, but its customer base eventually
expanded to include non-Korean Americans, who may have
even constituted a majority of its customers at the time of
trial.
In 1995, Charles Kim showed Seoung-Yu Kim a copy of
his HFI business card. Seoung-Yu Kim asked Charles Kim
why he was using the “Hana” mark without permission.
Charles Kim stated that he thought it was a “wonderful”
name. He explained that HFI would only be engaged in
factoring and would not be providing banking services, so
there would be no overlap in the two companies’ services.
Meanwhile, the Bank continued operating the Club in the
United States. Its initial customers included individuals in
3
“Factoring” refers to accounts receivable management. Essentially,
companies like HFI loan money to their clients, who are manufacturers,
based on the manufacturers’ purchase orders, and then collect the money
from the buyers. The buyers’ promissory notes may be sold as securities.
HANA FINANCIAL V. HANA BANK 7
several states, at least one of whom remained a customer
through the time of the trial. From 1994 onward, the Bank
wired money to its customers in the United States “almost
every day” – totaling over $37 million between 2002 and
2007 – and accepted over 11,500 applications. In 2000, the
Bank changed the Club’s name to the “Hana World Center.”
In 2001, the Bank sought to register its trademark but was
unable to do so, at least in part due to HFI’s mark. The Bank
contacted HFI about the issue, but they were unable to
resolve it. In 2002, the Bank began operating an agency in
New York under its own name.
B
On March 8, 2007, HFI filed its complaint alleging
trademark infringement and related claims. In essence, HFI
contended that the Bank’s use of its “Hana Bank” mark
infringed HFI’s “Hana Financial” mark because its use of the
word “Hana” in connection with financial services would
likely cause confusion. In response, the Bank sought
cancellation of HFI’s trademark based on HFI’s alleged
awareness of the Bank’s superior rights, and the Bank also
asserted the equitable defenses of laches and unclean hands.
On January 7, 2008, the district court granted the Bank’s
motion for summary judgment on trademark priority. The
district court also granted HFI’s motion for summary
judgment on the Bank’s cancellation counterclaim. Both
parties appealed.
On October 4, 2010, we reversed on priority, finding that
the Bank’s advertisements and other exhibits purportedly
demonstrating priority were “relevant,” but were also subject
to competing inferences or were not presented in admissible
8 HANA FINANCIAL V. HANA BANK
form. Hana Fin., Inc. v. Hana Bank, 398 Fed. App’x 257,
258–59 (9th Cir. 2010). Accordingly, we remanded for trial.
Id. at 259. We also affirmed the district court’s grant of
summary judgment on the Bank’s cancellation counterclaim,
noting that HFI’s alleged knowledge of the Bank’s mark was
insufficient to establish the requisite element of fraudulent
intent. Id.
On remand, HFI filed a motion in limine seeking to
exclude the Club advertisements and related exhibits, arguing
that the evidence was irrelevant. Specifically, it argued: (a)
that the Bank’s mark and the Club’s mark were not virtually
identical and therefore, tacking for the purposes of
establishing trademark priority was improper; and (b) in the
alternative, that the Bank had abandoned the mark in 1999 or
2000. The district court denied the motion.4
The trademark infringement claims were triable by jury
and the court also submitted the Bank’s laches and unclean
hands defenses to the jury for an advisory verdict. The trial
commenced on May 24, 2011. At the close of evidence, HFI
moved for judgment as a matter of law arguing that the
4
As the district court recognized, HFI was, in essence, improperly
seeking a dispositive ruling on trademark priority through a motion in
limine. “A motion in limine is a procedural mechanism to limit in
advance testimony or evidence in a particular area.” United States v.
Heller, 551 F.3d 1108, 1111 (9th Cir. 2009) (citation omitted); see also
Goodman v. Las Vegas Metro. Police Dep’t, No. 2:11-cv-1447-MMD-
CWH, __ F. Supp. 2d __, 2013 WL 4006159, at *4 (D. Nev. Aug. 2,
2013) (setting forth the standards applicable to motions in limine). A
motion in limine is not the proper vehicle for seeking a dispositive ruling
on a claim, particularly after the deadline for filing such motions has
passed. See Dubner v. City & Cnty. of S.F., 266 F.3d 959, 968 (9th Cir.
2001).
HANA FINANCIAL V. HANA BANK 9
Defendants had presented “no evidence” on trademark
priority, laches, and unclean hands. The district court denied
the motion.
In the jury instructions, the district court explained:
A party may claim priority in a mark based on
the first use date of a similar but technically
distinct mark where the previously used mark
is the legal equivalent of the mark in question
or indistinguishable therefrom such that
consumers consider both as the same mark.
This is called “tacking.” The marks must
create the same, continuing commercial
impression, and the later mark should not
materially differ from or alter the character of
the mark attempted to be tacked.
HFI had proposed a similar instruction and did not object.
Moreover, in its closing argument, HFI argued that tacking
was inapplicable because the Bank and the Club had
“completely different” names.
The jury found that the Bank had “used its mark in
commerce in the United States beginning prior to April 1,
1995, and continuously since that date.” It also found, in its
advisory capacity, that the Bank had proven its laches
defense, but not its unclean hands defense. The court
subsequently issued findings of fact and conclusions of law,
determining, among other things, that HFI’s claims were
barred by both laches and unclean hands.
After the district court issued its decision, HFI renewed its
motion for judgment as a matter of law and moved for a new
10 HANA FINANCIAL V. HANA BANK
trial, challenging the priority verdict as well as the laches and
unclean hands decisions. The district court denied the
motion, noting that HFI had failed to cite any supporting legal
authority. It also rejected HFI’s motion on the merits, noting
that: (a) we had previously remanded the case for trial on the
priority issue; (b) there was sufficient evidence to support the
jury’s verdict on priority; and (c) the court had given a
tacking instruction similar to the one HFI had requested. HFI
now appeals, and we have jurisdiction pursuant to 28 U.S.C.
§ 1291.
II
We review the district court’s decision to deny a motion
for judgment as a matter of law de novo. First Nat’l Mortg.
Co. v. Fed. Realty Inv. Trust, 631 F.3d 1058, 1067 (9th Cir.
2011). In doing so, however, we must “view the evidence in
the light most favorable to the party in whose favor the jury
returned a verdict and draw all reasonable inferences in its
favor.” Id. “The verdict will be upheld if it is supported by
substantial evidence, even if it is also possible to draw a
contrary conclusion.” Id. (internal quotation marks omitted).
III
“It is axiomatic in trademark law that the standard test of
ownership is priority of use.” Brookfield Commc’ns, Inc. v.
W. Coast Entmt. Corp., 174 F.3d 1036, 1047 (9th Cir. 1999)
(quoting Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d
1217, 1219 (9th Cir. 1996)). “To acquire ownership of a
trademark it is not enough to have invented the mark first or
even to have registered it first; the party claiming ownership
must have been the first to actually use the mark in the sale of
goods or services.” Id. Here, the priority issue turns on
HANA FINANCIAL V. HANA BANK 11
whether it was permissible for the jury to find that the Bank
could “tack” its use of its present “Hana Bank” mark to its
use of the Club mark beginning in 1994.
A trademark user may “tack” the date of the user’s first
use of an earlier mark onto a subsequent mark to establish
priority where the “two marks are so similar that consumers
generally would regard them as essentially the same.” Id. at
1048. “Tacking” is permitted because “[w]ithout tacking, a
trademark owner’s priority in his mark would be reduced
each time he made the slightest alteration to the mark, which
would discourage him from altering the mark in response to
changing consumer preferences, evolving aesthetic
developments, or new advertising and marketing styles.” Id.
Moreover, “[g]iving the trademark owner the same rights in
the new mark as he has in the old helps to protect source-
identifying trademarks from appropriation by competitors and
thus furthers the trademark law’s objective of reducing the
costs that customers incur in shopping and making purchasing
decisions.” Id.
The fact that a mark contains a portion of an earlier mark
is not sufficient to establish tacking; a tacking analysis must
consider the marks “in their entirety to determine whether
each conveys the same commercial impression” such that
they “possess the same connotation in context.” Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1160 (Fed.
Cir. 1991). “The ‘commercial impression’ of a trademark is
the meaning or idea it conveys or the mental reaction it
evokes.” See Gideon Mark & Jacob Jacoby, Continuing
Commercial Impression: Applications and Measurement,
10 Marq. Intell. Prop. L. Rev. 433, 434 (2006) (citing Spice
Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 1296
(C.C.P.A. 1974)). “‘Commercial impression,’ like most
12 HANA FINANCIAL V. HANA BANK
issues in trademark law, should be determined from the
perspective of the ordinary purchaser of these kinds of goods
or services.” 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 17:26 (4th ed. 2013)
[hereinafter, “McCarthy”]. In determining whether the marks
have the same commercial impression, the visual or aural
appearance may be instructive. See Van Dyne-Crotty,
926 F.2d at 1159. Commercial impression, however, should
be resolved by considering a range of evidence, ideally
including consumer survey evidence. See Mark & Jacoby,
supra, at 457; McCarthy § 17:26. In our circuit, whether
consumers would consider the two marks as being essentially
the same is a question of fact.5 One Indus., 578 F.3d at 1160.
Like our sister circuits, we have indicated that tacking
applies only in “exceptionally narrow” circumstances.
Brookfield, 174 F.3d at 1047–48. We have explained:
The standard for tacking . . . is exceedingly
strict: The marks must create the same,
continuing commercial impression, and the
later mark should not materially differ from or
alter the character of the mark attempted to be
tacked. In other words, the previously used
5
This is the subject of a circuit split. The Federal and Sixth Circuits
evaluate tacking as a question of law consistent with their view that the
analogous trademark issue of likelihood of consumer confusion is a
question of law. See Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 759
(9th Cir. 2006). As we view likelihood of confusion as a question of fact,
we have also determined that tacking presents a question of fact. Id.Although the other circuits have not decided the issue yet, the district
courts in circuits where likelihood of confusion is a question of fact also
treat tacking as a question of fact. See, e.g., Specht v. Google Inc., 758 F.
Supp. 2d 570, 583 (N.D. Ill. 2010).
HANA FINANCIAL V. HANA BANK 13
mark must be the legal equivalent of the mark
in question or indistinguishable therefrom,
and the consumer should consider both as the
same mark. This standard is considerably
higher than the standard for likelihood of
confusion.
Id. at 1048 (citations and internal quotation marks omitted).
Our decisions demonstrate the narrowness of the doctrine.
In Brookfield, 174 F.3d at 1048–49, we reversed the district
court’s denial of a preliminary injunction based in part on the
fact that the plaintiff had failed to make a sufficient showing
that it could tack “The Movie Buff’s Movie Store” onto its
later mark, “moviebuff.com.” In Quiksilver, 466 F.3d at
759–60, we reversed the district court’s decision finding that
tacking applied and remanded where there was “evidence
from which a reasonable jury could easily conclude that
‘QUIKSILVER ROXY’ and ‘ROXY’ did not create the
‘same, continuing commercial impression’ at the time the
‘ROXY’ brand was introduced.” In One Industries, 578 F.3d
at 1161–62, we found that the district court correctly
determined that the plaintiff could not satisfy the tacking test
where its angular “O’” mark was materially different from its
rounded “O’” mark.6
Further underscoring the limited reach of the doctrine, we
have repeatedly cited a group of out-of-circuit cases where a
6
In One Industries, we affirmed despite the fact that the plaintiff did not
have the benefit of discovery or other factual development. Id. at 1160.
However, as we explained, the plaintiff had “acquiesced” to resolving the
tacking issue on the pre-discovery motion for a more definite statement by
failing to object. Id. at 1160 & n.1.
14 HANA FINANCIAL V. HANA BANK
court or the Trademark Trial and Appeal Board found that the
doctrine did not apply. One Indus., 578 F.3d at 1161(collecting cases); Brookfield, 174 F.3d at 1048–49
(collecting cases). This group of decisions7 emphasizes the
narrowness of the tacking doctrine, which is why we
previously acknowledged them with approval. They do not,
however, support HFI’s position in this case as strongly as it
might appear at first glance. For example, in KeyCorp v. Key
Bank & Trust, 99 F. Supp. 2d 814, 820 (N.D. Ohio 2000), the
court determined that “KEY FEDERAL SAVINGS & LOAN
ASSOCIATION,” “KEY FEDERAL SAVINGS BANK,” and
“KEY BANK & TRUST” were “substantially different” and
the defendant could not rely on tacking to establish priority.
The court observed that the defendant had changed its name
in order to disassociate itself from the savings and loan
scandals of the 1980s and indicate changes in its legal status.
Id. Accordingly, the court found the defendant’s “claim that
its name changes were not noticeable to customers [to be]
somewhat disingenuous given that at least its first name
7
See Van Dyne-Crotty, 926 F.2d at 1160 (determining that “CLOTHES
THAT WORK” was not the legal equivalent of “CLOTHES THAT
WORK. FOR THE WORK YOU DO” for tacking purposes); Am. Paging
Inc. v. Am. Mobilphone Inc., 13 U.S.P.Q.2d 2036, 2038–39 (T.T.A.B.
1989) (finding that “AMERICAN MOBILPHONE” and “AMERICAN
MOBILPHONE PAGING” were not legal equivalents), aff’d 923 F.2d
869 (Fed. Cir. 1990). The other cases involved graphically distinctive
marks, and accordingly, offer less guidance here as the graphical aspect
of the marks (i.e., the dancing man logo) did not change. See Data
Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 624 (6th Cir.
1998) (noting that “the two marks do not look alike”); see also
3 McCarthy § 17:27 (displaying the logo at issue in Data Concepts); Pro-
Cuts v. Schliz-Price Enters. Inc., 27 U.S.P.Q.2d 1224, 1227 (T.T.A.B.
1993) (displaying images of the marks and remarking that there was “a
very material difference between them because of their different design
features”).
HANA FINANCIAL V. HANA BANK 15
change was made in the hope that its customers would
distinguish its former name from its new one.” Id.In contrast, we have cited Hess’s of Allentown, Inc. v.
National Bellas Hess, Inc., 169 U.S.P.Q. 673 (T.T.A.B.
1971), as an example of a case where tacking was
appropriate. See One Indus., 578 F.3d at 1161; Brookfield,
174 F.3d at 1048. In Hess’s, the petitioner had originally
incorporated and conducted business as “Hess Brothers,” but
later changed its name to “Hess’s of Allentown, Inc.,” while
emphasizing and promoting itself as “Hess” or “Hess’s.”
Hess’s of Allentown, 169 U.S.P.Q. at 674–75. The Board
found that there could be “no question but that ‘HESS’ is the
most significant portion of the trade name ‘HESS
BROTHERS’ and that it is this portion which petitioner has
emphasized throughout the years and that portion by which
it has been recognized and referred to within and without its
corporate structure.” Id. at 677. There could be “no
distinction for legal or practical purposes” between “Hess”
and “Hess’s,” particularly given that the record indicated that
the petitioner changed the name “to reflect the manner in
which the purchasing public had come to refer to and identify
its store and operations.” Id.8
Here, reasonable minds could disagree on whether the
Bank’s marks were materially different. In isolation, the
words “Hana Overseas Korean Club,” “Hana World Center,”
8
Similarly, in American Security Bank v. American Security & Trust
Co., 571 F.2d 564, 567 (C.C.P.A. 1978), the court concluded that
“AMERICAN SECURITY” and “AMERICAN SECURITY BANK” were
legally equivalent because “the word ‘bank’ is purely descriptive and adds
nothing to the origin-indicating significance of AMERICAN
SECURITY.”
16 HANA FINANCIAL V. HANA BANK
and “Hana Bank” seem aurally and visually distinguishable.
It is not necessarily clear from their names that these entities
offer the same services. Moreover, there was no survey
evidence indicating that the marks convey the same,
continuing commercial impression.9
That the evidence could be construed to support HFI’s
position, however, is not enough for it to prevail. As the
losing party in a jury trial, HFI must show that its
interpretation of the evidence is the only reasonable one. See
Martin v. Cal. Dep’t of Vet. Affairs, 560 F.3d 1042, 1046 (9th
Cir. 2009). Here, HFI has not satisfied that standard.
Tacking requires a highly fact-sensitive inquiry, and the jury
decided the issue after receiving an instruction that correctly
conveyed the narrowness of the doctrine. In this respect, our
characterization of tacking as a question of fact is arguably
dispositive. Cf. Van Dyne-Crotty, 926 F.2d at 1159(observing that in the Federal Circuit, a determination that
two marks are not legal equivalents is a legal determination
that is not entitled to deference).
The evidence showed that the Bank offered financial
services to Korean-speaking American consumers. It
advertised in Korean-language newspapers, including the
name “Hana Overseas Korean Club” in English next to its
“Hana Bank” mark in Korean. Its distinctive dancing man
logo – which has not changed – appeared in all of the
9
At oral argument, the Bank’s counsel agreed that survey evidence
would have been useful, but indicated that it was not possible for the Bank
– which had been contending that its marks were the same – to gather such
evidence because HFI did not suggest that the Bank’s marks were
materially different and that the Bank could not rely on tacking until the
“eleventh hour.” As noted above, the record supports that assessment.
HANA FINANCIAL V. HANA BANK 17
advertisements. The application forms contained similar
information. The ordinary purchasers of the Bank’s services
were likely aware of the Bank and its services from their
experiences in Korea, given that by 1994, it had been known
as “Hana Bank” for several years.
The jury could have reasonably concluded that the
ordinary purchasers of the financial services at issue likely
had a consistent, continuous commercial impression of the
services the Bank offered and their origin. The ordinary
purchasers of these services were Korean-speaking
consumers (consisting of Korean expatriates and Korean
Americans) that likely had a preexisting awareness of the
Bank due to its ongoing business presence in Korea. The jury
could have reasonably concluded that these purchasers
associated “Hana Bank” with the “Hana Overseas Korean
Club” when “Hana Overseas Korean Club” appeared, in
English, next to “Hana Bank,” in Korean, and the dancing
man logo in the advertisements. In that context, “Hana” was
arguably the most significant portion of the trade name, as the
ordinary purchasers would have then made the association
between the English word “Hana” and the Bank’s Korean
name. See Hess’s of Allentown, 169 U.S.P.Q. at 677. Thus,
they would have regarded the Bank’s name as “Hana Bank”
in English rather than some other possible translation, such as
“One Bank.”10 “Overseas Korean Club” and “World Center”
10
The Bank invokes the doctrine of foreign equivalents in support of its
arguments. That doctrine is typically used to translate foreign words into
English for the purposes of determining the likelihood that the foreign-
language mark will be confused with an English-language mark, as well
as determining whether it is generic or descriptive. See 4 McCarthy
§ 23:36. We need not determine whether the doctrine applies in the
tacking context as there was sufficient evidence to support the jury’s
18 HANA FINANCIAL V. HANA BANK
would then be non-essential as they merely conveyed what
the ordinary purchasers would have already surmised: that the
well-known Korean bank was offering financial services to
individuals like them living outside of Korea. Cf. Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 955
(7th Cir. 1992) (concluding that the dropping of non-essential
words which did not change the buyers’ “basic, overall
commercial impression” did not constitute abandonment).
In light of this combination of facts, the jury could
reasonably conclude that throughout the time period at issue,
the ordinary purchasers of these services had the continuous
impression that the advertised services were being offered by
the Bank and that there were no material differences between
the marks. In other words, viewing the marks in context and
in their entirety, the ordinary purchasers could perceive them
as conveying the same idea or meaning or evoking the same
mental reaction. Consequently, there was sufficient evidence
to support the jury’s verdict on trademark priority.
At oral argument, HFI’s counsel further argued that if the
Bank were to prevail, it would create uncertainty because
there would have been no way for an entity like HFI to learn
about the Bank’s mark without expending significant
resources. The registration process is the typical means for
determining whether there is a preexisting mark. It is well-
settled, however, that registration is not necessarily
dispositive of ownership. See Brookfield, 174 F.3d at 1047(indicating that registration is prima facie evidence of the
validity of the registered mark, but it may be rebutted by
establishing priority of use). To the extent that the resulting
implicit finding that the Bank’s marks created a consistent commercial
impression regardless of the doctrine’s applicability.
HANA FINANCIAL V. HANA BANK 19
uncertainty is a problem, it already exists. In any event, this
abstract concern is irrelevant in this case given that HFI
actually knew about the Bank’s mark and its activities in the
United States.
IV
HFI also argues that the Bank “abandoned” the Club’s
mark in 1999 or 2000. A trademark owner loses its exclusive
rights if it fails to actually use the mark. Sands, Taylor &
Wood, 978 F.2d at 954–55 (citing 15 U.S.C. § 1127). “To
show abandonment by nonuse, the party claiming
abandonment must prove both the trademark owner’s (1)
‘discontinuance of trademark use’ and (2) ‘intent not to
resume such use.’” Grocery Outlet Inc. v. Albertson’s Inc.,
497 F.3d 949, 951 (9th Cir. 2007) (citation omitted). “So
long as the owner continues use of the ‘key element’ of the
registered mark, courts generally will not find abandonment.”
Sands, Taylor & Wood, 978 F.2d at 955 (citation omitted).
There was evidence at trial that the Bank maintained
customers in the United States from 1994 through the present
and made wire transfers nearly every day. HFI may be
referring to the fact that the Club’s name changed in 2000 to
the “Hana World Center.” This argument was at least
implicitly considered and rejected by the jury as part of its
evaluation of HFI’s tacking argument. Accordingly, for the
same reasons that we find HFI’s tacking arguments
unavailing, we also reject HFI’s abandonment argument.
V
We reiterate that tacking applies only in rare
circumstances and our decision here does not alter the strict
20 HANA FINANCIAL V. HANA BANK
tacking standard. But the fact that the doctrine rarely applies
does not mean that it never will. Indeed, the tacking doctrine
exists for compelling reasons: to protect consumers from
being misled about the source of products and facilitate their
purchasing decisions. In our circuit, tacking presents a
question of fact that must ultimately be decided by the jury
unless the evidence is so strong that it permits only one
conclusion. In this case, the district court properly instructed
the jury and allowed it to decide the issue. HFI has not
shown that the jury’s decision was unreasonable. While other
courts, which consider tacking a question of law, might reach
a different conclusion on these facts, we are bound by our
decisions holding that tacking is a question of fact. We
accordingly affirm the district court’s decision denying HFI’s
motion for judgment as a matter of law on trademark priority
and uphold the jury’s verdict. In light of our conclusion on
trademark priority, we need not and do not reach the Bank’s
equitable defenses.11
AFFIRMED.
11
We note that HFI specifically requested that we rule on trademark
priority as it may have continuing relevance to the parties.