Hana Financial, Inc. v. Hana Bank

In 1971, Hana Bank (defendant) was incorporated in Korea under the name “Korea Investment Finance Corporation.” In 1994, Hana Bank began offering financial services to Koreans living in the United States using the name “Hana Overseas Korean Club.” Hana Bank’s advertisements for the Hana Overseas Korean Club services included references in Korean to “Hana Bank.” In 2002, Hana Bank began operating a physical bank in the United States called “Hana Bank.” Another banking institution, Hana Financial, Inc. (Hana Financial) (plaintiff) was incorporated in California in 1994, began using the name “Hana Financial” in 1995, and registered a pyramid logo together with the name “Hana Financial” as a federal trademark in 1996. In 2007, Hana Financial sued Hana Bank for trademark infringement. Hana Bank argued that its unregistered mark had priority to Hana Financial’s mark pursuant to the tacking doctrine and moved for summary judgment. The district court agreed and granted Hana Bank’s motion for summary judgment on infringement. The Ninth Circuit Court of Appeals found that the question of whether the tacking doctrine applied to give Hana Bank priority was a genuine issue of material fact that must be decided by a fact finder. The Ninth Circuit then reversed the district court’s judgment and remanded the case for trial. At trial, the jury found for Hana Bank. Hana Financial moved to have the jury verdict overturned and to have judgment entered for Hana Financial as a matter of law, but the district court denied the motion. Hana Financial appealed. The Ninth Circuit affirmed, holding that whether the tacking doctrine applies is a question of fact that is appropriately decided by a jury. Because of a circuit split, the Supreme Court granted certiorari to review the issue.