(Slip Opinion) OCTOBER TERM, 2014 1 

Syllabus 

NOTE: Where it is feasible, a syllabus (headnote) will be released, as is

being done in connection with this case, at the time the opinion is issued.

The syllabus constitutes no part of the opinion of the Court but has been

prepared by the Reporter of Decisions for the convenience of the reader. 

See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337. 

SUPREME COURT OF THE UNITED STATES 

Syllabus 

HANA FINANCIAL, INC. v. HANA BANK ET AL. 

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR 

THE NINTH CIRCUIT 

No. 13–1211. Argued December 3, 2014—Decided January 21, 2015 

Petitioner, Hana Financial, Inc., and respondent Hana Bank both provide financial services to individuals in the United States. When 

Hana Financial sued Hana Bank for trademark infringement, Hana 

Bank invoked in defense the tacking doctrine, under which lower 

courts have provided that a trademark user may make certain modifications to its mark over time while, in limited circumstances, retaining its priority position. Petitioner’s claim was tried before a jury, and the District Court adopted in substantial part the jury 

instruction on tacking proposed by petitioner. The jury returned a

verdict in respondent’s favor. Affirming, the Ninth Circuit explained

that the tacking inquiry was an exceptionally limited and highly factsensitive matter reserved for juries, not judges. 

Held: Whether two trademarks may be tacked for purposes of determining priority is a question for the jury. Pp. 3–8.

(a) Lower courts have held that two marks may be tacked when 

they are considered to be “legal equivalents,” i.e., they “create the 

same, continuing commercial impression.” Van Dyne-Crotty, Inc. v. 

Wear-Guard Corp. 926 F. 2d 1156, 1159. And “commercial impression” “must be viewed through the eyes of a consumer.” DuoProSS 

Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F. 3d 1247, 1253. 

When the relevant question is how an ordinary person or community

would make an assessment, the jury is generally the decisionmaker

that ought to provide the fact-intensive answer. See, e.g., United 

States v. Gaudin, 515 U. S. 506, 512. Pp. 3–5.

(b) Each of petitioner’s four arguments in support of its view that 

tacking is a question of law to be resolved by a judge is unpersuasive. 

First, it may be true that the “legal equivalents” test involves a legal

standard, but such “ ‘mixed question[s] of law and fact,’ [have] typi-
 

 

 

2 HANA FINANCIAL, INC. v. HANA BANK 

Syllabus 

cally been resolved by juries.” Gaudin, 515 U. S., at 512. And any

concern that a jury may improperly apply the relevant legal standard

can be remedied by crafting careful jury instructions. Second, petitioner offers no support for its claim that tacking determinations create new law in a unique way that requires those determinations to be

reserved for judges. Third, petitioner worries that the predictability

required for a functioning trademark system will be absent if tacking 

questions are assigned to juries, but offers no reason why trademark

tacking should be treated differently from the tort, contract, and 

criminal justice systems, where juries answer often-dispositive factual questions or make dispositive applications of legal standards to

facts. Finally, in arguing that judges have historically resolved tacking disputes, petitioner points to cases arising in the contexts of

bench trials, summary judgment, and the like, in which it is undisputed that judges may resolve tacking disputes. Pp. 5–8. 

735 F. 3d. 1158, affirmed. 

SOTOMAYOR, J., delivered the opinion for a unanimous Court. 
 

 

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Cite as: 574 U. S. ____ (2015) 1 

Opinion of the Court 

NOTICE: This opinion is subject to formal revision before publication in the

preliminary print of the United States Reports. Readers are requested to

notify the Reporter of Decisions, Supreme Court of the United States, Washington, D. C. 20543, of any typographical or other formal errors, in order

that corrections may be made before the preliminary print goes to press. 

SUPREME COURT OF THE UNITED STATES 

No. 13–1211 

HANA FINANCIAL, INC., PETITIONER v. HANA 

BANK, ET AL. 

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF 

APPEALS FOR THE NINTH CIRCUIT
 

[January 21, 2015]

 JUSTICE SOTOMAYOR delivered the opinion of the Court. 

Rights in a trademark are determined by the date of the

mark’s first use in commerce. The party who first uses a

mark in commerce is said to have priority over other 

users. Recognizing that trademark users ought to be 

permitted to make certain modifications to their marks 

over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a 

new mark with the priority position of an older mark. 

This doctrine is called “tacking,” and lower courts have 

found tacking to be available when the original and revised marks are “legal equivalents” in that they create the 

same, continuing commercial impression. The question

presented here is whether a judge or a jury should determine whether tacking is available in a given case. Because the tacking inquiry operates from the perspective of 

an ordinary purchaser or consumer, we hold that a jury 

should make this determination. 

I 

Petitioner, Hana Financial, and respondent Hana Bank, 

a subsidiary of respondent Hana Financial Group, both 
 

2 HANA FINANCIAL, INC. v. HANA BANK 

Opinion of the Court 

provide financial services to individuals in the United

States. Hana Bank (hereinafter respondent) was established in 1971 as a Korean entity called Korea Investment

Finance Corporation. In 1991, that entity changed its 

name to “Hana Bank” and began using this name in Korea. In 1994, it established a service called Hana Overseas Korean Club to provide financial services to Korean

expatriates, and specifically advertised that service in the

United States. Those advertisements used the name 

“Hana Overseas Korean Club” in both English and Korean, and included the name “Hana Bank” in Korean and 

respondent’s “dancing man” logo. See App. 206. In 2000, 

respondent changed the name of the Hana Overseas Korean Club to “Hana World Center.” In 2002, respondent

began operating a bank in the United States under the 

name “Hana Bank.” This enterprise amounted to respondent’s first physical presence in the United States. 

Petitioner was established in 1994 as a California corporation called Hana Financial. It began using that name

and an associated trademark in commerce in 1995. In 

1996, it obtained a federal trademark registration for a 

pyramid logo with the name “Hana Financial” for use in 

connection with financial services. 

In 2007, petitioner sued respondent, alleging infringement of its “Hana Financial” mark. As relevant here, 

respondent denied infringement by invoking the tacking 

doctrine and claiming that it had priority. The District 

Court initially granted summary judgment to respondent 

on the infringement claim, but the Court of Appeals for 

the Ninth Circuit reversed, holding that there were genuine issues of material fact as to priority. On remand, the 

infringement claim was tried before a jury. The District 

Court adopted in substantial part the jury instruction 

proposed by petitioner, and, without objection from petitioner, instructed the jury as follows: 
Cite as: 574 U. S. ____ (2015) 3 

Opinion of the Court 

“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.” App. 173; see id., at 140 (proposed 

instruction). 

The jury returned a verdict in favor of respondent, and the

District Court denied petitioner’s motion for judgment as a

matter of law. 

The Court of Appeals for the Ninth Circuit affirmed. 

The court explained that, although tacking applies only in

“exceptionally narrow circumstances,” 735 F. 3d 1158, 

1160 (2013) (internal quotation marks omitted), it “‘requires a highly fact-sensitive inquiry’” that is “reserved for 

the jury,” ibid. (quoting One Industries, LLC v. Jim O’Neal 

Distributing, Inc., 578 F. 3d 1154, 1160 (CA9 2009)). The 

court acknowledged, however, that whether tacking

should be decided by juries or judges “is the subject of a

circuit split.” 735 F. 3d, at 1164, n. 5 (noting that the 

Federal and Sixth Circuits “evaluate tacking as a question

of law”); see Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 

926 F. 2d 1156, 1159 (CA Fed. 1991); Data Concepts, Inc. 

v. Digital Consulting, Inc., 150 F. 3d 620, 623 (CA6 1998).

We granted certiorari, 573 U. S. ___ (2014), and now 

affirm. 

II 

As discussed above, the general rule adopted by lower

courts has been that two marks may be tacked when the

original and revised marks are “legal equivalents.” This 

term refers to two marks that “create the same, continuing 
 

 

4 HANA FINANCIAL, INC. v. HANA BANK 

Opinion of the Court 

commercial impression” so that consumers “consider both 

as the same mark.”1 Van Dyne-Crotty, Inc., 926 F. 2d, at 

1159 (internal quotation marks omitted); see, e.g., George 

& Co., LLC v. Imagination Entertainment Ltd., 575 F. 3d 

383, 402 (CA4 2009); Brookfield Communications, Inc. v. 

West Coast Entertainment Corp., 174 F. 3d 1036, 1047– 

1048 (CA9 1999); Data Concepts, Inc., 150 F. 3d, at 623. 

“The commercial impression that a mark conveys must be

viewed through the eyes of a consumer.” DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F. 3d 1247, 

1253 (CA Fed. 2012); see 3 J. McCarthy, Trademarks and

Unfair Competition §17:26, p. 17–71 (4th ed. 2014) 

(“‘Commercial impression,’ like most issues in trademark

law, should be determined from the perspective of the

ordinary purchaser of these kinds of goods or services”). 

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. Indeed, 

we have long recognized across a variety of doctrinal 

contexts that, when the relevant question is how an ordinary person or community would make an assessment, the

jury is generally the decisionmaker that ought to provide 

the fact-intensive answer. See, e.g., United States v. 

Gaudin, 515 U. S. 506, 512 (1995) (recognizing that “‘delicate assessments of the inferences a ‘reasonable [decisionmaker]’ would draw . . . [are] peculiarly one[s] for the

trier of fact’” (quoting TSC Industries, Inc. v. Northway, 

Inc., 426 U. S. 438, 450 (1976); first alteration in original); 

id., at 450, n. 12 (observing that the jury has a “unique

competence in applying the ‘reasonable man’ standard”); 

Hamling v. United States, 418 U. S. 87, 104–105 (1974) 

(emphasizing “the ability of the juror to ascertain the

sense of the ‘average person’” by drawing upon “his own 

—————— 

1The parties do not question the existence of the tacking doctrine or 

this substantive standard. 
Cite as: 574 U. S. ____ (2015) 5 

Opinion of the Court 

knowledge of the views of the average person in the

community or vicinage from which he comes” and his

“knowledge of the propensities of a ‘reasonable’ person”); 

Railroad Co. v. Stout, 17 Wall. 657, 664 (1874) (“It is

assumed that twelve men know more of the common 

affairs of life than does one man, [and] that they can draw

wiser and safer conclusions from admitted facts thus 

occurring than can a single judge”). 

This is certainly not to say that a judge may never

determine whether two marks may be tacked. If the facts 

warrant it, a judge may decide a tacking question on a 

motion for summary judgment or for judgment as a matter 

of law. See Fed. Rules Civ. Proc. 50, 56(a). And if the 

parties have opted to try their case before a judge, the 

judge may of course decide a tacking question in his or her 

factfinding capacity. We hold only that, when a jury trial 

has been requested and when the facts do not warrant 

entry of summary judgment or judgment as a matter of 

law, the question whether tacking is warranted must be

decided by a jury. 

III 

Attempting to overcome our conclusion, petitioner offers

four reasons why, in its view, tacking is a question of law 

that should be resolved by a judge. None persuades us.

Petitioner first observes that the “legal equivalents” test

involves the application of a legal standard. See Brief for 

Petitioner 20. True enough, but “the application-of-legalstandard-to-fact sort of question . . . , commonly called a

‘mixed question of law and fact,’ has typically been resolved by juries.” Gaudin, 515 U. S., at 512; see id., at 514 

(“[T]he jury’s constitutional responsibility is not merely to 

determine the facts, but to apply the law to those facts and

draw the ultimate conclusion . . .”); Miller v. Fenton, 474 

U. S. 104, 113 (1985) (“[A]n issue does not lose its factual 

character merely because its resolution is dispositive of 
 

 

 

6 HANA FINANCIAL, INC. v. HANA BANK 

Opinion of the Court 

the ultimate . . . question”). The “mixed” analysis that 

takes place during the tacking inquiry is no different. And 

insofar as petitioner is concerned that a jury may improperly apply the relevant legal standard, the solution is to

craft careful jury instructions that make that standard

clear. Here, however, petitioner can hardly criticize the 

instruction the District Court gave the jury, as it was

essentially the instruction petitioner proposed. 

Second, petitioner argues that tacking determinations 

will “create new law that will guide future tacking disputes”—a task reserved for judges. Brief for Petitioner 21. 

It is not at all clear, however, why a tacking determination

in a particular case will “create new law” any more than 

will a jury verdict in a tort case, a contract dispute, or a 

criminal proceeding. Petitioner insists that tacking questions “have to be” resolved by comparing two marks in a

given case “against those addressed in other tacking cases,” 

id., at 22, but we do not agree. Of course, in deciding 

summary judgment motions, or in making rulings in 

bench trials, judges may look to past cases holding that

trademark owners either were or were not entitled to 

tacking as a matter of law. But petitioner offers no support for the claim that tacking cases “have to be” resolved 

by reliance on precedent. Indeed, in many of the cases 

petitioner cites in support of this argument, the courts in

question relied on precedent only to define the relevant

legal standard. See, e.g., Specht v. Google Inc., 758 

F. Supp. 2d 570, 583–585 (ND Ill. 2010), aff ’d, 747 F. 3d 

929 (CA7 2014); Children’s Legal Servs. PLLC v. Kresch, 

2008 WL 1901245, *1–*2 (ED Mich., Apr. 25, 2008), aff’d 

sub nom. Children’s Legal Servs., P. L. L. C. v. Saiontz, 

Kirk & Miles, P. A., 2009 WL 1868809 (CA6, June 18, 

2009).2 

—————— 

2Our decision in Markman v. Westview Instruments, Inc., 517 U. S. 

370 (1996), is not to the contrary. In Markman, we held that the task 
 

Cite as: 574 U. S. ____ (2015) 7 

Opinion of the Court 

Third, and related, petitioner worries that the predictability required for a functioning trademark system will be 

absent if tacking questions are assigned to juries. See 

Brief for Petitioner 25–27. But, again, the same could be

said about the tort, contract, and criminal justice systems: 

In all of these areas, juries answer often-dispositive factual questions or make dispositive applications of legal 

standards to facts. The fact that another jury, hearing the 

same case, might reach a different conclusion may make 

the system “unpredictable,” but it has never stopped us

from employing juries in these analogous contexts. Petitioner has offered no reason why trademark tacking ought

to be treated differently. Moreover, decisionmaking in

fact-intensive disputes necessarily requires judgment

calls. Regardless of whether those judgment calls are 

made by juries or judges, they necessarily involve some

degree of uncertainty, particularly when they have to do

with how reasonable persons would behave. 

Finally, petitioner argues that, as a historical matter,

judges have resolved tacking disputes. See Brief for Petitioner 30–35. But petitioner relies on cases in which

judges have resolved tacking disputes in bench trials, at 

summary judgment, or the like. See, e.g., Drexel Enterprises, Inc. v. Richardson, 312 F. 2d 525, 526 (CA10 1962) 

(“[This action] was tried without a jury”); Perfectform 

Corp. v. Perfect Brassiere Co., 256 F. 2d 736, 738 (CA3 

1958) (“The district court dismissed the complaint”); John 

—————— 

of construing patent terms falls to judges and not to juries. We held as 

much because “[t]he construction of written instruments is one of those 

things that judges often do and are likely to do better than jurors 

unburdened by training in exegesis.” Id., at 388; see Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., ante, at 5. The tacking inquiry, by 

contrast, involves a factual judgment about whether two marks give the

same impression to consumers. Making that kind of judgment is, as

discussed above, not “one of those things that judges often do” better

than jurors. 
 

 

8 HANA FINANCIAL, INC. v. HANA BANK 

Opinion of the Court 

Morrell & Co. v. Hauser Packing Co., 20 F. 2d 713 (CA9 

1927) (“In the court below, there was a dismissal of both

the bill and of defendant’s counterclaim”); Beech-Nut 

Packing Co. v. P. Lorillard Co., 299 F. 834, 835 (NJ 1924) 

(equitable claims tried solely before a judge). As we have 

noted, it is undisputed that judges may resolve tacking 

disputes in those contexts. But recognizing as much does

not gainsay our conclusion that, when a jury is to be empaneled and when the facts warrant neither summary 

judgment nor judgment as a matter of law, tacking is a

question for the jury. 

* * * 

The Ninth Circuit correctly held that whether two 

marks may be tacked for purposes of determining priority

is a question for the jury. Accordingly, the judgment of

the Ninth Circuit is affirmed. 

It is so ordered.