Trademark Review | February 2015
Jury Decides Whether Earlier Trademark Can Be Used For Priority
In HANA FINANCIAL, INC. v. HANA BANK, No. 13-1211, the Supreme Court held that whether two trademarks may be tacked for purposes of determining priority is a question for the jury, because tacking is a factual inquiry based on the perspective of a consumer.
Hana Financial sued Hana Bank for infringing the “Hana Financial” mark. Hana Bank denied infringement by claiming it had priority based on its earlier and continuous use of the mark “Hana Overseas Korean Club.” Although Hana Bank later operated under the marks “Hana World Center” and “Hana Bank,” it argued that it had priority because the two later marks created the same, continuing commercial impression as the earlier mark such that the tacking doctrine applied. The jury returned a verdict in favor of Hana Bank based on tacking. The Ninth Circuit affirmed. The Supreme Court granted certiorari on the issue of whether trademark tacking should be determined by a jury and affirmed the Ninth Circuit’s decision.
The Supreme Court began by stating the general rule that, when the question is how an ordinary person or community would make an assessment, a jury is generally the proper decision maker. Tacking is just such an issue because the relevant question is whether the two marks create the same, continuing commercial impression such that consumers view them as the same mark. In a case where a jury trial has been requested and the facts do not warrant entry of a summary judgment or judgment as a matter of law, tacking should be decided by a jury.
The Supreme Court then addressed Hana Financial’s four arguments in turn. First, the Supreme Court observed the application of a legal standard by a jury is common, and tacking is no different than any other mixed question of law and fact. Carefully crafted jury instructions may address concerns about improper application of legal standards by a jury. Second, the Supreme Court did not agree that a jury making a tacking determination would create new law, and thereby invade the province of the judge, any more than a jury deciding a tort, contract, or criminal case. Third, the Supreme Court did not agree the predictability required for a functioning trademark system mandated that judges decide the tacking issue. The Supreme Court stated that juries often make dispositive applications of legal standards to facts in tort, contract, and criminal cases, and there is no reason to treat trademark tacking differently. Finally, regarding the argument that judges have historically resolved tacking disputes, the Supreme Court determined Hana Financial had pointed to cases arising in the context of bench trials and summary judgments. But such cases do not change the Court’s conclusion that, when a jury is empaneled and when the facts warrant neither summary judgment nor judgment as a matter of law, tacking is a question for the jury.
Geographic Location Name May Be Used In Trademark
In IN RE THE NEWBRIDGE CUTLERY CO., Appeal No. 2013-1535, the Federal Circuit held the mere use of a geographic location name in a mark does not automatically warrant rejection where the location of the source of the goods is not generally known to the American public.
Newbridge Cutlery Co., based in Newbridge, Ireland, sought trademark protection for “Newbridge” in the United States. The Examiner refused to register the mark for being primarily geographically descriptive, and the Board affirmed.
Whether a mark is primarily geographically descriptive is a question of fact, and a rejection on this basis requires a showing that: (1) the mark sought to be registered is the name of a place known generally to the public; (2) the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place; and (3) the source of the goods is the geographic region named in the mark. For prongs 1 and 2, the relevant “public” is the purchasing public in the United States.
The Federal Circuit addressed only the first prong, determining Newbridge, Ireland is not generally known to the U.S. public. In reaching this decision, the Federal Circuit dismissed the notion that mere presence on the Internet necessarily evidences that a place is generally known. The Federal Circuit also noted the size of Newbridge, Ireland, “reveals nothing about what the relevant American purchaser might perceive the word ‘Newbridge’ to mean and is too insignificant to show that Newbridge is a place known generally to the American purchasing public.” Because of the lack of substantial evidence considered by the PTO that Newbridge is generally known, the Federal Circuit reversed and remanded.
9th Circuit Finds Clear Error in the Confusion Analysis between POM and PUR POM
Pom Wonderful LLC sued Pur Beverages claiming Pur Beverages’ use of the trademark PUR POM for an energy drink infringed Pom Wonderful’s rights in its registered POM trademark for beverages. The district court denied Pom Wonderful’s motion for a preliminary injunction finding Pom Wonderful would not succeed in its claim of infringement primarily due to the distinct visual features of the two companies’ products.
On appeal, the Ninth Circuit found the district court clearly erred in weighing the marks’ differences more heavily than their similarities. The Circuit Court stated: “Balancing the marks’ many visual similarities, perfect aural similarity, and perfect semantic similarity more heavily that the marks’ visual dissimilarities – as we must – the similarity factor weighs heavily in Pom Wonderful’s favor. . . . Mistakenly weighing the marks’ differences more heavily than their similarities, the district court clearly erred in finding that the similarity of the marks factor weighed against Pom Wonderful.” The Circuit Court also found the district court erred in its analysis of other likelihood of confusion factors, including marketing channel convergence, evidence of actual confusion, the defendant’s intent, and product expansion.
Pom Wonderful v. Robert Hubbard Jr., Case no. 14-55253 (9th Cir., Dec. 31, 2014)