Supreme Court Rules Juries Should Decide on Trademark Tacking
Applications for Princess Kate and Royal Kate Denied


Supreme Court Rules Juries Should Decide on Trademark Tacking
Timothy J. Lockhart

Resolving a circuit split, the U.S. Supreme Court has ruled that the issue of whether two trademarks may be “tacked”—a newer mark’s acquiring the priority of an older mark—is a question for juries to decide. Hana Fin., Inc. v. Hana Bank, 135 S.Ct. 907 (2015). Writing for a unanimous court, Justice Sotomayor held that when the relevant question is how consumers would assess whether two marks are legally equivalent in that they create the same, continuing commercial impression, the jury is generally the decision maker that ought to provide the fact-intensive answer.

Hana Bank, the respondent, was formed in 1971 as a South Korean entity called Korea Investment Finance Corporation. In 1991 the company changed its name to Hana Bank, and in 1994 it began offering financial services to Korean expatriates in the United States, using the names Hana Overseas Korean Club in English and Korean and Hana Bank in Korean. In 2000 the company changed the name of Hana Overseas Korean Club to Hana World Center, and in 2002 it began operating a bank in the United States under the name Hana Bank.

The petitioner was formed in 1994 as a California corporation called Hana Financial. In 1996 it obtained a federal registration for the mark HANA FINANCIAL and Design as used in interstate commerce with financial services since April 1, 1995. In 2007 Hana Financial sued Hana Bank for trademark infringement, and Hana Bank defended itself by invoking the tacking doctrine and claiming that it had priority based on its pre-1995 uses of “Hana” names.

The infringement claim was tried before a jury, which returned a verdict in favor of Hana Bank. The U.S. Court of Appeals for the Ninth Circuit affirmed the verdict, stating that tacking, which applies only in very narrow circumstances, requires “a ‘highly fact-sensitive inquiry’” that is “reserved for the jury.” 735 F. 3d 1158, 1160 (9th Cir. 2013) (quoting One Indus., LLC v. Jim O’Neal Distrib., Inc., 578 F. 3d 1154, 1160 (9th Cir. 2009)). However, the Ninth Circuit acknowledged that there was a circuit split, with the Federal and Sixth Circuits evaluating tacking as a question of law. Accordingly, the Supreme Court granted certiorari to resolve the issue.

In its opinion the Supreme Court noted the general rule that two marks may be tacked when the original and revised marks are “legal equivalents,” meaning that they create the same, continuing commercial impression so that consumers consider both as the same mark. The Court also noted that a mark’s “commercial impression . . . ‘must be viewed through the eyes of a consumer.’” 135 S.Ct. at 908 (citing DuoProSS Medi­tech Corp. v. Inviro Med. Devices, Ltd., 695 F. 3d 1247, 1253 (Fed Cir. 2012)).

The 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,” the Supreme Court held. “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 decision maker that ought to provide the fact-intensive answer.” The Court acknowledged that “a judge may decide a tacking question on a motion for summary judgment or for judgment as a matter of law” and that “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 fact-finding capacity.” But, the Court said, “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.”

The Supreme Court dismissed Hana Financial’s four arguments to the contrary: that (1) the equivalents test involves the application of a legal standard; (2) tacking determinations will create new law that will guide future decisions—a task reserved for judges; (3) jury decisions on tacking will be too unpredictable; and (4) as a historical matter, judges have resolved tacking disputes. The Court said, first, that the equivalents test is the sort of mixed question of law and fact that has often been answered by juries. Second the Court said, “It is not at all clear . . . 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.”

With regard to Hana Financial’s claim about unpredictability, the Supreme Court noted that “the same could be said about the tort, contract, and criminal justice systems: [i]n all of these areas, juries answer often-dispositive fac­tual questions or make dispositive applications of legal standards to facts.” 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.”

Finally, the Court said that Hana Financial had pointed to “cases in which judges have resolved tacking disputes in bench trials, at summary judgment, or the like” but that “it is undisputed that judges may resolve tacking disputes in those contexts.” Nevertheless, the Court said, “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.”

Applications for Princess Kate and Royal Kate Denied
Timothy J. Lockhart

The U.S. Trademark Trial and Appeal Board (TTAB) has affirmed refusals to register the trademarks PRINCESS KATE and ROYAL KATE partly because they falsely suggest a connection with Catherine, Duchess of Cambridge, who is also known as Kate Middleton and is the wife of Prince William of England. Another reason for the TTAB’s affirmation is that the marks consist of or include a name identifying a particular living individual without her consent. In re Nieves & Nieves LLC, Serial Nos. 85179243 and 85179263 (January 30, 2015) [precedential]. In reaching its decision the TTAB clarified that a key factor is whether an applicant’s mark identifies a particular person other than the applicant, not whether that person actually used the name or identity.

The applicant sought to register PRINCESS KATE and ROYAL KATE for use with various items including cosmetics, jewelry, handbags, bedding, and apparel. Each application contained a statement that “the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.”

However, the Examining Attorney refused to register the marks under Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a), on the ground that PRINCESS KATE and ROYAL KATE falsely suggests a connection with Kate Middleton. The Examining Attorney also refused to register the marks under Section 2(c) of the Trademark Act of 1946, 15 U.S.C. § 1052(c), on the ground that each mark consists of a name identifying a particular living individual whose written consent to register the mark is not of record.

The TTAB used its standard four-prong test to determine whether the PRINCESS KATE and ROYAL KATE marks falsely suggests a connection with Kate Middleton: (1) whether the marks are the same as or a close approximation of her previously used name or identity; (2) whether the marks point uniquely and unmistakably to her; (3) whether she is connected with the goods that will be sold under the marks; and (4) whether her name or identity is of sufficient fame or reputation that when the marks are used with the applicant’s goods, a connection with Kate Middleton would be presumed (citations omitted).

The applicant argued that because Kate Middleton does not refer to herself as “Princess Kate” or “Royal Kate,” the marks are not the same as or a close approximation of her previously used name or identity. However, the TTAB said that a false suggestion of connection can result from an applicant’s use of something that is closely associated with a particular personality or persona. Thus, if a “celebrity’s identity is commercially exploited without the consent of the celebrity, there has been an invasion of his/her right, regardless of whether his/her ‘name or likeness’ is used” (citing Carson v. Here’s Johnny Portable Toilets, Inc., 218 U.S.P.Q. 1, 4 (6th Cir. 1983) (former television personality Johnny Carson’s identity may be exploited even if his name or likeness is not used)).

The TTAB noted that it was “mak[ing] explicit what was implicit in [its] prior decisions,” namely, “the first prong of the false suggestion of a connection test inquires into whether applicant’s mark is the same as or a close approximation of the name or identity of a particular person other than the applicant, whether or not the person actually ‘used’ the name or identity himself or herself.” Based on numerous press reports that refer to Kate Middleton as both “Princess Kate” (even though technically she is a duchess, not a princess) and “Royal Kate,” the TTAB found that both PRINCESS KATE and ROYAL KATE are close approximations of her identity.

Turning to the second prong, the TTAB noted the press reports and other evidence that Kate Middleton is admired for her fashion sense—indeed, has been called a “fashion icon”—and has been placed on many “best-dressed” lists. The TTAB said the evidence shows that relevant purchasers of the applicant’s goods will recognize PRINCESS KATE and ROYAL KATE as pointing uniquely and unmistakably to Kate Middleton. Regarding the third prong, the TTAB said the applicant “acknowledges that Kate Middleton is not connected with the goods” and “has not consented to Applicant’s use of her persona.”

The applicant argued that the fourth part of the test was not met because Kate Middleton “is not involved in the fashion industry, and there is no evidence that the public would perceive such a connection because she does not endorse any products.” However, the TTAB said that the applicant had misconstrued the nature of the TTAB’s inquiry under this prong. The TTAB does “not require proof that Kate Middleton is well-known for cosmetics, jewelry, handbags, bedding and clothing.” Rather, the TTAB’s inquiry is whether her renown is such that when the marks PRINCESS KATE and ROYAL KATE are used in connection with those products, “consumers will understand [the marks] as referring to Kate Middleton and that a connection with Kate Middleton, the Duchess of Cambridge, will be presumed.” Based on the evidence, the TTAB found that there would be such a presumption, and thus the TTAB affirmed the refusal to register the marks under Section 2(a).

Next the TTAB turned to the issue of whether, under Section 2(c), the marks identify a particular living individual whose written consent to register the marks is not of record. The TTAB said that Section 2(c) applies not only to full names, but also to “first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed” (citing In re Richard M. Hoefflin, 97 U.S.P.Q.2d 1174, 1177-78 (TTAB 2010) (holding registration of three “OBAMA” marks barred under Section 2(c) in the absence of consent to register, because they create a direct association with President Barack Obama); other citations omitted).

The TTAB said that for the reasons set forth in its application of the four-prong test under Section 2(a), the marks PRINCESS KATE and ROYAL KATE identify Kate Middleton, whose identity is renowned. “By any measure, she is a celebrity,” the TTAB said, “and thus [each mark] points uniquely and unmistakably to Kate Middleton.” Accordingly, the TTAB also affirmed the refusal to register the marks under Section 2(c).

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