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Hana Financial, Inc. v. Hana Bank

United States Court of Appeals, Ninth Circuit

November 22, 2013

HANA FINANCIAL, INC., a California corporation, Plaintiff-Appellant,
v.
HANA BANK, a Korean corporation; Hana Financial Group, a Korean corporation, Defendants-Appellees.

Argued and Submitted Aug. 9, 2013.

Page 1159

[Copyrighted Material Omitted]

Page 1160

Steven E. Shapiro (argued), Kim, Shapiro, Park, & Lee, Los Angeles, CA, for Plaintiff-Appellant.

Carlo F. Van den Bosch (argued), Robert D. Rose, and Michelle LaVoie Wisniewski, Sheppard Mullin Richter & Hampton LLP, Costa Mesa, CA, for Defendant-Appellee.

Appeal from the United States District Court for the Central District of California, Percy Anderson, District Judge, Presiding. D.C. No. 2:07-cv-01534-PA-JWJ.

Before: RICHARD C. TALLMAN, RICHARD R. CLIFTON, and CONSUELO M. CALLAHAN, Circuit Judges.

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 Distributing, 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 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

Page 1161

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." 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. 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 factoring [3] 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 ...


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