Sheppard Mullin Acts for Korean Bank on U.S. Trademark Win

, The Asian Lawyer

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The U.S. Ninth Circuit Court of Appeals has ruled in favor of Hana Bank, Korea’s fourth-largest bank, in a trademark dispute originally brought by a California company with a similar name.

In its Nov. 22 decision, the court said it agreed with a previous federal jury verdict that Hana Bank’s name and logo were used commercially in the United States prior to that of Los Angeles-based Hana Financial Inc. (HFI).

The case’s origins go back to 1994 when the bank first entered the U.S. market by establishing the Hana Overseas Korean Club in attempt to capture banking business from Korean Americans. Advertisements for the club were published in major U.S. cities, with the club’s name appearing in English and Korean and the Hana Bank name appearing in Korean as well. The bank’s logo, sometimes called the “dancing man,” also accompanied the ads.

HFI, which provides accounts receivable services to business clients, was created later that year but did not begin to use its own trademark in business until 1995. A year later, the company obtained a federal trademark registration for a pyramid logo with the words Hana Financial in relation to its business and certain other financial services. When, in 2001, Hana Bank tried to register its trademark in the United States, it was unable to do so at least in part because of HFI’s mark. The two parties were unable to resolve the issue and HFI filed a complaint in 2007 alleging trademark infringement and related claims.

Central to the case is the idea of “tacking,” where a party takes the date of its first use of a mark and tacks it on to a subsequent mark to establish trademark priority. That, in effect, gives the party ownership of the marks so long as they are similar enough that consumers would generally regard them as being the same. Moreover, a previous Ninth Circuit panel had ruled that use of the market in the sale of goods or services supersedes even the invention of the mark by another party or its registration. For this reason, the federal court jury decided that Hana Bank had in fact used its mark in business prior to HFI.

On appeal, HFI argued that the verdict did not remain within the narrow doctrine of trademark tacking. The company claimed that the names Hana Bank and Overseas Korean Club were materially different, and as a result did not meet the legal definition of tacking. But the panel disagreed, saying the jury had decided after receiving specific instruction on the narrowness of the doctrine.

Pointing to Hana Bank’s advertisements, the panel said that consumers were likely aware of the bank and the services it provided. As a result, “The jury could have reasonably concluded that the ordinary purchasers of the financial services at issue likely had a consistent, continuous commercial impression of the services the Bank offered and their origin,” Judge Consuelo Callahan wrote in her decision.

Therefore, there was sufficient evidence to support the jury’s verdict on trademark priority, Callahan said.

Steven Shapiro of Los Angeles’ Kim, Shapiro, Park & Lee appeared for HFI, while Hana Bank was represented by Sheppard Mullin Richter & Hampton Orange County partner Carlo Van den Bosch and San Diego partner Robert Rose.

Email: tbrennan@alm.com.

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