The SCT has another jury issue to resolve. The question in Hana Financial v. Hana Bank is whether a judge or jury should determine if the use of an older mark may be tacked to a new one.
Here are the briefs that have been filed in the case.
Here is a brief summary of the argument taken from the brief submitted by AIPLA
SUMMARY OF ARGUMENT
One of the Lanham Act’s fundamental functions is to protect consumers from deceit as to the sources of their purchases. It does so by allocating trademark rights among competitors with protectable trademark interests. This division of rights permits consumers reliably to identify the source of goods and services without confusion.
Where similar marks are involved, this allocation of rights is based, in part, on a priority system. Trademark priority rewards the earliest valid use of a trademark in commerce. Consumer impressions of trademarks play a crucial role in deciding priority as between similar trademarks.
In certain circumstances, courts allow trademark owners to tack on to their current period of use an earlier period of using a similar mark to claim an earlier date of first use. The trademark tacking doctrine requires a finder of fact to consider whether the current and former trademark uses are “legal equivalents” in the eyes of ordinary consumers. In other words, do the marks, in their respective iterations, create the same continuing consumer impression in the marketplace?
This determination can only be made by and through the eyes of the consuming public. Therefore, a jury, made up of consumers, is the best judge of whether the relevant facts support a finding of trademark tacking.