Fenwick & West trademark group chair Sally Abel was asked by Law360 to comment on the significance of the U.S. Supreme Court's recent decision in Hana Financial Inc. v. Hana Bank that it is not a matter of law reserved for judges but a matter of fact for juries to decide whether two "tacked" marks can be considered "legal equivalents" when determining trademark priority.
"Tacking has never been a particularly controversial or prominent aspect of trademark law and practice," Abel said, so "the ruling is not a surprise." According to Abel, the decision "would have been surprising had it gone the other way."
"It is also not surprising that Justice Sotomayor wrote the decision, given her trademark expertise and experience," Abel continued. "Likely she has been the catalyst for the Court's recent interest in trademark cases — such as this one and B&B Hardware now pending before the court — and will author more trademark decisions in the future."
Abel also suggested it was unfortunate that the court did not grant certiorari in Herb Reed, "which undoes decades of trademark jurisprudence recognizing a presumption of irreparable harm once likelihood of confusion is shown."
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