Trademark Review - Hana Bank, Kraft, eGrain, and Nestle (December 2013)

The Defendant Is Saved by the Narrow Doctrine of “Tacking”

Hana Financial (“HFI”) sued Hana Bank for trademark infringement. Both parties provide financial services. Hana Bank originally did business as the Hana Overseas Korean Club. HFI then started doing business as Hana Financial. After HFI started doing business, Hana Bank (still doing business as Hana Overseas Korean Club) changed its name to Hana World Center and then to Hana Bank. The main issue was whether the defendant Hana Bank could rely upon its use of its earlier business names that also included “Hana” to establish that it had trademark priority over HFI.

The case was tried before a jury. The jury was asked to decide whether Hana Bank could “tack” the date of its first use of Hana Overseas Korean Club to its current use of Hana Bank in order to establish priority over HFI. Hana Bank submitted evidence that its advertising for Hana Overseas Korean Club included the name “Hana Overseas Korean Club in English and in Korean, along with “Hana Bank” in Korean and a “dancing man” logo. Hana Bank continued to use the “dancing man” logo with each name change.

Tacking is only permitted if the two marks “are so similar that consumers generally would regard them as essentially the same.” The jury found that Hana Bank could tack its earlier use and ruled there was no infringement. HFI appealed to the Ninth Circuit Court of Appeals.

In the Ninth Circuit, tacking is a question of fact. Although the tacking doctrine is to be applied very narrowly, the court found that the jury was properly instructed and HFI did not establish that its interpretation of the evidence is the only reasonable one. Rather, the Court found that the jury could have reasonably concluded that purchasers associated “Hana Bank” with the “Hana Overseas Korean Club” and thus, affirmed the lower court’s ruling.

Hana Financial, Inc. v. Hana Bank, 2013 DJDAR 15343 (9th Cir., Nov. 2013).

Kraft Keeps Cracker Barrel Hams Out of Grocery Stores

The 7th Circuit affirmed the district court’s preliminary injunction against the sale by Cracker Barrel Old Country Store (“CBOCS”) of food products to grocery stores under the name Cracker Barrel. Kraft owns a registration for the mark CRACKER BARREL. Kraft has been selling cheeses in grocery stores under the CRACKER BARREL brand for more than 50 years. The following is a typical Kraft label for its CRACKER BARREL cheese:

CBOCS is a well-known chain of restaurants. CBOCS planned to sell a variety of food products such as packaged hams (but not cheeses) in grocery stores under its logo:

Kraft filed suit to prevent use of the CBOCS logo and requested a preliminary injunction. Kraft did not challenge CBOCS’s right to sell food products in its restaurants or in small stores that adjoin the restaurants, and only sought to stop sales at the grocery stores that sell Kraft’s Cracker Barrel cheese. After extensive discovery, the district court issued the preliminary injunction. The 7th Circuit affirmed the injunction, finding that Kraft has a strong likelihood of prevailing at trial and that the risk to Kraft of the loss of valuable goodwill and control over its trademark were sufficient to support the injunction.

Kraft Foods Group Brands LLC v. Cracker Barrel Old Country Store Inc. et al., Case number 13-2559 (7th Cir., Nov. 2013).

The TTAB Rules GRAIN AUDIO Is Too Similar to EGRAIN.14

The Trademark Trial and Appeal Board (the “Board”) affirmed the refusal of Grain Audio’s application to register the mark GRAIN AUDIO for audio equipment due to likelihood of confusion with an earlier registration for EGRAIN covering various computer components. The Board found the goods were “in part legally identical and in part related,” and noted that the channels of trade were presumed to be similar. The Board also found the marks to be sufficiently similar to cause likelihood of confusion, since “Audio” was merely descriptive, and both marks relied upon “Grain” as their distinctive element.

In re Grain Audio LLC, Case number 85528202 (TTAB, Nov. 2013) [not precedential].

The TTAB Reverses Refusal to Register KID SELECTS

Nestlé filed an application to register the mark KID SELECTS for various beverages and snack foods. The application was rejected as being merely descriptive. According to the Examining Attorney, the mark directly conveys to the consumer that “[a]pplicant’s food and beverage items are for kids and are of a special quality or value.” The Board disagreed and reversed the refusal to register. The Board agreed with the applicant that another possible interpretation of the mark was that the child chooses its food product. When the mark is understood to suggest the act of a child choosing something, it does not immediately convey material information, such as ingredients, qualities, or characteristics of the food products identified in the application. It is, therefore, not merely descriptive.

In re Société des Produits Nestlé S.A., Case number 85509120 (TTAB, Nov. 2013) [not precedential].