The Central District of California granted summary judgment against Hana Financial, Inc., in its trademark infringement suit against Hana Bank.
It did so based on an advertisement that Hana Bank produced that predated Hana Financial’s first use by a year.
The Ninth Circuit, however, decided that ad was not sufficient to establish first use in commerce.
“While relevant,” the court found, the advertisement does not, standing alone, establish ‘first use’ for purposes of our priority analysis.”
The court went on to find: “Recognizing that the advertisement itself was insufficient, Hana Bank attempted to meet its burden to show that the ‘Hana’ mark was sufficiently used in United States commerce by presenting customer applications, newsletters bearing the ‘Hana’ mark, and documents that purport to show that services were available to its Hana Overseas Club members in July 1994 and the amount of business these customers transacted over the years. Although this evidence is relevant to the determination of whether Hana Bank’s use of the ‘Hana’ mark in 1994 was sufficient to establish commercial use in the United States, it is either subject to competing inferences or inadmissible. For example, Hana Bank only provided one customer application from a customer in the United States that is dated before Hana Financial’s registration date. That application, however, is subject to the inference that the customer actually resided in Korea. Further, Hana Bank failed to provide the proper foundation for admission of many of its supporting documents as business records. Accordingly, these documents constitute inadmissible hearsay and may not b relied on at summary judgment.
“After disregarding the inadmissible documents and the portions of the declarations referring to those documents and viewing the remaining evidence in the light most favorable to Hana Financial, we hold that genuine issues of material fact remain. These issues include the number of customers Hana Bank had in the United States, when Hana Bank began providing services to those customers, and how much business these customers transacted over the years. Nor can Hana Bank meet its burden to show the absence of any triable issue on these points by reference to the general, uncorroborated statements contained in many of its declarations. Accordingly, we conclude that, on this record, Hana Bank has failed to establish its priority over use of the ‘Hana’ mark as a matter of law and we remand for trial.”
The case cite is Hana Financial, Inc. v. Hana Bank, 2010 WL 3937582, No. 08-55243, 08-55244, (9th Cir. Oct. 4, 2010).