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Hana Financial, Inc v. Hana Bank and Hana Financial Group

June 29, 2011

HANA FINANCIAL, INC., PLAINTIFF,
v.
HANA BANK AND HANA FINANCIAL GROUP, DEFENDANTS.



The opinion of the court was delivered by: Percy Anderson United States District Judge

FINDINGS OF FACT AND CONCLUSIONS OF LAW

This case involves a trademark dispute between two financial services companies. Plaintiff Hana Financial, Inc. ("Hana Financial") commenced this action in 2007 against defendants Hana Bank and Hana Financial Group (collectively "Hana Bank"). Hana Financial's Complaint alleged claims for: (1) trademark infringement under 15 U.S.C. § 1114(a) of the Lanham Act; (2) trademark infringement under 15 U.S.C. § 1125(a) of the Lanham Act; (3) false designation of origin under 15 U.S.C. § 1125(a) of the Lanham Act; (4) common law trademark infringement under federal law; and (5) unfair competition under California common law and California Business and Professions Code section 17200. Hana Bank filed a Counterclaim seeking cancellation of Hana Financial's federal trademark registration.

The parties filed cross-motions for summary judgment. In a January 7, 2008 Minute Order, this Court concluded that Hana Financial was entitled to a Judgment on Hana Bank's Counterclaim. The Court further concluded that Hana Financial's first use in commerce of its "Hana" mark occurred on April 1, 1995, and that Hana Bank's use of its mark in commerce in the United States predated Hana Financial's first use of its mark. On appeal, the Ninth Circuit affirmed this Court's rulings with respect to Hana Bank's Counterclaim and Hana Financial's date of first use of its mark,*fn1 but found triable issues of fact concerning Hana Bank's first use of its mark in commerce in the United States. The Ninth Circuit therefore remanded the action for trial.

With the exception of Hana Financial's claim brought pursuant to California Business and Professions Code section 17200, which sought only equitable relief and was therefore triable to the Court, the parties submitted Hana Financial's Lanham Act and federal common law trademark infringement claims to the jury. The Court also submitted Hana Bank's equitable defenses of unclean hands and laches to the jury for an advisory verdict. Following the presentation of evidence, the Court granted defendant Hana Financial Group's Motion for Judgment as a Matter of Law pursuant to Federal Rule of Civil Procedure 50. The basis for that decision was stated on the record and is further supported by these Findings of Fact and Conclusions of Law. The jury proceeded to deliberate on Hana Financial's remaining claims against Hana Bank and Hana Bank's two equitable affirmative defenses.

The jury returned a unanimous verdict holding that Hana Bank had used its mark in commerce in the United States prior to April 1, 1995 and continuously since that date. As a result of the jury's finding, Hana Bank is the senior user of the mark and cannot be liable to Hana Financial for trademark infringement. The jury also returned advisory verdicts on Hana Bank's equitable affirmative defenses. Specifically, the jury found that Hana Bank had proven its laches defense but not its unclean hands defense. Pursuant to Federal Rule of Civil Procedure 52, the Court then directed the parties to submit proposed Findings of Fact and Conclusions of Law on Hana Financial's California Business and Professions Code section 17200 claim and on Hana Bank's equitable affirmative defenses. Having considered the materials submitted by the parties and reviewing the evidence elicited at trial, the Court makes the following findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a):

I. Findings of Fact

A. Defendant Hana Bank

1. Defendant Hana Bank was originally established in 1971 as Korea Investment Finance Corporation, and changed its name to Hana Bank in 1991.

2. Hana Bank is the fourth largest financial institution in the Republic of Korea. 3. In May of 1994, Hana Bank established a service called the Hana Overseas Korean Club to provide financial services in the nature of foreign exchange, wire transfer and asset management services to Korean expatriates living abroad, including in the United States.

4. On July 12, 1994, Hana Overseas Korean Club services became available to customers living in the United States.

5. In July 1994, Hana Bank launched a domestic advertising campaign for the Hana Overseas Korean Club.

6. On July 13, 1994, Hana Bank published an advertisement for its Hana Overseas Korean Club in the Washington, D.C. Edition of the Korea Times.

7. On July 14, 1994, Hana Bank published advertisements for its Hana Overseas Korean Club in the Los Angeles and San Francisco Editions of the Korea Times.

8. Hana Bank's July 1994 advertisements displayed the name HANA in English.

9. Hana Bank's July 1994 advertisements also displayed the name Hana Bank in Korean.

10. Following the advertising launch, on July 18, 1994, Hana Bank received separate letters from California residents in Granada Hills and Los Angeles, both inquiring about Hana Bank's Overseas Korean Club services.

11. On August 5, 1994, Hana Bank received an application for its Hana Overseas Korean Club from a customer in New York. Hana Bank approved this application, and the New York applicant has remained a customer of Hana Bank from 1994 through the present.

12. On October 7, 1994, Hana Bank received an application for its Hana Overseas Korean Club from a customer in New Jersey. Hana Bank approved this application, and the New Jersey applicant remained a customer of Hana Bank from 1994 until 2000.

13. On December 5, 1994, Hana Bank received an application for its Hana Overseas Korean Club from a customer in California. Hana Bank approved this application, and the California applicant ...


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