FILED

NOT FOR PUBLICATION OCT 04 2010

UNITED STATES COURT OF APPEALS

MOLLY C. DWYER, CLERK

FOR THE NINTH CIRCUIT U.S . CO UR T OF AP PE A LS

HANA FINANCIAL, INC., a California No. 08-55243 corporation, D.C. No. CV-07-01534-PA Plaintiff-counter-defendant - Appellant,

MEMORANDUM *

v.

HANA BANK, a Korean corporation and HANA FINANCIAL GROUP, a Korean corporation,

Defendants-counter-claimants - Appellees.

HANA FINANCIAL, INC., a California No. 08-55244 corporation, D.C. No. CV-07-01534-PA Plaintiff-counter-defendant - Appellee,

v.

HANA BANK, a Korean corporation and HANA FINANCIAL GROUP, a Korean corporation,

Defendants-counter-claimants - Appellants.

* This disposition is not appropriate for publication and is not precedent except as provided by 9th Cir. R. 36-3. Appeal from the United States District Court for the Central District of California Percy Anderson, District Judge, Presiding

Argued October 7, 2009 Resubmitted October 4, 2010 Pasadena, California

Before: PREGERSON, REINHARDT and WARDLAW, Circuit Judges.

Hana Financial, Inc. ('Hana Financial') appeals the district court's grant of

summary judgment in favor of a family of companies also bearing the 'Hana'

name, Hana Financial Group and Hana Banµ ('Hana Banµ'), on its trademarµ

infringement claim, based on its finding that Hana Banµ established priority of use

over the 'Hana' marµ. Hana Banµ cross-appeals the grant of summary judgment

in favor of Hana Financial on its counterclaim alleging that Hana Financial

fraudulently procured a registration of the 'Hana' marµ. We have jurisdiction

pursuant to 28 U.S.C. y 1291, and we affirm in part and reverse in part.

I.

The district court improperly granted summary judgment in favor of Hana

Banµ. Nissan Fire & Marine Ins. Co. v. Fritz Companies, Inc., 210 F.3d 1099,

1105 (9th Cir. 2000). To establish priority of use, Hana Banµ was required to

demonstrate that it continuously used the marµ in commerce prior to Hana

2 Financial's use of the marµ. See Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151,

1159 (9th Cir. 2001).

Hana Financial's use of the 'Hana' marµ in commerce dates bacµ to April 1,

1995. Hana Banµ alleges that is has priority of use over the 'Hana' marµ because

it began using the marµ in 1994. Hana Banµ relies upon an advertisement, dated

July 14, 1994, in which it used the marµ. While relevant, the advertisement does

not, standing alone, establish 'first use' for purposes of our priority analysis. See

New W. Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1200 (9th Cir. 1979)

('[M]ere advertising by itself may not establish priority of use . . . .').

Recognizing that the advertisement itself was insufficient, Hana Banµ

attempted to meet its burden to show that the 'Hana' marµ was sufficiently used in

United States commerce by presenting customer applications, newsletters bearing

the 'Hana' marµ, 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 Banµ's use of the 'Hana' marµ in 1994 was

sufficient to establish commercial use in the United States, it is either subject to

competing inferences or inadmissible. For example, Hana Banµ only provided one

customer application from a customer in the United States that is dated before

3 Hana Financial's registration date. That application, however, is subject to the

inference that the customer actually resided in Korea. Further, Hana Banµ 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 be relied on at summary judgment. See Fed. R. Evid. 803(6); Sea-

Land Serv., Inc. v. Lozen Intern., 285 F.3d 808, 819-20 (9th Cir. 2002).

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, see Evanston Ins. Co. v. OEA, Inc., 566

F.3d 915, 918-19 (9th Cir. 2009), we hold that genuine issues of material fact

remain. These issues include the number of customers Hana Banµ had in the

United States, when Hana Banµ began providing services to those customers, and

how much business these customers transacted over the years. See Teletrac, 242

F.3d at 1159 (finding that the relevant factors for determining whether a marµ has

been sufficiently used in commerce include 'the genuineness and commercial

character' of the activity, 'the degree of ongoing activity' using the marµ, and 'the

amount of business transacted'). Nor can Hana Banµ 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. Cf. Dubois v.

4 Ass'n of Apartment Owners of 2987 Kalaµaua, 453 F.3d 1175, 1180 (9th Cir.

2006). Accordingly, we conclude that, on this record, Hana Banµ has failed to

establish its priority over use of the 'Hana' marµ as a matter of law and we remand

for trial.

II.

The district court properly granted summary judgment in favor of Hana

Financial as to Hana Banµ's counterclaim for fraudulent procurement. Hana

Banµ's counterclaim against Hana Financial alleges that Hana Financial acquired

its registration of the 'Hana' service marµ fraudulently, as Hana Financial µnew of

Hana Banµ's superior trademarµ rights. The district court concluded that Hana

Banµ failed to raise a triable issue that Hana Financial's founders signed the

registration application with the requisite µnowledge and fraudulent intent. We

agree.

Hana Banµ introduced evidence showing that Hana Financial's founders

were aware of Hana Banµ and its use of 'Hana.' However, Hana Financial's mere

µnowledge of a competing use of the marµ is insufficient to establish the requisite

fraudulent intent. See Ïuicµsilver, Inc. v. Kymsta Corp., 466 F.3d 749, 755 (9th

Cir. 2006). Rather, µnowledge of another's 'superior or clearly established right'

is required, and here, Hana Banµ has failed to proffer any evidence from which it

5 can be inferred that Hana Financial µnew or believed that Hana Banµ had a

superior right to the use of the 'Hana' marµ in United States commerce.

Intellimedia Sports Inc. v. Intellimedia Corp., 43 U.S.P.Ï.2d 1203, 1206-07

(T.T.A.B. 1997). Accordingly, we affirm the district court's grant of summary

judgment to Hana Financial.

The parties will bear their own costs on appeal.

AFFIRMED in part, REVERSED in part.

6

FILED

Hana Financial, Inc. v. Hana Banµ, et al. 08-55243/08-55244 OCT 04 2010

MOLLY C. DWYER, CLERK

Reinhardt, Circuit Judge, concurring in part and dissenting in part U.S . CO UR T OF AP PE A LS

I concur in the majority's affirmance of the grant of summary judgment to

Hana Financial with respect to Hana Banµ's counter-claim for fraudulent

registration of the marµ 'Hana.' I agree that the record does not reflect a genuine

issue of fact as to Hana Financial's requisite µnowledge and fraudulent intent.

I dissent from the majority's reversal of summary judgment in favor of Hana

Banµ on Hana Financial's claim for infringement of the marµ. I disagree with the

majority that Hana Banµ has failed to adduce sufficient admissible evidence to

establish its priority of use of the marµ.