Ohio bank learns hard lesson about trademark law
August 19, 2008
For 120 years, people in Ohio knew their bank simply as “OV.”
Not any more. The bank was forced to change names by one of their competitors.
The ‘Ohio Valley National Bank’ was founded in 1887 and had been doing business under the same name since it was founded over 120 year ago. Impressive, especially considering that no other bank in its market had used its original name for more than 11 years.
Unfortunately for Ohio Valley National Bank, another area bank decided to change names and become ‘Ohio Valley Bank’ in 1994. The new ‘OVB’ immediately applied for trademark protection with the United States Patent & Trademark Office. (Snapshot of the USPTO trademark here.)
Fact: When the USPTO looks at a trademark application, there is a five-year period where if no one contests the trademark, it is approved and uncontestable from then on. It doesn’t matter if someone had been using that same brand name for hundreds of years. It may not be fair, but it’s the law.
According to an article in the Evansville Courier Press, this is apparently what happened to the original ‘OV.’ The original ‘OV’ probably assumed its trademark was safe since it was first and had been using its name forever. The new ‘OVB’ filed for a federally registered trademark in 1994, but the original ‘OV’ never contested the application. Five years passed and… Ooops.
The original ‘OV’ was then faced with a choice. They could either choose to share their name with another financial institution in the same market, or they could change names themselves.
The original ‘OV’ chose to modify its name, dropping the words “national” and “bank” as it became ‘Ohio Valley Financial Group.’
Reality Check: This is a cautionary tale to all those financial institutions who erroneously presumed they safely owned their trademarks – forever. Wrong. Just because you’ve had your name for 100+ years doesn’t mean anything – even from the USPTO’s perspective.
It is your burden and responsibility to protect your trademarks, and if you let someone else use your name (or something similar) for too long, you will forfeit your right — forever — to exclusively use that name.
Bottom Line: If you haven’t federally protected your trademark yet, get started today. You have to attack everyone who threatens the integrity of your trademark(s). Getting litigious may not be your natural instinct, but letting anyone share your trademark(s) is the same thing as saying, “I don’t care if these assets erode and their value depreciates.”
(*Dislcaimer: If you have questions concerning financial trademarks, please consult an experienced trademark attorney.)
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Previous related stories from The Financial Brand:
- Get your financial trademark now, before it’s too late
- Bank changes names to reinforce its category leadership
- Exante Bank will become ‘OptumHealth’
- Wauwatosa customers vote for ‘WaterStone’ name
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Filed Under: Bank Name Changes, Trademark Law
Tags: Ohio, trademarks, USPTO, Valley
August 20th, 2008 at 1:52 pm
Nicely said.
Every so often we hear about a lawsuit like this. Maybe it’s Johnson & Johnson suing the Red Cross. Or maybe it’s Starbucks suing some little mom & pop coffee shop.
Our gut instinct is to vilify those who sue. It feels wrong. In these examples, I doubt J&J or Starbucks felt any joy in waging these suits. But as you pointed out, what’s the alternative?
Protect it or lose it. In trademark law, those are your options.
August 20th, 2008 at 1:57 pm
Josh, those are great examples. Anyone reading this article should also check out the stories Josh mentions in his comment above.
August 20th, 2008 at 4:34 pm
[...] names, company website linking, key brand phrases, etc. Jeffry Pilcher just wrote about an Ohio bank who learned what this could cost you the hard way. It is incredibly important for credit unions to be aware of the tools and options they have for [...]
December 11th, 2008 at 4:22 am
[...] Line: If you think you’re safe because you’ve had your name for a hundred years, you’re wrong. If you think having to change names once is expensive, think about how much it costs to change [...]
February 25th, 2009 at 4:10 am
[...] industry is getting harder every day. Register your financial institution’s trademarks before someone beats you to it. And be careful coming up with new names, even for things like products and services. Make sure any [...]
November 1st, 2009 at 8:37 am
Wow! Another great lesson in trademark protection.
While the USPTO places a lot of weight on the length of time a company has used a brand in the market, it places an even greater weight on the degree to which a company has “actively protected” that brand. If the original Ohio Valley bank had simply pursued trademark protection for that name it would have been a slam dunk. Their second chance came when the “new” Ohio Valley bank’s claim sat on the temporary register awaiting a challenge. If anyone from the original bank had been routinely trolling for confusing marks they would have seen the interloper and could have challenged it. In my opinion they probably would have won it, too.
Sad, too. Given that most people in the market will probably associate the name with the original. Tremendous brand extension for those new guys.