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.

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.