Fight looms, confusion inevitable as
two Texas banks now share ‘Vista’ name

“We changed our name to soar above the crowd…to set ourselves apart.”
– Security State Bank

A new website for Security State Bank & Trust says the bank changed names to “soar above the crowd” and to “set ourselves apart.” But there’s a problem. The name they picked, Vista Bank of Texas, is almost identical to another bank in the same state, Vista Bank Texas.

Key Question: Who was first?

It’s hard to say.

Vista #1: Vista Bank Texas
Service Area: 6 branches around Houston
Claim to Name: It doesn’t look like this bank had been using the Vista name for very long. They launched their current website in December 2007.

Vista #2: Vista Bank of Texas
Service Area: 8 branches around the Texas panhandle
Claim to Name: In their trademark application on file with the US Patent & Trademark Office, they say the first time they used the name was June 2008. (Click here to view the USPTO trademark entry.)

Bottom Line: This may be a case of unfortunate timing and a terrible coincidence, but these banks are in for big trouble. It doesn’t matter that they are 500 miles apart. In today’s wired world, people are going to get confused.

Prediction: Financial trademark lawsuit in 3…2…1…

And it all may boil down to a difference of just six months and the simple preposition “of.” Maybe one of them should have put “First” in their name so we’d know which was the First Vista Bank of Texas. Joking. Just joking…

A creative solution to the problem would be for the two Vista Banks in Texas to merge, or create some sort of shared branching concept. Maybe you’ve heard the old adage, “The quickest way to eliminate my enemy is to call him my friend?” Don’t hold your breath though. This isn’t very likely.

A credit union in California holds the trademark for the word “Vista” in the USPTO’s financial services category, but a merger in 2007 between Vista FCU and Partners Credit Union name may make the trademark moot (click here to view the USPTO trademark entry.) Because the merged credit unions kept the “Partners” name, it’s unlikely either of them will step-up to defend this trademark.

More on the “Vista” name:

• It appears that Security State Bank & Trust bought their new URL, www.vistabank.com, for around $2,000 from a cybersquatter. The domain had been put up for sale after another Vista Bank gave it up a few years ago.
• Ironically, Security State Bank & Trust was also a name that was shared by at least two banks — the one that just became Vista Bank of Texas and another one in Montana.
• There is another Vista Bank in South Carolina.
• Earlier this year, The Financial Brand wrote about a two-year old bank in California changing names to Sierra Vista.

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.)

Consider yourself on notice: If you are a bank or credit union using anything resembling this orange dot…

…look out. Orange circles may be enough for ING to take you to court next.

Last Wednesday, ING filed a trademark-infringement complaint in U.S. District Court against PNC Bank over use of orange balls.

Earlier this year, PNC launced a Gen-Y program called Virtual Wallet. The Virtual Wallet website uses orange circles for its main interface.

In its complaint, ING asserts that “a significant segment of the website prominently utilizes the color orange and orange-ball designs that are confusingly similar to ING Direct’s orange ball.” ING is seeking damages of greater than three times the amount that PNC has made using the orange ball logo, including interest.

ING filed for trademark protection on its orange ball design back in November, 2000. ING’s trademark application is specifically for orange circles “that are totally or partially shaded.” Since then, orange has become the predominant color of its Web site, retail banking locations and advertisements, according to the complaint.

PNC filed trademark applications for 9 different orange circle designs back in June, and two more in August.The last one was filed August 12, 2008, one day before ING filed its lawsuit.

PNC’s most recent trademark application is for “Punch the Pig,” a creative savings game. It says the mark “consists of a stylized orange circle with a stylized white piggy bank in the center and two blue concentric circles in the center of the stylized piggy bank.”

Key Question: Is ING Direct entitled to exclusive use of orange circles – used in any capacity – within the financial industry?

What do you think?

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Massachusetts bank puts
Canada’s TD in a tough spot

A U.S. District judge has issued a preliminary injuction barring TD Banknorth from using the TD Commerce name in all or parts of Massachusetts.

TD Banknorth had planned on using the TD Commerce name after completing its recent merger with a Commerce Bank based in New Jersey. But another Commerce Bank in Massachusetts sued, arguing that consumers would be confused if a new Commerce bank suddenly appeared (previous coverage from The Financial Brand here).

“I hate to think what could have happened if they actually started changing the signs on their branches.”
— David Massad, Chairman
Commerce Bank (MA)

TD Banknorth, who already has a significant presence in Massachusetts, had wanted to change its name to TD Commerce in a show of unity with its newly merged partner.

According to the Boston Globe, TD was going to first switch the names of Commerce branches in New York and New Jersey this year, and then change the names of TD Banknorth branches in New England — including Massachusetts — starting in 2009.

In the court ruling, the judge said the injunction would be “no greater than Massachusetts.”

That leaves TD Banknorth with three options:

1. Operate with two names in different markets and spend the extra marketing dollars to support them.
2. Choose an entirely new name for both banks. Very unlikely.
3. Consolidate the banks under the TD Banknorth name.

The only option TD Banknorth can be seriously considering is #3. This will be a major blow to the merger strategy the two banks were pursuing: “TD + Commerce = TD Commerce. See, Commerce wasn’t ‘taken over.’ We’re partners. We’re equals.”

It’s a message that probably played well with the board of the Commerce Bank that TD acquired. In fact, the future name may have even been a major issue during merger talks. In all likelihood, they are very irritated.

The preliminary injunction is just the first step in a process that is bound to drag on for months, maybe even years. Next stop: Full-blown trial.

This leaves the name of TD Banknorth Garden, the venerated home of the Celtics, very much up in the air. At least if TD sticks with its Banknorth moniker in all markets, the name of Boston’s Garden won’t have to change…again. (At least not for a few more years, until TD’s current sponsorship expires.)

Bottom Line: It’s expensive going to court. It doesn’t matter how big you are. If you pick a name similar name to another financial provider, you’re asking for big legal problems – especially when you plan to tread that name out on their turf.

Here’s an interesting ruling in a financial trademark dispute involving Orion Bancorp (the victor) and Orion Residential Finance. The judge ordered the guilty infringer to purchase “negative keywords” through Google and other online ad systems.

A negative keyword tells search engines that the advertiser’s ad should never be shown when a certain term is searched for.

The judge also ordered the guilty Orion to pay to display Orion Bancorp’s ads when people search for “Orion Residential Finance” at various search engines.

Can you imagine having to pay to show your competitor’s ad every time someone did a Google search for your name?

Orion Bancorp received Federal trademark protection when it registered its name in 2003. Orion Residential Finance first created its site in 2007.

You can read the full story here, and the complete judgment can be viewed here (PDF).

Key Takeaways:

• It’s next to impossible to find a name that “sounds financial” that won’t expose you to a potential lawsuit. Most of the names people naturally think of are already being used somewhere by someone.
• All the obvious financial names are almost surely registered trademarks. Going with one of those is seriously risky business.

Bottom Line: A little due diligence and a quick search at the U.S. Patent & Trademark Office would have saved Orion Residential Finance a lot of pain and a truckload of money.

From here forward, if they were to stay in business (doubtful), they would have to change-out everything with their logo on it. Not cheap.

This 23-page PDF from the U.S. District Court of Alabama should serve as a cautionary tale about what can happen if you choose a new name that’s too similar to someone else’s – especially when you’re in the same market.

It all started on March 26, 2005 when BF Goodrich Employees Federal Credit Union chose to become ‘The Credit Union of Alabama Federal Credit Union‘ (sic, there are indeed two references to “credit union” in the name). This irked ‘Alabama Credit Union,’ who immediately fired off a cease-and-desist.

Alabama Credit Union then appealed to NCUA, asking them to rescind the name change. The NCUA declined to get involved.

The Alabama Credit Union Administration protested The Credit Union of Alabama’s choice in name, saying it would “cause confusion and was not in the best interest” of either credit union.

One party sued another and vice versa. Alabama Credit Union accused The Credit Union of Alabama of:

• deceptive trade practices
• unfair competition
• common law trademark infringement

The Credit Union of Alabama counter-sued for:

• cybersquatting
• tortious interference
• mail fraud
• RICO violations
• fraudulent suppression
• unfair competition
• conspiracy

Alabama Credit Union was awarded a summary judgment on all points related to The Credit Union of Alabama’s countersuit.

At least one member of The Credit Union of Alabama isn’t too happy about all this legal wrangling. In a letter to The Tuscaloosa News, Jerry Logan said, “The money spent on this lawsuit could have been returned to the member-owners in more dividends and also to the employees in a well-deserved raise. Instead it has gone to an attorney.”

Key Question: How will the courts view the fact that there are 17 credit unions with the word “Alabama” in their name, including ‘Alabama Central Credit Union‘ and nine others whose names start with “Alabama?”

Reality Check: The NCUA may approve a name change, but that doesn’t mean you won’t get sued for trademark infringement. The NCUA only performs cursory examinations of trade names. It seldom – if ever – gets involved in trade name battles, even when they’ve okay’d a new name under dispute. The US Patent & Trademark Office oversees all federal trademarks, not the NCUA.

Bottom Line: Which option do you think would cost more? Hiring an experienced naming firm? Or settling these lawsuits…and potentially having to rename again?

With $87 million in assets and 13,000 members, Pittsburgh Teachers Credit Union will officially become ‘Riverset,’ effective January 2, 2008.

According to this article, President and CEO Christine Chojnicki said the credit union’s name was being amended to Riverset in an effort to broaden the organization’s appeal to groups other than teachers. Chojnicki said the name change will make the credit union “more inclusive” of all its members, as well as members or employees of some 60 companies and organizations representing health care, retail, hotel and public sector employees.

She said the credit union isn’t moving toward a community charter or away from its core members, even thought it will be open to anyone who lives on Pittsburgh’s South Side, where the credit union is based.

Chojnicki is quoted as saying, “Our members have been very receptive to the change.”

Michael Wishnow, senior vice president of communications for the Pennsylvania Credit Union Association, said there’s a trend among credit unions to move toward community charters and away from select employee groups, or SEGs.

“When you look at how credit unions grew up, it was usually around a single, large employer,” Wishnow said. “But there are fewer and fewer large employers.”

(more…)

A New York Times article from 1987 says the scramble for good names causes some normally staid financial institutions to wage trademark battles.

It seems some things never change, like these familiar reasons to change names:

“Banks seeking to change their names are attempting to upgrade their image and to convey to their customers their broader market strategies.” — NY State Department of Banking Commissioner Howard B. Brown

Regarding the financial cost of changing names, the article shares a realistic perspective:

“Even a small bank can expect to spend upwards of $500,000 on marketing, logo design, legal costs and other associated expenses, but that many of the banks feel it is a step they have to take.”

Yep, that’s right: $500,000. In 1987 dollars.

Citizens First is apparently the second ‘Citizens Something’ in Michigan.

An article in Crain’s Detroit Business reported that Flint-based Citizens Republic won a preliminary injunction barring Citizens First from using the “Citizens” name at its four branches in Oakland County

Citizens was founded in Flint in 1871, and became Citizens Republic in 2006 after its merger with Republic Bancorp.

Citizens Republic is the largest bank-holding company in Michigan, with $14 billion in assets. Citizens Financial is the ninth-largest bank in the U.S., with more than $128 billion in assets.

Bill Fealko, a lawyer for Citizens First said they will appeal Tarnow’s ruling.

William Hartman, Citizens Republic’s president and CEO said that when Citizens First bought a rival bank in his backyard back in 2004, “we asked them not to rename it Citizens, but they decided to go ahead.”

“With all the bank mergers and acquisitions going on, everyone wants to change names, and you’re going to be seeing more of this,” said Citizen Republic’s attorney Glenn Forbis.

Next, Citizens Republic will take on banking giant Citizens Financial, which wants to change the name of its 122 Charter One banks in Michigan to RBS Citizens Bank.

Bottom line: Lawsuits are expensive and time-consuming, so do yourself a favor and stay away from names like “Citizens,” especially if there’s a chance you’ll end up going head-to-head.

Picking names that sound safe might not be safe at all. If your name looks or sounds like someone else’s in the financial industry, you could find yourself in a heaping pile of trademark problems.

Besides, who wants a me-too name? After all, some of the world’s the most successful brands have unique, distinctive names.

Two banks sharing the same name have both decided to shed their old ‘First Federal’ monikers. One is in Souix City, Iowa, and the other is in Wabash, Indiana.

The Souix City First Federal Bank changed to ‘Vantus Bank,’ while its Wabash counterpart opted for the safer and more familiar ‘Crossroads.

In this better-than-average press coverage of the Vantus name change, Vantus CEO Michael Dosland said, “We wanted a distinctive name that will minimize confusion and more closely reflect the unique value and service we offer our customers.”

The bank says it expects to spend about $800,000 to implement the name change, including consultants, marketing, a paid media campaign and new signage.

Weber Marketing Group developed the new Vantus name and brand. The foundation of the Vantus brand centers around the theme of ‘simplifying banking,’ summarized by the motto, “It’s that simple.”

In a Weber Marketing press release, the firm says, “’Vantus’ is derived from the word ‘advantage,’ and speaks to the unique benefits the bank offers its customers. The name is highly distinctive and differentiates it from other banks.”

Interestingly enough, the bank’s holding company, First Federal Bankshares, will keep its current name and will continue to use the ticker symbol FFSX on NASDAQ.

In this official press release, the CEO of the Wabash First Federal, “There are a number of competitors in our current and future markets who also use the ‘First Federal’ name,” said Roger Cromer, president and CEO. In fact, within a 50-mile radius of its main banking center in Wabash are three different banks—all with the First Federal name.”

The new motto for Crossroads Bank is “Where your money and your life meet: Crossroads Bank.” (Compared to the slogan for Crossroads Credit Union, “A Direction Worth Choosing.”)

This article notes that ‘Crossroads’ is indeed a common name that may cause some of the same problems as ‘First Federal’:

• Although it isn’t common in northeast Indiana, the name ‘Crossroads Bank’ isn’t unique. A financial institution based in Effingham, Ill., has the same designation.
• ‘Crossroads’ also is part of the name of several well-known local and national organizations. The most recognizable instance in the local market is Crossroad/Fort Wayne Children’s Home, a non-profit treatment center for emotionally troubled youth.
• Just up the road CrossRoads RV Inc. employs more than 650 people.

The CU Name wrote about another ‘Crossroads’ financial institution a few months ago.

The CEO of Crossroads estimated his bank’s costs, including advertising, at between $100,000 and $125,000 — “a significant amount” for the bank, which has $300 million in assets.

There’s another article about First Federal becoming ‘Crossroads’ here.

Along with the name change on to Crossroads, the Wabash bank is celebrating with a 45-day sales event:

• Gifts for new accounts opened
• Special CD offer
• Free ATM services on selected products
• No closing costs on mortgages applied