Alliance Bank has prevailed in a trademark lawsuit against Customers 1st Bank who must now destroy all materials containing the Customer 1st name and find a replacement. Immediately.

Only a few months ago, Customers 1st was known as New Century Bank. Discussions about changing the New Century name first arose when ABC News incorrectly used the Philadelphia bank’s logo in a report on the failure of New Century Mortgage in California. Ooops…

In January 2010, someone at New Century Bank proposed the name Customers 1st, so another executive did a search on Google and GoDaddy where he found customersfirstbank.com and customers1stbank.com both available.

After not one but two failures of banks bearing the New Century moniker, CEO Jay Sidhu had enough. Almost immediately following the second “New Century” seizure, he demanded the switch to Customers 1st be implemented with haste.

“Alliance should not be punished for New Century’s precipitous behavior.”
— Preliminary injunction
against New Century

The problem was, however, that Alliance Bank held a registered trademark for Customer First, the name of its flagship checking product, since 2007.

New Century also tried securing its own registered trademark for Customers 1st, but the USPTO refused separate applications for five variants of the Customers 1st name, citing likely confusion with Alliance’s branded product.

Reality Check: The name of any financial institutions’ products can indeed prevent you from picking a similar moniker for your bank or credit union, especially if someone is claiming a trademark on it. And they don’t even have to be direct competitor. They could be on the opposite side of the country.

On July 27, 2010, the US District Court for the Eastern District of Pennsylvania granted Alliance Bank’s request for a preliminary injunction. Judge Slomsky, in his 60-page judgment, called New Century’s move to Customers 1st “impulsive,” and shot down every argument they offered in their defense.

Adding another layer to the story are two other banks who have also used the exact same name — Customer First — for their checking products. Indeed the very first Google search result for “Customer First Checking” points to First National Bank in Omaha. They have four different Customer First checking accounts in total. There was also Bay Bank in Washington with a Customer First Checking account, but they were shut down by the FDIC in late July, 2010. Has Alliance Bank pursued these trademark infringers with the same zeal as it did with New Century/Customers 1st? Or are they guilty of selective enforcement?

There’s another bank in Texas about to launch with Customer First as their name. They’ve already got a website up at customerfirstbank.com. Hopefully they won’t pull the trigger and move forward with the name. They are playing with trademark fire.

CUSTOMER FIRST IN TEXAS
This bank is at least the second ‘Customer First’ in the financial industry, maybe the third?

Ironically, in the midst of all these trademark issues, Alliance Bank thought it would be a good idea to trademark its own name, so it filed Alliance for USPTO registration in July, 2010 while its case against New Century wove through the courts. But… a bank in California has held a registered trademark for Alliance Bank since 1998. However, the California Alliance just got bought up by California Bank & Trust earlier this year (yes, California Bank & Trust’s name has been registered with the USPTO since 2005). There’s no word yet as to whether they intend to retire the Alliance Bank brand and trademark.

Bottom Line: New Century Bank estimates it has already invested $500,000 into the change to Customers 1st, plus it expects to blow another $500,000 on whatever name it picks next. Tragically, they ignored advice from a trademark lawyer, believing instead that Alliance wouldn’t sue. Had they bothered to read the attorney’s recommendation (which they didn’t), they would have almost surely saved the bank a half million. (New Century should be grateful the judge didn’t order them to buy negative search keywords, as another judge did in a suit over the Orion Bank name.)

Key Takeaways: This situation illustrates the importance of picking a unique name for your bank or credit union. The whole point of branding is differentiation. If your name looks like- or sounds like something other financial institutions are using, the rest of your brand will have to work that much harder to distinguish itself.

If you’re ever in a name change situation, don’t ever pick a new name that “sounds financial” or feels familiar. If a name looks, feels and/or sounds “financial,” it’s almost surely used by some financial institution somewhere. You could very well end up losing a lawsuit and having to start over from scratch.

Further Reading: A 60-page PDF of the ruling is available by clicking here. It’s a fascinating case study in financial naming and trademarks, outlining a number of legal issues. Read through it and you’ll probably learn something new about trademark law.

Earlier this year, Michigan First Credit Union slapped a lawsuit on First Michigan Bank for trademark infringement. (If you’re tempted to dismiss this article as having little relevance to you, at least skip ahead and make sure you read the conclusions.)

According to a complaint filed in U.S. District Court, the bank’s use of the “First Michigan” name is “in conscious disregard of Michigan First’s trademark rights, and creates a likelihood of public confusion in which consumers seeking Michigan First’s services will be diverted to the bank, and/or will erroneously believe that the services offered by the bank are offered, sponsored, or endorsed by Michigan First, when in fact they are not.”

Michigan First Credit Union has over 80,000 members and $550 million in assets. First Michigan Bank was founded in 2009 and, until recently, had only one branch and around $100 million in assets. But in April 2010, it somehow scraped together enough cash to acquire Citizens First Bank after Citizen First’s $1.1 billion in assets were seized.

The credit union’s Poulos told Crain’s Detroit Business that he’d didn’t even know about First Michigan Bank until reading about the bank’s acquisition in one of the publication’s articles. “They were such low profile, we weren’t even aware of them,” Poulos said. “Then they came out with a major marketing campaign on radio and TV.”

Bank fights back, says suit is ‘absolutely baseless’

First Michigan Bank vows to fight the lawsuit. David Provost, president and CEO of the bank, said the complaint is “absolutely baseless” and that his bank “intends to defend this suit vigorously.”

“Our use of the First Michigan Bancorp name does not create any likelihood of confusion, particularly given the differences in the marks, the weakness and lack of distinctiveness of Michigan First Credit Union’s claimed marks, and the large number of financial institutions that use the terms ‘First’ and ‘Michigan’ in their names in varying ways,” Prevost said in a statement.

Reality Checks:

• What most people (including the CEOs of billion-dollar banks) don’t know about trademark law is a lot. Myths and inaccurate assumptions can lead otherwise smart business people to make some serious — and costly — errors in judgment.
• “First Michigan” and “Michigan First” are very confusing. The guideline is simple: How likely is it that the typical consumer would be confused?
• The “differences in the marks” are rhetorical. You can’t circumvent trademark law just by shuffling a few words around. Would “Kreme Krispy” be okay? How about “Crispy Cream?” The USPTO factors things like phonetics and visual construction when evaluating the degree of potential confusion. It doesn’t matter how different the logos are if the name(s) are too similar and/or confusing.
• Terms like “First” and “Michigan” may be ubiquitously used by other organizations, but this trademark suit deals exclusively with the specific combination of both “First” and “Michigan.” It’s illogical to isolate one term and say, “See, look! Lots of businesses in Michigan use the word ‘Michigan,’ so the name isn’t unique.” That’s similar to saying you can’t trademark “Starbucks” because other companies use “Star” and “Bucks” in their names. There could be a “Michigan First Bakery,” “Michigan First Magazine” and “Michigan First Day Care,” but what really matters is (1) Who offers retail financial services; (2) Who came first; (3) Who holds a registered trademark; and (4) How confusing the two names are.

Michigan First (the credit union) says it has “obtained and consistently used several registered service marks since changing its name from Detroit Teachers Credit Union to Michigan First Credit Union in April 2001.” These service marks include the credit union’s name, as well as a variety of products and services including its Michigan First MoneyWorks Banking Centers (ATMs) and Michigan First Wealth Management Group.

Indeed, Michigan First holds a total of five registered trademarks for “Michigan First” with the U.S. Patent & Trademark Office. The credit union first filed for trademark protection in 2001, and received registered status in 2003.

EXHIBIT A
Michigan First Credit Union’s registered trademark
under the USPTO’s International Class 36.

“These registered service marks are used extensively in our member communication and promotions, creating strong recognition with both our members and the public,” said Michael Poulos, President and CEO of Michigan First. “We have taken all the necessary actions to protect these assets, which are consistently used for all of our banking and other financial services, and we will continue to take all necessary actions to protect them.”

Bottom Line: First Michigan Bank will likely lose, but not without burning a mountain of time, cash, energy and vital resources on an uphill fight. Ultimately, if the bank isn’t forced to change names — at additional significant cost — it would be a miracle. If First Michigan Bank had invested a $1,000 or so on trademark due diligence back when they chose their name in 2009, they would have almost certainly sidestepped this nightmare. Hopefully the bank will wait to change the name on the signs of the 22 Citizens First branches it just acquired until after this lawsuit is resolved, otherwise First Michigan Bank could be doubling-down on its losses.

Michigan First Credit Union, on the other hand, has played everything by the book. They secured their trademarks early, and are defending them with zeal and vigor.

Key Takeaways:

Be careful with new names and name changes, even for things like products and services. Make sure they aren’t already being used by someone else. That means checking the white pages, the internet and the USPTO database. The Financial Brand has written over and over and over and over about the pitfalls of naming trademarks. If you haven’t yet taken the message to heart, here is one more reminder: Register your financial institution’s trademarks now. Today. And always hire a lawyer who specializes in trademark law. Dire consequences await those who choose to go it alone.

Pop Quiz: First Michigan, Michigan First…which one is the credit union and which one is the bank?

Every Spring, financial marketers across the U.S. wonder how they can tap into the fervor of “March Madness,” the NCAA college basketball tournament. But there’s a right way and a wrong way to structure a March Madness promo at your bank or credit union.

The Wrong Way

Don’t use the term “March Madness” in your promotions unless you are an approved, official sponsor of the tournament. If you aren’t a sponsor, the NCAA will sue you. And win.

Starting in 2009, the NCAA started aggressively enforcing its trademarks, sending a flock of eagle-eyed lawyers out to scour the web for those who may be infringing on “March Madness,” “Elite Eight” and “Final Four” (“Sweet 16” was apparently untrademarkeable).

Nevertheless, every year a bevy of financial marketers unknowingly walk a legal tightrope:

• Central Illinois Credit Union - “March Madness Loan Promotion”
• Countryside FCU - “6th Annual March Madness Certificate Special”
• Fairfield Municipal FCU - “March Madness Loan Special”
• Meriden Schools FCU - “March Madness Car Loans”
• Penn State FCU - “March Madness Credit Card Rebound”

The Right Way

It’s okay to use the idea of “March Madness” — using plays-on-words and the concept of brackets — just don’t use the actual trademarked term itself: “March Madness.”

Like 66 Federal Credit Union, for instance. Their “Battle of the Brackets” promotion is a standard “pick-your-teams” contest awarding a 60” HDTV. The promotion is topical, the contest is familiar and the prize is relative — without creating any trademark risks.

66 FCU – “BATTLE OF THE BRACKETS
Choose your teams and you could win a 60” HDTV. It’s simple, familiar and avoids legal headaches.

Then there is FirstBank, who is running its ad for “Bank Merger Madness” in the Denver Post, right next to the article announcing first round match-ups in the basketball tournament.

With no copy other than the tag, “Independently owned since 1963,” the ad is meant to remind Colorado banking customers that FirstBank is not seeking to buy, or be bought by, any other bank. It will appear once, on March 15, before any games, and again on Thursday March 18, before any of the 32 first round games. In both cases placement will be directly adjacent to the newspaper’s editorial NCAA bracket chart.

FIRST BANK – “BANK MERGER MADNESS”
An ad in the Denver Post running opposite an article on the “March Madness” contestants. The ad was created by TDA Advertising & Design.

DENVER POST – “MARCH MADNESS LAYOUT”
Hats off to the media planners at TDA Advertising & Design for working so closely with the Denver Post on this clever ad placement.

Trademarked red ‘M’ triggers lawsuit

Two Pennsylvania financial institutions will square off in court over who can — and can’t — use a big, red “M” in their logo. In a court filing, Members 1st FCU is accusing Metro Bank of trademark infringement over its use of an “M” monogram that the two companies currently share as their logo.

Members 1st says it’s been using its current red “M” logo since March, 2003, and received a federal trademark protection on its logo from the USPTO in January, 2006. Metro Bank debuted its new red “M” just last month.

In its filing, the credit union asserts Metro Bank adopted the M logo “in an effort to capitalize on Members 1st’s goodwill and thereby obtain a competitive advantage.”

Keep in mind that both these financial institutions share the same service areas in Pennsylvania.

In an article about the lawsuit, Members 1st spokesman George Nahodil said the two logos are so similar that the credit union has learned of cases where a Metro Bank customer came into a Members 1st branch, thinking he or she was in a Metro Bank. He said the credit union has also heard of Members 1st customers walking into a Metro Bank and thinking they were in a Members 1st.

“We’re significant players in the central Pennsylvania financial market. We felt we had to defend our logo and our brand,” Nahodil told the Patriot-News. The credit union has $1.5 billion in assets and well over 150,000 members.

The big red “M” isn’t the only trademark trouble the folks at Philly’s Metro are facing. Last November, The Financial Brand noted the serious potential trademark problems posed by the Metro name itself.

Metro Bank was created when Pennsylvania Commerce and nearby Republic First agreed to merge and change names late last year. The problem is that there were no fewer than four other banks who were already using Metro before Pennsylvania Commerce + Republic First chose it as their new name.

People frequently — and incorrectly — assume that it’s okay for an organization to use a name as long as no one else in their market is already using it. Wrong. A bank 3,000 miles away with only one branch and $10 million in assets can stop you dead in your tracks… provided they have secured a federally registered trademark from the U.S. Patent & Trademark Office.

Bottom Line: Picking something similar to what someone else in the financial industry is already using…

1. Doesn’t differentiate you, which undermines your brand.
2. Can get you sued, costing you a truckload of money. And then you’ll have to start from scratch… which will cost a second truckload of money.

If you haven’t yet taken to heart The Financial Brand’s advice about protecting your financial institution’s brand assets, what are you waiting for? A lawsuit? You should contact a trademark attorney immediately and talk about (for starters) registering your name, logo and slogan with the USPTO.

Bank trademark trumps credit union

The erstwhile Laurel Federal Credit Union is being forced to spend more than $80,000 changing names — again — five years after becoming Avanta FCU. Last year, Advanta Bank in Utah, enforced its federally-registered trademark on the word “Advanta” by giving the Montana-based credit union one year to change names or face a lawsuit.

“We thought we’d done due diligence before, but the attorney said it is close enough and you won’t win,” said Tracy DuFresne, VP of HR and Marketing for the credit union, in an interview.

Advanta Bancorp has held a federal trademark on Advanta since 1987.

The shift to Altana becomes official on July 1. The credit union says the bulk of the $80,000 cost will be spent changing the signs inside- and out on its seven branch locations.

Key Question: What about lawyers’ fees? And five years after becoming Avanta, won’t everything need to be replaced — debit cards, credit cards, business cards, forms, brochures, website, MERCHANDISING, etc.? Doesn’t that sound more expensive than $80,000?

Indeed a name change is no small undertaking. “It’s massive. We have different people in different areas taking care of this,” credit union CEO Rhonda Diefenderfer told the Billings Gazette.

The credit union received permission from the state and the NCUA to switch from Laurel FCU to Avanta back in July 2004.

Reality Check: Just because the NCUA or your state’s financial division says it’s okay to use a name doesn’t mean you won’t get sued. Their evaluation of a name includes only a limited and superficial look at similarities with competitors.

Oddly, an AP article on the story mischaracterizes the situation as a “patent dispute.” Patents, while issued from the same federal agency as trademarks, protect processes and inventions, not brand assets. This is purely a trademark issue, and patent law doesn’t have any bearing on the case.

“My advice is to work with a professional patent attorney.”
– Rhonda Diefenderfer,
CEO/Altana

No fewer than five different stories on the snafu appeared in the mainstream media following the credit union’s announcement at its annual meeting last weekend. Despite all the coverage in the last week, there was no message, update or press release regarding the name change on the credit union’s website.

Avanta – V + L = Altana

Presumably, the credit union chose Altana because it was the name that was legally available that most resembled the Avanta name. The new name is what’s known as a neological- or “coined name,” and has no literal meaning.

“Out of more than 300 names, we gave 90 to the attorney,” said Rhonda Diefenderfer, president of the credit union. “Maybe four names survived in her formal search process.”

Key Questions:

• How will members react to a second name change in five years?
• Will people feel the board and management bungled the first go-around, or will they feel a big, bad bank from Utah needlessly picked on a small Montana credit union?
• What will members think of a coined name that (somewhat subjectively) looks like a misspelling of Atlanta?

The credit union has applied for a federal trademark for its new name.

There is another Altana, a chemicals and coatings company in Germany, but they don’t represent any threat to the Montana-based credit union.

altanacu.com and altanacu.org were both registered the 10th of June. They currently point to they credit union’s website at avantacu.org.

Altana FCU has over 22,000 members and around $200 million in assets.

Key Takeaway: It’s almost impossible to find a real word that isn’t already trademarked in the financial industry. Coined- and unconventional names are the safest path. Not only are you more likely to end up with a unique, differentiated name, you will likely dodge a mountain of legal nightmares. Unfortunately in the case of Avanta, the coined name they picked was too close to something that was already trademarked.

Bottom Line:

• This is the most expensive branding mistake financial institutions make. And they make it over and over and over and over and over and over.
• Learn how to look up trademarks at the USPTO. It’s easy.
• As Diefenderfer puts it, “My advice is to work with a professional attorney.” There is no substitute.

Financial Trademarks 1976-2008

In 1996 there were just 67,000 Class 36 trademarks on file with the USPTO. But in the last decade, that number has more than tripled. Today, there are around 250,000 registered financial trademarks. In 2008, the financial industry saw the largest increase in financial trademarks in the last decade, adding 13,864 new trademarks (see Table 2 below).

Key Takeaway: Securing a trademark in the financial 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 new brand names you want to use aren’t already being used by someone else.

Reality Check: Any financial institution savvy enough to register its trademarks might be inclined to do whatever it takes to protect their brand assets (translation: “lawsuits”) even if you are thousands of miles away.

Bottom Line: It only takes a couple minutes to look up a financial trademark at the USPTO — time well spent if you save yourself a mountain of headaches down the road. Relative to the potential consequences if you don’t register your trademarks, the cost is basically nothing.

Tip: While you can register your own trademarks directly with the USPTO, you should retain the services of a lawyer.

Table 1. Financial Trademarks 1998-2008

Table 2. Financial Trademark Applications vs. Registrations

In 1999, the USPTO only approved 1-in-4 financial trademark applications, or around 25%. In 2008, the USPTO approved 4-out-of-5 financial trademark applications, or about 80% (see Table 2 above).

There were 2,784 fewer applications for financial trademarks in 2008 vs. 2007, off 15% in 2008. But the USPTO approved 1,574 more applications in 2008 (Table 2).

Table 3. Monthly Trademark Applications in Class 36

There were 2,784 fewer applications for financial trademarks in 2008 vs. 2007, off 15% in 2008. But the USPTO approved 1,574 more applications in 2008.

Table 4. Monthly Approved Trademarks Applications in Class 36

There are thousands of financial institutions across North America who leave some of their most valuable assets virtually unprotected. We’re talking about their trademarks — things like names, logos, slogans, products, etc.

Here’s a step-by-step process for searching the United States Patent & Trademark Office’s online trademark database to see if a name is federally protected. It takes less than 5 minutes. Every financial institution with a halfway unique name or slogan should do this immediately.

There’s a printable version of the how-to guide here on page two. There’s also a handy reference guide for all 45 of the USPTO’s “International Classes” in case you want to look up a trademark in another industry.

The most common mistakes financial institutions make happens when they change names. All too they make a costly error — one that can be easily avoided: they pick a new name that someone else in the financial industry has already federally trademarked. Time, energy, delays and headaches. All wasted. Lawyers and lawsuits. Very expensive.

If you’re considering a name change, you need to screen every name in the USPTO database using this tool first, before you fall in love with it. If another financial institution has a live trademark on that name, you’re basically out of luck, even if they’re on the opposite side of the continent.

Reality Check: If you’re looking for a name that’s available in the financial industry, good luck. Presently, there are 247,078 live trademarks in the financial industry. Most of the names you’re going to look-up at the USPTO website will already be taken. (When the URL allthegoodnamesaretaken.com is taken, you know it’s hard coming up with something new. This is where an experienced naming firm can help.)

If you want to read about pain and suffering, The Financial Brand has a number of cautionary tales about financial trademark pitfalls.

Bottom 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 names twice, after you lose a trademark lawsuit. And if you don’t think it’s important to trademark other assets like your ad slogans, think again. Bookmark this page. Someday it could save you a boatload of money.

Key Takeaways:

• Do your due diligence. It’s so easy, there’s no excuse.
• While the USPTO’s online search tool is a great first step, it is no substitution for the guidance and insight of an experienced trademark attorney.
• Don’t forget to check your local phone book.
• And do a Google Search while you’re at it.

Last week, The Financial Brand reported that Arp State Bank in East Texas was changing its name to American State Bank. The article noted a number of other financial institutions who already use American State Bank as their name, including ones in Iowa, South Dakota and North Dakota.

But there’s already one in Texas too.

Someone from an American State Bank in Texas sent The Financial Brand an email correcting a hotlink in the article that had been mistakenly pointing to them.

Further research has revealed that, indeed, there are two banks planning to operate in the state of Texas under the name American State Bank.

The newcomer (formerly Arp State Bank) has three locations, all in East Texas. They were founded in 1911 and now have $100 million in assets.

The incumbent is a 60-year-old financial institution based out of Lubbock, Texas and has 35 Texas locations.

Reality Check: This is a big problem. It looks like about as clear a case of trademark infringement as there probably ever could be.

When The Financial Brand asked the incumbent American State Bank in Texas how they felt about the situation and what options they were considering, the answer was “no comment.”

Yikes.

Dave Deits, one of the nation’s foremost experts on financial trademark and legal naming issues, says this situation serves as a reminder to do your due diligence. “The process of adopting a new name or trademark — even merely expanding under an existing name or trademark — can have significant and long term consequences. It’s very important to analyze the legal rights of others, whether a federal registration might be useful and available, and how these things impact short- and long range plans.”

This isn’t the first time this year Texas banks have treaded on each other’s trademark turf. Back in August, The Financial Brand reported about a second Texas bank picking the name Vista. And while we’re on the subject of Texas imitators, don’t forget about this story.

Okay, sorry, this gets a little complicated. There was a Commerce Bank in New Jersey. But earlier this year, TD Banknorth took them over. That merger created a huge naming hassle — including a lawsuit from a Commerce Bank in Massachusetts — over the Commerce name. In the end, the Massachusetts bank prevailed, preventing the Canadian behemoth from using TD Commerce, the name it preferred.

Now, a Commerce Bank — this one in Pennsylvania — is merging with Philadelphia-based Republic First Bank. These newlyweds are opting for Metro Bank as their new name. The combined company will have total assets over $3 billion and more than 1,200 team members. The company will pursue an aggressive growth strategy with new stores in Central Pennsylvania, Southern New Jersey and other markets.

The trouble is, there is already a Metro Bank in Houston. And one in Alabama. And another in Florida. Oh yeah, and one more in Georgia.

A collection of Metro Bank logos from various financial institutions from around the country.
Notice the use of circles containing an ‘M’ or ‘M’ symbol in each of the logos.

But wait… There’s more.

There’s also a First Metro Bank in Alabama, an American Metro Bank in Illinois, and a US Metro Bank in California.

Reality Check: You shouldn’t use another bank’s name — ever.

1. 

   It doesn’t help differentiate you.

2. It makes it harder for people to find you online.
3. It exposes you to all kinds of legal problems over trademarks.

Contrary to popular belief, it doesn’t matter if the bank is in another state. If you pick a name identical to another financial institution, you’re opening yourself up to a world of legal hurt. It doesn’t even have to be identical, as was the case with TD Commerce.

Bottom Line: If your bank or credit union is considering a name change, avoid new names that sound safe and familiar. Avoid them like the plague. It takes less than 5 minutes in Google to see what kind of trouble you can expect.

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?