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.

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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