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.