First Bank, Appellant, v. First Bank System, Inc.; and First Bank, fsb, formerly known as Metropolitan Federal Bank, fsb, Appellees., 84 F.3d 1040

Summary

One appellee had registered their name as a trademark, which was similar to a trademark used by appellant. Appellee acquired several banks in the area where appellant operated its banks. Appellant sought a permanent injunction preventing appellees from using names similar to appellant's banks' names for banks that appellees had acquired. Appellant argued that it possessed common law trademark rights in the name prior to appellee's registration because its mark had acquired secondary meaning in the minds of consumers. Examining the factors to determine the existence of a common law right to a trademark, the court held that the evidence suggested that consumers had not associated appellant's claimed trademark with appellant's bank prior to appellee's registration of the trademark. The court thus upheld the trial court's denial of a permanent injunction as appellant failed to prove an element requisite to establishing a common law trademark.