Peoples Federal Savings Bank v. People's United Bank

United States Court of Appeals
For the First Circuit
No. 10-2053
PEOPLES FEDERAL SAVINGS BANK,
Plaintiff, Appellant,
v.
PEOPLE'S UNITED BANK,
Defendant, Appellee.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Nathaniel M. Gorton, U.S. District Judge]
Before
Torruella, Selya, and Lipez,
Circuit Judges.
Lee Carl Bromberg, with whom Erik Paul Belt, Lori J. Shyavitz,
and McCarter & English LLP, was on brief for appellant.
David H. Herrington, with whom Lawrence B. Friedman,
Arminda B. Bepko, Cleary Gottlieb Steen & Hamilton LLP, Nicholas B.
Carter, and Todd & Weld LLP, was on brief for appellee.
February 10, 2012
TORRUELLA, Circuit Judge. Plaintiff-Appellant Peoples
Federal Savings Bank ("Peoples Federal") challenges an
interlocutory order denying its motion to preliminarily enjoin
defendant-appellee People's United Bank ("People's United") from
using the mark "PEOPLES" in the rebranding of several recently
acquired banks in Eastern Massachusetts. After careful
consideration, we conclude that Peoples Federal's motion for a
preliminary injunction was properly denied. Peoples Fed. Sav. Bank
v. People's United Bank, 750 F. Supp. 2d 217 (D. Mass. 2010). We
therefore affirm the decision of the district court.
I. Facts and Procedural History
A. Factual Background
Peoples Federal is a community bank that operates
exclusively in Eastern Massachusetts.1 It was chartered in 1888
and became a federally insured savings and loan institution in
1937. While its headquarters are in Brighton, it has grown over
the years and now operates branches in Allston, Brookline, Jamaica
Plain, Norwood, and West Roxbury.
Peoples Federal has been using the term "Peoples" in its
name and service marks since 1937 and claims to be the only
1
As used in this opinion, the term "Eastern Massachusetts" will
refer to the counties of Suffolk, Norfolk, Middlesex, Plymouth,
Barnstable, Bristol, Dukes, Nantucket, Essex, and Worcester east of
the City of Worcester. This definition was provided by Peoples
Federal in its briefing to the Court and used by the district court
in reaching its determination.
-2-
continuous user of the PEOPLES mark for banking services in Eastern
Massachusetts since that time.2 It owns six Massachusetts
registrations for its marks, including PEOPLES, PEOPLES FEDERAL,
and PEOPLES FEDERAL SAVINGS BANK, which were granted on June 15,
2010, the same day Peoples Federal filed suit in this case. It
promotes its marks through advertising and marketing efforts,
involvement in community activities, and charitable giving. The
bank has attracted media attention and been portrayed favorably in
the press.
Defendant-Appellee People's United was founded in 1842 in
Bridgeport, Connecticut, and has used the word "People" in its name
for at least eighty years. The bank was called "People's Bank"
until 2007, when it changed its name to "People's United Bank" in
consideration of its plans to expand beyond Connecticut and
distinguish itself from other banks that also use the word "People"
in their titles. People's United is a full-service, regional bank
with over $22 billion in assets.
On April 16, 2010, as the result of a competitive bidding
process, People's United acquired from the Federal Deposit
Insurance Corporation ("FDIC") the deposits and banking operations
of the failed Butler Bank, which had branches in north central
2
People's United refutes this contention, asserting that at least
four different banks that have names containing the word "People"
have operated branches in the eastern part of the state during the
same time period.
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Massachusetts, and Butler Bank's subsidiary, Marlborough
Cooperative, which had branches in Marlborough (collectively,
"Butler"). On the following day (April 17, 2010), People's United
began rebranding all former Butler branches and re-opened them
under its own name. Specifically, it covered or otherwise replaced
exterior signs at the former Butler branches with signs bearing the
name and logo of "People's United Bank." People's United also used
its name and logo to replace the failed bank's interior posters and
brochures, and to publish new marketing materials and newspaper
advertisements for these branches. Butler's troubles were covered
extensively in the press as the first Massachusetts bank to fail in
sixteen years. The press also covered the related purchase and
rebranding of all Butler branches by People's United.
B. Procedural History
On June 15, 2010, Peoples Federal filed suit against
People's United alleging trademark infringement, trademark
dilution, and unfair competition in violation of Section 43(a) of
the Lanham Act, 15 U.S.C. § 1125(a), as well as Massachusetts
statutory and common law. One month later, on July 15, 2010, after
unsuccessful negotiations with People's United, Peoples Federal
presented its motion for preliminary injunction and temporary
restraining order. Peoples Federal avered that People's United
proposed to launch the rebranding of its former Butler branches on
July 19, 2010 and that this would cause confusion among Peoples
-4-
Federal's current and potential customers, damaging its goodwill
and threatening irreparable harm to its name recognition in Eastern
Massachusetts. It therefore sought to enjoin People's United from
rebranding its newly acquired Butler branches -- and any other
branches that it might procure in Eastern Massachusetts -- with the
People's United name, logo or other PEOPLES-formative marks,
pending adjudication of the parties' rights in the instant suit.
At an emergency hearing convened on July 16, 2010,
People's United informed the district court that the rebranding of
the former Butler branches had already occurred and had been in
place for the past three months. Regardless, it agreed to refrain
from taking further action, i.e., make any additional changes to
branch facades or marketing or advertising materials, in the
immediate future. People's United explained that the July 19 date
must have been based on a misunderstanding because People's United
had no plans to execute any further rebranding on that date.3 Once
satisfied that the status quo would be maintained, the district
court scheduled a status conference and motion hearing for July 29,
2010. At the motion hearing, the court announced its preliminary
3
Peoples Federal alleges it first learned that People's United
was moving into its trade area in April of 2010, when People's
United acquired Butler. However, it claims that it was not until
June of that year when it learned, through announcements in the
media, that instead of operating these banks under their previous
names, People's United was planning to convert all of its New
England branches to the "People's United" brand. It made this
averment, despite the fact that actual rebranding of the Butler
branches had occurred in mid-April, immediately after acquisition.
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findings and invited argument from the parties. On August 9, 2010,
after considering the parties' written submissions and oral
arguments, the district court issued a memorandum and order denying
Peoples Federal's motion.
1. Denial of Preliminary Injunctive Relief
In assessing Peoples Federal's motion, the district court
weighed the four preliminary injunction factors: (1) the
plaintiff's likelihood of success on the merits, (2) the likelihood
of irreparable harm, (3) the balance of relevant equities, and (4)
the effect of the court's action on the public interest. See Voice
of the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26,
32 (1st Cir. 2011). Ultimately, it found against Peoples Federal
on each of these factors.
As to likelihood of success on the merits, the district
court first rejected Peoples Federal's argument that its PEOPLES
mark was entitled to a presumption of protectability, i.e.,
inherent distinctiveness,4 based on its six Massachusetts trademark
registrations. Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 222. It
so held in part because Peoples Federal's registration of the mark
was filed on the same day that suit was brought in this case, and
4
In order for a mark to be eligible for trademark protection, it
must qualify as distinctive, Borinquen Biscuit Corp. v. M.V.
Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006), meaning that
"[the mark] is capable of functioning as a source-identifier of
goods." Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d
1, 12 (1st Cir. 2008).
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only after People's United had begun its rebranding process in
Massachusetts. The court also considered as relevant the fact that
another Massachusetts bank by the name of "PeoplesBank" had
operated as a local bank in Massachusetts since 1885, and had
registered a mark that included the dominant word "Peoples" prior
to Peoples Federal.5 The district court determined that this
registration "substantially outdates Peoples Federal's recent,
litigation-driven registrations." Id.
The court nevertheless considered whether, independent of
its Massachusetts registrations, the PEOPLES mark was inherently
distinctive. It concluded that the PEOPLES mark is properly
classified as "descriptive" rather than "suggestive" because it did
not require a stretch of the imagination to associate the term
"People" with banking services.6 Id. at 223. In reaching this
5
On this point, the district court referenced an ongoing
trademark dispute between PeoplesBank and the same defendant-
appellee in this case, People's United. People's United Bank v.
PeoplesBank, No. 08-cv-01858 (Dist. Conn. filed Dec. 8, 2008).
PeoplesBank seeks to enjoin People's United from using its name in
certain parts of Western Massachusetts. The district court denied
preliminary injunctive relief in that case after a six-day
evidentiary hearing, finding that PeoplesBank had failed to
demonstrate a likelihood of consumer confusion. See 2010 WL
2521069 (D. Conn. June 17, 2010), aff'd, 401 Fed. App'x 607 (2nd
Cir. 2010).
6
In assessing a mark's distinctiveness, proposed marks are
categorized along a spectrum as "(1) generic (least distinctive),
(2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful
(most distinctive)." Boston Duck Tours, LP, 531 F.3d at 12. Marks
classified as suggestive, arbitrary or fanciful are considered
inherently distinctive, whereas descriptive marks are tentatively
considered non-distinctive and can only attain distinctive status
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conclusion, which the district court characterized as "a close
call," it distinguished another district court opinion, Commerce
Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77 (D.
Mass. 2008), in which the word "Commerce" was found to be
suggestive in the banking context. The Commerce Bank & Trust Co.
court had found that, unlike "Commerce," words such as "Community,"
"National," and "Mutual" are "descriptive of a specific
characteristic" of a banking institution. Id. at 84. Similarly,
the district court in this case concluded that "the term 'Peoples'
is a straightforward way to describe a bank as 'people-oriented.'"
Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 223. The district court
also concluded that the frequent use of the term "People" in
connection with banking services cuts in favor of defining the mark
as descriptive. See id. (noting that "people" ranks as the twelfth
most commonly used word in bank names on the FDIC's website,
appearing in the names of 159 banks in the United States).
Having found the mark to be descriptive, the district
court then determined whether the same had acquired secondary
meaning sufficient to entitle it to protection. The court looked
at the bank's advertising budget, the nature and extent of its
promotion efforts, and evidence of the bank's growth, per this
"upon an affirmative showing of secondary meaning." Borinquen
Biscuit Corp., 443 F.3d at 116; Equine Techs., Inc. v. Equitech.,
Inc., 68 F.3d 542, 544 (1st Cir. 1995) (merely descriptive terms
generally are not entitled to protection because "they are a poor
means of distinguishing one source of services from another").
-8-
Court's guidance in Boston Beer Company Limited Partnership v.
Slesar Brothers Brewing Company, 9 F.3d 175 (1st Cir. 1993), in
which we listed factors to be taken into account when assessing a
showing of secondary meaning. See Peoples Fed. Sav. Bank, 750 F.
Supp. 2d at 223-24 (citing Boston Beer Co., 9 F.3d at 181-82). The
district court found that, although Peoples Federal had
demonstrated that its mark had acquired secondary meaning within
the neighborhoods where it has branches, it had not done so beyond
those areas. Specifically, although it had developed plans to open
branches in Suffolk, Middlesex, and Norfolk counties, Peoples
Federal had not shown that a substantial portion of the consuming
public in those areas recognized the PEOPLES mark. Its advertising
efforts and community involvement, though significant, were found
to be highly localized within the Boston city limits and nearby
urban areas. Therefore, the district court concluded that Peoples
Federal's mark was enforceable, but only "within Allston/Brighton,
Brookline, Jamaica Plain, Norwood and West Roxbury . . . [and] not
throughout all of Eastern Massachusetts, or even the rest of
Middlesex, Suffolk and Norfolk counties." Id. at 224.
The district court then evaluated whether People's
United's alleged infringing use was likely to result in consumer
confusion. In finding against Peoples Federal on this point, the
court carefully weighed the eight likelihood-of-confusion factors
established in Pignons S.A. de Mecanique de Precision v. Polaroid
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Corp. (Pignons), 657 F.2d 482, 487 (1st Cir. 1981) (the "Pignons
factors" or "Pignons analysis").7 The court determined that,
although the banks' marks contain the same dominant word, important
differences between the marks, including additional essential words
(such as "Federal" and "United") and visual differences in their
logos "undoubtedly help customers distinguish between the two
banks, thus decreasing the chance of confusion." Peoples Fed. Sav.
Bank, 750 F. Supp. 2d at 225.
Although the district court considered the similarity of
the services and found that this factor weighed in favor of Peoples
Federal, it also weighed the parties' differing views on whether
the two banks market to the same kinds of retail and commercial
consumers. It noted that while Peoples Federal emphasizes its
identity as a small neighborhood bank, People's United is a large,
regional bank with numerous branches throughout New England. As to
the similarity of their advertising, channels of trade and
prospective customers, the court also determined that because
banking customers "ordinarily gather information before choosing a
bank and make their decision based on substantive factors (other
7
In Pignons, we stated that when determining whether a putative
infringer's use of a mark is likely to cause consumer confusion, a
court should examine the following factors: "the similarity of the
marks; the similarity of the goods; the relationship between the
parties' channels of trade; the relationship between the parties'
advertising; the classes of prospective purchasers; evidence of
actual confusion; the defendant's intent in adopting its mark; and
the strength of the plaintiff's mark." 657 F.2d at 487.
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than a bank's name)," the likelihood of confusion on those grounds
was minimal, "particularly because the banks [in this case] do not
operate branches in the same neighborhoods." Id. at 226.
Therefore, the balance of these three factors tipped slightly in
favor of People's United.
The district court then considered two instances of
alleged confusion cited by Peoples Federal in support of its
motion, both of which stemmed from a Boston Globe article that
discussed a merger between People's United and River Bank, an
entity that operates branches in Essex County. Evidence was
presented that Thomas Leecht ("Leecht"), President and CEO of
Peoples Federal, was asked on two separate occasions whether
Peoples Federal (as opposed to People's United) was acquiring River
Bank.8 The district court stated that neither of the reported
incidents involved confusion among current or prospective
customers, which indicated "a paucity of evidence of actual
consumer confusion." Id.9 Nonetheless, it found that because
8
Leecht stated in an affidavit that several days after the Boston
Globe article appeared, a fellow rotary club member asked him
whether Peoples Federal was purchasing River Bank. Leecht also
reported that, during a sales pitch, a billboard vendor indicated
that he had thought Peoples Federal was acquiring River Bank, but
that he may have been confusing Peoples Federal with another bank.
Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 226.
9
In doing so, the district court distinguished the present case
from the facts in Commerce Bank & Trust Co., 554 F. Supp. 2d at 86,
where after a merger announcement in the Boston Globe involving the
defendant in that case, the plaintiff received numerous calls and
emails from current customers asking if they could begin depositing
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People's United entered Eastern Massachusetts only a few months
prior, the lack of proof of actual confusion was less salient, and
concluded that the scarcity of such evidence was not in itself
dispositive of Peoples Federal's claim.
It next determined that Peoples Federal presented no
compelling evidence that People's United acted in bad faith by
adopting the mark "People's United Bank", and that -- to the
contrary -- it had used the word "People's" in its name for
decades, asserting that "its decision to change its name from
'Peoples Bank' [sic] to 'Peoples United Bank' [sic] aimed to avoid,
rather than create, confusion in the market place."10 Id. It
further found credible People's United's contention that the
rebranding of the acquired Butler branches was consistent with
standard practice in FDIC-assisted acquisitions. The court
perceived "no intent by Peoples [sic] United to get a free ride off
the good will of plaintiff's mark or to confuse prospective
customers," thus the intent factor weighed in People's United's
favor. Id. at 227.
Finally, the district court considered the strength of
the marks. Per its discussion regarding the lack of inherent
their paychecks at the new branches.
10
Throughout its opinion, the district court referred to People's
United as "Peoples United." Here we have used the phrasing of the
bank's name in the possessive form, as reflected in the parties'
briefs and the record on appeal.
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distinctiveness of Peoples Federal's mark, the court noted that
"the conceptual strength of the PEOPLES mark is belied by the fact
that 159 banks elsewhere around the country use that mark and many
coexist in the same market areas." Id. Although the PEOPLES mark
had developed secondary meaning in the specific neighborhoods in
which Peoples Federal operates, the court found the term to be a
common one in the banking industry as a whole. Thus, the mark's
lack of inherent conceptual strength tilted this factor in favor of
People's United. The district court concluded that the balance of
the Pignons factors -- particularly the dissimilarity between the
parties' logos, consumers' tendency to perform research before
selecting a bank, the absence of bad faith, and the scarcity of
evidence of actual confusion -- weighed against a finding of
likelihood of consumer confusion. The court additionally noted
that
at least at this stage of the proceedings,
[Peoples Federal] has not adequately
demonstrated that it is likely to succeed on
the merits of its trademark claim. If,
however, evidence is elicited that 1)
[People's United] is deliberately encroaching
into the specific neighborhoods in which
[Peoples Federal] operates and/or promotes
itself as "Peoples" (rather than "People's
United") in an effort to divert [Peoples
Federal's] customer base and 2) [People's
United's] actions have caused actual confusion
among [Peoples Federal's] clientele, the
[c]ourt would entertain a renewed motion for
injunctive relief.
Id.
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The district court concluded its analysis by considering
the other three preliminary injunction factors. It found that,
because Peoples Federal had failed to make a showing of likelihood
of consumer confusion, it was not at risk of continuing irreparable
harm. Its finding that whatever harm incurred thus far was neither
imminent nor irreparable was buttressed by the fact that People's
United had been using its name to operate former Butler branches
for more than three months with scant evidence of consumer
confusion or Peoples Federal's awareness until June of 2010. The
court concluded that, because Peoples Federal had failed to show
both likelihood of confusion and irreparable harm, the balance of
the equities and the analysis of the public interest weighed
against providing injunctive relief.
This interlocutory appeal ensued.
II. Discussion
Peoples Federal challenges the district court's denial of
a preliminary injunction on multiple grounds. The main thrust of
its appeal is that the court imposed an impermissibly high standard
for establishing a likelihood of success on the merits by
improperly weighing the eight Pignons factors for likelihood of
consumer confusion. As will be discussed below, we hold that the
district court acted within its discretion when it denied
injunctive relief based on its appraisal of the evidence and an
accurate application of our case law.
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A. Preliminary Injunction Standard
"A preliminary injunction is an extraordinary and drastic
remedy that is never awarded as of right." Voice of the Arab
World, Inc., 645 F.3d at 32 (citations and internal quotation marks
omitted). In order for a court to grant this type of relief, a
plaintiff "must establish [1] that he is likely to succeed on the
merits, [2] that he is likely to suffer irreparable harm in the
absence of preliminary relief, [3] that the balance of equities
tips in his favor, and [4] that the injunction is in the public
interest." Id. (quoting Winter v. Natural Res. Def. Council, Inc.,
555 U.S. 7, 20 (2008)). Generally, "[w]hile all these factors must
be weighed, the cynosure of this four-part test is . . . the
movant's likelihood of success on the merits." Borinquen Biscuit
Corp., 443 F.3d at 115. In a trademark case, "[t]he importance of
that inquiry is magnified . . . because the resolution of the other
three factors will depend in large part on whether the movant is
likely to succeed in establishing infringement." Id. ("This
emphasis on likelihood of success is fully consistent with the
tenet that, as a matter of public policy, trademarks should be
protected against infringing uses.").11
11
We recently noted that this Court has in the past employed a
presumption that irreparable harm can be assumed "if a trademark
holder demonstrates a likelihood of success in establishing
infringement." Mercado-Salinas v. Bart Enters. Int'l, Ltd., No.
10-2359, 2011 WL 6350535, at *6 n.7 (1st Cir. Dec. 20, 2011). We
reiterate here that there is a looming question as to whether this
presumption can co-exist with the Supreme Court's recent holding in
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The district court's conclusions regarding these factors
and its determinations as to their relative weight deserve
considerable deference on appeal. Id. at 116. Accordingly, the
grant or denial of a preliminary injunction is reviewed for abuse
of discretion. United States v. Weikert, 504 F.3d 1, 6 (1st Cir.
2007). "Within that framework, findings of fact are reviewed for
clear error and issues of law are reviewed de novo." Boston Duck
Tours, LP, 531 F.3d at 11. In other words, the Court "will set
aside a district court's ruling on a preliminary injunction motion
only if the [district] court clearly erred in assessing the facts,
misapprehended the applicable legal principles, or otherwise is
shown to have abused its discretion." Id. (quoting Wine & Spirits
Retailers, Inc. v. Rhode Island, 418 F.3d 36, 46 (1st Cir. 2005)).
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 392-93, 394 (2006)
(holding in a patent case that district courts may not "replace
traditional equitable considerations with a rule that an injunction
automatically follows a determination that a copyright has been
infringed," and requiring courts to exercise their discretion
"consistent with traditional principles of equity, in patent
disputes no less than in other cases governed by such standards").
See also Voice of the Arab World, Inc., 645 F.3d at 31 (concluding
that the principles of eBay applied to a request to preliminarily
enjoin alleged trademark infringement, but declining to decide
whether such principles precluded the court of appeals from
presuming irreparable harm). Since Peoples Federal was unable to
establish a likelihood of consumer confusion, i.e., a likelihood of
success on the merits of its trademark infringement claim, the
district court in this case did not reach the question whether it
could presume irreparable harm, and we need not do so here.
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We turn now to Peoples Federal's challenges on appeal,
all of which center on the first factor in the preliminary
injunction analysis: likelihood of success on the merits.
B. Likelihood of Success on the Merits
In order for a party to succeed on a claim of trademark
infringement, it must demonstrate that (1) its mark merits
protection and (2) the allegedly infringing use is likely to result
in consumer confusion. Borinquen Biscuit Corp., 443 F.3d at 116.
"We have interpreted 'likely confusion' to mean 'more than the
theoretical possibility of confusion.'" Boston Duck Tours, LP, 531
F.3d at 12 (quoting Int'l Ass'n of Machinists & Aerospace Workers,
AFL–CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 200 (1st Cir.
1996)). This means "the allegedly infringing conduct must create
'a likelihood of confounding an appreciable number of reasonably
prudent purchasers exercising ordinary care.'" Id. (quoting Int'l
Ass'n of Machinists, 103 F.3d at 201).
As conveyed by the district court, we have enumerated
eight factors to guide the inquiry into likelihood of confusion:
[1] the similarity of the marks; [2] the
similarity of the goods; [3] the relationship
between the parties' channels of trade; [4]
the relationship between the parties'
advertising; [5] the classes of prospective
purchasers; [6] evidence of actual confusion;
[7] the defendant's intent in adopting its
mark; [8] and the strength of the plaintiff's
mark.
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Pignons, 657 F.2d at 487; accord Astra Pharm. Prods., Inc. v.
Beckman Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir. 1983). "A
proper analysis takes cognizance of all eight factors but assigns
no single factor dispositive weight." Borinquen Biscuit Corp., 443
F.3d at 120. See also Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp.,
376 F.3d 8, 15 (1st Cir. 2004) ("Courts may consider other factors
and may accord little weight to factors that are not helpful on the
particular facts of a case."). Further, "[b]ecause likelihood of
confusion is a factbound inquiry, appellate review of a trial-level
finding on that issue is for clear error." Borinquen Biscuit
Corp., 443 F.3d at 120.
The court below applied this eight-factor test and
concluded that, on the whole, the evidence weighed against a
finding that People's United's use of the PEOPLES mark was likely
to cause consumer confusion. Peoples Federal attacks the district
court's determination on various grounds, all of which we find
unpersuasive. We consider each in the order presented to us on
appeal.
1. Actual Confusion and the Defendant's Intent
We first evaluate Peoples Federal's related arguments as
to the sixth and seventh factors in the Pignons analysis: evidence
of actual confusion and the defendant's intent in adopting the
PEOPLES mark.
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a. Actual Confusion
Peoples Federal argues that the district court erred by
requiring proof of actual confusion. It posits that, "[w]hile
evidence of actual confusion is 'often deemed the best evidence of
possible future confusion,' proof of actual confusion is not
essential to finding likelihood of confusion." Id. (quoting
Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 40 (1st Cir. 2006)).
It also emphasizes that because People's United and Peoples Federal
had only co-existed in Eastern Massachusetts for a short period of
time, evidence of actual confusion could not be expected. See id.
at 121 ("Historically, we have attached substantial weight to a
trademark holder's failure to prove actual confusion only in
instances in which the relevant products have coexisted on the
market for a long period of time."). Peoples Federal notes that
the relevant injury in the likelihood of confusion analysis
includes loss of goodwill and control of the mark, and is not
limited to whether confusion caused an actual diversion of
customers or lost sales. See Beacon Mut. Ins. Co., 376 F.3d at 10,
15 (the relevant commercial injury for purposes of § 43(a) of the
Lanham Act includes not only loss of sales to actual and
prospective buyers, but also harm to the trademark owner's goodwill
and reputation).
Peoples Federal's argument is a red herring. It is
patently clear from a balanced reading of the district court's
-19-
opinion that it only considered confusion regarding current or
prospective buyers as one in a series of factors. Indeed, after
noting that evidence of actual confusion was limited in this case,
the court went on to state that "the scarcity of such evidence
[was] not in itself dispositive of plaintiff's claim," Peoples
Fed. Sav. Bank, 750 F. Supp. 2d at 226 (citing to relevant case
law), and acknowledged that People's United had entered Eastern
Massachusetts only a few months prior. The district court then
continued to weigh the remaining Pignons factors before reaching
its determination.
While it is true that evidence of actual confusion is not
a prerequisite for a finding of likelihood of confusion, courts may
still weigh evidence presented on this factor as part of their
balanced analysis. See, e.g., Beacon Mut. Ins. Co., 376 F.3d at 16
(noting that, although "other persons might be relevant if their
confusion threatens the commercial interests" of the mark's owner,
"[a]ctual and potential customers . . . are the most obvious
'relevant persons'" in a likelihood of confusion analysis)
(citation and quotation marks omitted). There is no error of law
here, and the court's assessment of the evidence was not clearly
erroneous.12
12
Notably, the only other evidence presented by Peoples Federal
in support of a finding that actual confusion weighed in its favor
was an online poll conducted by "Banker & Tradesman" related to the
litigation between PeoplesBank and People's United. The poll was
conducted over the course of a week and purportedly resulted in
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b. People's United's Intent in Adopting the Mark
Peoples Federal argues that the district court erred by
requiring evidence of deliberate encroachment (or bad intent) to
divert Peoples Federal's customers. It points out that "[e]vidence
of bad intent, . . . while potentially probative of likelihood of
confusion, is simply not required in a trademark infringement case;
moreover, 'a finding of good faith is no answer if likelihood of
confusion is otherwise established.'" Star Fin. Servs., Inc. v.
AASTAR Mortg. Corp., 89 F.3d 5, 11 (1st Cir. 1996) (quoting
President & Trs. of Colby Coll. v. Colby Coll.-N.H., 508 F.2d 804,
811-12 (1st Cir. 1975)). However, in this case -- as noted
throughout this opinion -- likelihood of confusion was not
"otherwise established." In addition, although bad intent is "not
almost eighty percent of respondents choosing "Yes, the two banks
names are too similar", to the question "Will PeoplesBank be
successful in its legal fight with People's United?" Peoples
Federal contends that this shows the public would be confused by
the presence of another "Peoples" bank in Massachusetts.
Putting aside the fact that the referenced poll used loaded
questions to require predictions as to a litigation that is not
related to the present case, thus undercutting its accuracy and
relevance, we do not think the district court committed error, let
alone clear error, by not referencing this poll in its opinion
because its findings were adequately supported by other evidence.
This "proof" of potential confusion is not strong enough that we
would set aside the lower court's finding as clear error for
failure to consider the same. Cf. Boston Athletic Ass'n v.
Sullivan, 867 F.2d 22, 31 (1st Cir. 1989) (where plaintiffs' other
evidence of confusion was sufficiently strong, lack of survey data
as to public knowledge regarding the source of the goods in
question did not fatally undercut plaintiffs' claims, as "[they]
were not bound to a particular form of evidence" to prove
confusion).
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required" for a finding of trademark infringement, the defendant's
intent in adopting the mark is an appropriate consideration in the
court's assessment of whether the public is likely to be confused
about the actual source of the goods or services at issue. See,
e.g., Boston Duck Tours, LP, 531 F.3d at 30 (absence of bad faith
weighed against a finding of infringement); Volkswagenwerk
Aktiengesellschaft v. Wheeler, 814 F.2d 812, 819 (1st Cir. 1987)
(noting as relevant to infringement analysis that, while evidence
did not indicate an intent to deceive customers, it did indicate
that defendant chose "Beetle" mark "not independently, but with an
intent to benefit from [the plaintiff's] reputation"). Here, the
defendant created its mark and logo years before it entered the
Eastern Massachusetts market.
c. Application of a "Heightened" Standard for
Likelihood of Confusion
Peoples Federal contends that the district court erred by
requiring proof of actual confusion, actual loss of business, and
bad intent, thereby applying an improperly high standard for
likelihood of success on the merits. Peoples Federal points to the
district court's statement at the end of its likelihood of success
analysis to support its position. The district court indicated
that "at least at this stage of the proceedings, the plaintiff
ha[d] not adequately demonstrated it [would be] likely to succeed
on the merits of its trademark claim." Peoples Fed. Sav. Bank, 750
F. Supp. 2d at 227. In particular, the district court stated it
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"would entertain a renewed motion for injunctive relief" if
evidence was elicited of (1) deliberate encroachment into specific
neighborhoods where Peoples Federal operates and of (2) People's
United's actions having caused actual confusion among Peoples
Federal's clientele. Id. Peoples Federal argues this language
confirms that the district court required more than a mere
likelihood of confusion, and that it found against the grant of a
preliminary injunction because Peoples Federal failed to present
proof of these two factors. We are not persuaded.
Peoples Federal reads more into the district court's
words than is warranted. The district court's findings as to
likelihood of confusion were supported by the record before it,
which included scant evidence of actual confusion, a proper
consideration of People's United's intent in adopting the mark, and
a thorough analysis of six other factors. These additional
expressions were only an attempt to clarify to the parties the
court's willingness to consider future motions for injunctive
relief if it were given a more developed record.
We also reject Peoples Federal's related contention that
the district court applied an improperly high standard as to
likelihood of confusion because it indicated that in a trademark
infringement case the plaintiff carries "a considerable burden" to
show "not just a 'possibility of confusion' but rather a
'substantial likelihood of confusion.'" Id. at 224 (emphasis
-23-
added) (quoting Bear Republic Brewing Co. v. Cent. City Brewing
Co., 716 F. Supp. 2d 134, 140 (D. Mass. 2010)). The district
court's consideration of the actual confusion factor did not amount
to a requirement "to prove an iron-clad, sure-bet likelihood of
confusion," as characterized by Peoples Federal. The district
court accurately framed the plaintiff's burden, see, e.g., Star
Fin. Servs., Inc., 89 F.3d at 10 ("We require evidence of a
substantial likelihood of confusion -- not a mere
possibility . . .") (internal quotation marks omitted), and --
after an appraisal of Peoples Federal's slim proffer of evidence --
determined, in its discretion, that the proffered evidence was
insufficient to support a finding of likelihood of confusion.
2. Similarity of the Marks
Peoples Federal argues that the district court erred by
engaging in a side-by-side comparison of the banks' respective
logos, and that it gave too little weight to the use by both banks
of the same dominant word in its similarity-of-the-marks analysis.
However, as Peoples Federal recognizes, "[s]imilarity is determined
on the basis of the total effect of the designation, rather than a
comparison of the individual features." Volkswagenwerk, 814 F.2d
at 817 (quoting Pignons, 657 F.2d at 467). Accordingly, the
district court took a holistic approach in assessing the parties'
marks, considering their "sight, sound and meaning," and finding
important differences. Peoples Fed. Sav. Bank, 750 F. Supp. 2d at
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225 (quoting Boustany v. Boston Dental Grp., Inc., 42 F. Supp. 2d
100, 107 (D. Mass. 1999)). Specifically, the district court noted
that People's United's mark contains the equally prominent word
"United" and that its logo uses a red and blue color scheme, as
well as a red orbit icon that encircles both the words "People's"
and "United." Id. Meanwhile, Peoples Federal uses a green color
scheme, with a yellow horizontal line separating the word "Peoples"
from "Federal Savings Bank." Id. The district court concluded
that "[a]lthough the banks' marks contain the same dominant word,
the visual differences in their logos neutralize[d] this factor."
Id.
Contrary to Peoples Federal's contentions, the court's
conclusion is supported by our case law. See Int'l Ass'n of
Machinists, 103 F.3d at 204 ("otherwise similar marks are not
likely to be confused if they are used in conjunction with clearly
displayed names, logos or other source-identifying designations");
Pignons, 657 F.2d at 487 (same); cf. Beacon Mut. Ins. Co., 376 F.3d
at 9-10, 18 (factfinder could reasonably find total effect of marks
to be similar where, in addition to sharing "the[ir] most salient
word", marks also shared "the[ir] only pictorial element," an image
of a lighthouse).13 In addition, as will be discussed in our
13
On this ground we must reject the related contention by Peoples
Federal that the district court abused its discretion or otherwise
committed clear error because it did not give greater weight to its
own finding that the banks' marks were "often abbreviated" to
simply "Peoples". Evidence of name abbreviation by both banks was
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assessment of the appellant's strength-of-the-marks arguments
infra, the district court did not commit error in determining that
the word "Peoples" was descriptive, rather than suggestive, and
that determination cuts in favor of its finding against Peoples
Federal on the similarity factor. See, e.g., Boston Duck Tours,
LP, 531 F.3d at 29 (finding "Boston Duck Tours" and "Super Duck
Tours" dissimilar despite both parties' use of same dominant word;
emphasizing that "[e]ven if elements of each party's mark overlap,
or are visually similar, the marks as a whole may still create a
distinct commercial impression, especially if the similarities are
limited to generic or descriptive elements"); see also First Sav.
Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, 655 (10th Cir.
1996) ("When the primary term is weakly protected to begin with,
minor alterations may effectively negate any confusing similarity
between the two marks.").
scant. The record reflects that most instances of curtailment
occurred within contextual marketing materials where phrases such
as "It's Possible at People's" were used in conjunction with the
respective bank's full name and logo.
We also reject the argument that a special rule should apply in
cases involving banks where a dominant word is alleged to cause
confusion. Peoples Federal provides no legal support for this
proposition; it merely cites district court decisions involving
banks where the facts supported a finding of likelihood of
confusion. People's United found just as many cases involving
banks that reached the opposite outcome. The question is one of
fact, Borinquen Biscuit Corp., 443 F.3d at 120, and no clear error
is displayed here.
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3. Similarity of the Services
Peoples Federal contends that because the district court
found that "[t]he parties offer essentially identical retail and
commercial banking services," and this factor weighed in favor of
People's United, Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 225,
the court's overall conclusion should have also cut in its favor.
Once again, Peoples Federal misconstrues the applicable legal
standard. A proper analysis of the eight elements that guide the
likelihood of confusion inquiry "assigns no single factor
dispositive weight." Borinquen Biscuit Corp., 443 F.3d at 120.
The court committed no abuse of discretion by considering the
evidence on each of the remaining factors as part of its overall
determination.
4. Relationship Between the Parties' Advertising and
Channels of Trade, and the Classes of Prospective
Customers
After considering these three interrelated factors
together, see Beacon Mut. Ins. Co., 376 F.3d at 19, the district
court noted differences between the scope of the parties'
businesses and found that customers were unlikely to be confused
because of the level of care they ordinarily would employ before
choosing a bank. It ultimately decided that "even if the two banks
attract the same clientele, the likelihood of confusion is minimal,
particularly because the banks do not operate branches in the same
neighborhoods." Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 226.
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Peoples Federal attacks this finding on the ground that
the difference between the banks in this case -- i.e., the fact
that Peoples Federal is a small, neighborhood bank, whereas
People's United is a large, regional bank -- augments the
likelihood of reverse confusion. See, e.g., Visible Sys. Corp. v.
Unisys Corp., 551 F.3d 65, 72 (1st Cir. 2008) (explaining that
"under a reverse confusion theory, customers purchase the senior
user's goods under the misimpression that the junior user is the
source of the senior user's goods" and that harm may occur if "the
junior user saturates the market and overwhelms the senior user,"
affecting the value of the trademark and the senior user's
business); see also Attrezzi, LLC, 436 F.3d at 40 ("[T]he
relatively greater strength of a junior user . . . may hurt, rather
than help, its defense.") (internal quotation marks omitted).
Notwithstanding, we have held that "[t]here is no actionable
reverse confusion in the absence of a showing of likely confusion
as to source or sponsorship," Visible Sys. Corp., 551 F.3d at 72,
and all of the other factors considered by the district court in
this case weighed against such a finding.
In addition, contrary to the appellant's contention, the
district court's conclusion that customers would not likely be
confused between the banks because banking customers "ordinarily
gather information before choosing a bank and make their decision
based on substantive factors (other than a bank's name)," Peoples
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Fed. Sav. Bank, 750 F. Supp. 2d at 226, is supported by expert
testimony on the record, and Peoples Federal fails to articulate
how this conclusion constitutes either a legal or a factual error.
Our Circuit's precedent indicates that "any meaningful inquiry into
the likelihood of confusion necessarily must replicate the
circumstances in which the ordinary consumer actually confronts (or
probably will confront) the conflicting mark." Int'l Ass'n of
Machinists, 103 F.3d at 201. The parties have not pointed to, nor
have we found, case law in our Circuit interpreting the level of
care to which we may hold an ordinary consumer in the banking
sector. However, other circuits examining the subject have reached
conclusions similar to that reached by the district court in this
case. See, e.g., First Nat. Bank in Sioux Falls v. First Nat.
Bank, S.D., 153 F.3d 885, 889-90 (8th Cir. 1998) (validating lower
court's holding that "consumers tend to exercise a relatively high
degree of care in selecting banking services" and recognizing that
"other courts have determined there to be minimal or no likelihood
of confusion even where the names of financial institutions share
the same dominant terms"); First Sav. Bank, F.S.B., 101 F.3d at 653
(no likelihood of confusion between "FirstBank" and "First Bank
System" service marks where bank logos were visually distinct); Sun
Banks of Fla., Inc. v. Sun Fed. Sav. & Loan, 651 F.2d 311, 319 (5th
Cir. 1981) (no likelihood of confusion between "Sun Federal
Savings" and "SunBanks" service marks); First Bank v. First Bank
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Sys., Inc., 909 F. Supp. 657, 661 (S.D. Iowa 1995) (confusion
between names "First Bank" and "First Bank Iowa" is reasonably
manageable such that equities weigh against permanent injunction),
aff'd, 84 F.3d 1040 (8th Cir. 1996). We do not in this case adopt
a categorical rule for banking cases, but merely hold that the
record supports the district court's conclusion as to the level of
care that could be presumed, and this was not in itself an abuse of
discretion. See Boston Athletic Ass'n, 867 F.2d at 30 (noting that
"[d]istinctions based on expertise can be useful in analyzing
likelihood of confusion"); Astra Pharm. Prods., Inc., 718 F.2d at
1206 ("[T]here is always less likelihood of confusion where goods
are expensive and purchased after careful consideration.").
5. Strength of the Marks
Peoples Federal argues that the district court erred by
not enjoining People's United's use of the PEOPLES mark within the
trade area when it concluded that the mark had acquired secondary
meaning. Alternatively, Peoples Federal contends the court erred
by classifying the PEOPLES mark as descriptive rather than
suggestive, and by not ascribing inherent distinctiveness to the
mark by virtue of Peoples Federal's trademark registrations.
First, the fact that the district court found the mark to
be protectable in a particular trade area (i.e., within
Allston/Brighton, Brookline, Jamaica Plain, Norwood and West
Roxbury) does not itself entitle Peoples Federal to a preliminary
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injunction, particularly when it has not been able to prove a
likelihood of confusion, Borinquen Biscuit Corp., 443 F.3d at 116,
and established the other three factors in the preliminary
injunction analysis, Voice of the Arab World, Inc., 645 F.3d at 32.
Second, the district court's determination as to whether
a term is generic, descriptive, or inherently distinctive is a
question of fact. Boston Beer Co., 9 F.3d at 180. So is the
question whether a mark has acquired secondary meaning. Id.
"Accordingly, the district court's findings on both of these
questions are subject to review only for clear error," a hurdle
that is "quite high." Id. (quoting Lenn v. Portland Sch. Comm.,
998 F.2d 1083, 1087 (1st Cir. 1993)) (internal quotation marks
omitted). Peoples Federal simply fails to overcome this obstacle
on appeal; it offers nothing more than a difference of opinion as
to the district court's conclusions on the record, which we believe
were reasonably reached.
Peoples Federal suggests that, in reaching its conclusion
that the mark lacked inherent conceptual strength, the district
court improperly relied on uses of the PEOPLES-formative mark which
were outside of the relevant trade area. We hold that the district
court did not commit legal error on this ground. As a threshold
matter, the court found that "159 banks elsewhere around the
country use [the PEOPLES mark] and many coexist in the same market
areas." Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 227 (emphasis
-31-
added). Specifically, the district court found that "four other
banks in Eastern Massachusetts have used marks which include the
word 'People'." Id. at 222. "Although those banks were not
located in the same neighborhoods as the Peoples Federal branches
(which are primarily in Suffolk County)," the court found "their
use of the mark casts doubt on its inherent distinctiveness." Id.
It is therefore misleading for Peoples Federal to contend that the
district court went beyond the relevant market area in reaching its
conclusions.
Furthermore, in assessing the strength of the plaintiff's
mark, the district court may analyze both its conceptual and
commercial strength. Boston Duck Tours, LP, 531 F.3d at 16-17.
Accordingly, the district court here concluded that the mark was
descriptive, in part because it was frequently used in the banking
industry as a whole. See Peoples Fed. Sav. Bank, 750 F. Supp. 2d
at 227 ("Although the PEOPLES mark has developed a secondary
meaning in the specific neighborhoods [where] Peoples Federal
operates, the term is a common one in the banking industry as a
whole."). This is not an improper consideration in a
distinctiveness analysis. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 11:69 (4th ed. 2011)
[hereinafter, McCarthy] ("If others are in fact using the term to
describe their goods or services, an inference of descriptiveness
can be drawn . . . . 'If [a word or syllable] has been frequently
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[used in similar merchandise], the inference is warranted that it
is not purely arbitrary; that it would be likely to be understood
by purchasers as identifying or describing the merchandise itself,
rather than the source thereof and hence as having little or no
trademark significance.'" (quoting Shoe Corp. of Am. v. Juvenile
Shoe Corp., 266 F.2d 793, 796 (Cust. & Pat. App. 1959)).
Finally, Peoples Federal argues that the district court
failed to give proper presumptive weight to its six Massachusetts
trademark registrations. See Mass. Gen. Laws ch. 110H, § 5(b)
(registration of a mark in Massachusetts is, "when introduced in
any action, prima facie evidence of the registrant's exclusive
right to use the registered mark in [the] commonwealth on goods or
services specified in the registration"). Peoples Federal argues
that this statutory provision shifted the burden to the accused
infringer (here, People's United) to prove descriptiveness. See 3
McCarthy § 22:1 (where state law indicates registration is prima
facie evidence of ownership and validity of the mark, "[t]he burden
is on the challenger to rebut the presumption of validity").
However, even if such a presumption applies in these circumstances
(a matter on which we take no view), a fair reading of the record
supports the district court's finding that there was sufficient
evidence to rebut such a presumption. Principally, the fact that
another Massachusetts bank (PeoplesBank) had already registered a
mark that includes the dominant word "Peoples," and which
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"substantially outdates" Peoples Federal's registrations, directly
controverts the proposition that the registration is valid. This,
in addition to other evidence that belied Peoples Federal's
contention of senior usage, i.e., prior use of the PEOPLES mark by
other banks in the area, supported the district court's
determination. There was therefore no clear error in the court's
assessment that the state registration was not presumptively valid
and, hence, that the mark was not inherently distinctive.
III. Conclusion
We find that the district court did not err in its
assessment of the record; nor did it misapprehend applicable legal
principals or otherwise abuse its discretion. Because its
determinations as to likelihood of success on the merits were
correctly reached, we reject Peoples Federal's alternative argument
that the district court's erroneous findings on the first
preliminary injunction factor improperly colored its conclusions as
to the other three.
For the foregoing reasons, we affirm the district court's
denial of preliminary injunctive relief.
Affirmed.
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