First Sav. Bank, F.S.B. v. U.S. Bancorp

• Decision Date: 25 August 2000
• Docket Number: No. 95-4020-SAC.,95-4020-SAC.
• Citation: 117 F.Supp.2d 1061
• Parties: FIRST SAVINGS BANK, F.S.B., Plaintiff, v. U.S. BANCORP and U.S. Bank National Association, Defendants.
• Court: U.S. District Court — District of Kansas

117 F.Supp.2d 1061

FIRST SAVINGS BANK, F.S.B., Plaintiff, v. U.S. BANCORP and U.S. Bank National Association, Defendants.

No. 95-4020-SAC.

United States District Court, D. Kansas.

August 25, 2000.

COPYRIGHT MATERIAL OMITTED

Elizabeth R. Herbert, Pedro L. Irigonegaray, Robert V. Eye, Irigonegaray & Assoc., Topeka, KS, Thomas H. Van Hoozer, Robert D. Hovey, John M. Collins, Hovey, Williams, Timmons & Collins, Kansas City, Mo, for plaintiff.

Arthur E. Palmer, Goodell, Stratton, Edmonds & Palmer, Topeka, KS, Peter Lancaster, Stephen R. Baird, Ronald J. Brown, Dorsey & Whitney, Minneapolis, MN, for defendants.

MEMORANDUM AND ORDER

CROW, Senior District Judge.

This service mark case comes before the court again on a protracted and involved summary judgment proceedings. The defendants seek summary judgment on several grounds that are replete with numerous legal and factual issues. (Dk. 295). Both sides submit briefs that overlook certain important facts and that sometimes give rise to more questions than answers. Having pored over notebooks of evidence in considering the numerous issues and arguments, the court's impression is that the plaintiff's evidence appears thin particularly in those areas where the legal standards are heightened and that most of the precedent is less than favorable to the plaintiff's claims.¹ With that said, the court realizes the controlling issues are largely factual, the earlier reversal on appeal puts this case in an unusual posture, and a significant portion of the evidence provided in the summary judgment record is of a kind or nature best interpreted and evaluated at a full hearing.

PROCEDURAL HISTORY

First Savings Bank, F.S.B. ("First Savings") sued First Bank System, Inc., now known as U.S. Bancorp and U.S. Bank National Association ("Bancorp") and its member institution, First Bank, F.S.B., for service mark infringement, unfair competition, and false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a) and Kansas law. First Savings sought to enjoin the defendants from using the names and marks of "First Bank(s)," "First Bank System," or "First Bank Kansas" for the defendants' banks servicing the Kansas counties of Douglas, Riley, Geary, Pottawatomie and Marshall. The parties entered into a stipulation on February 9, 1995, that limited the defendants' use of "First Bank" and similar names in these five counties pending final judgment by the court. (Dk.10). In a subsequent scheduling order, the court adopted the parties' stipulation, consolidated the preliminary injunction hearing with the trial on the merits, and established an expedited discovery and trial schedule. The district court subsequently continued the trial and allowed the defendants to file a dispositive motion.

The defendants sought summary judgment on two alternative grounds: (1) that the defendants' 1971 federal registration of FIRST BANK SYSTEM prevented First Savings from acquiring superior rights in FIRSTBANK, and (2) that the defendants used the marks of FIRST BANK and FIRST BANK SYSTEM prior to First Savings acquiring any rights in FIRST-BANK. The district court granted summary judgment for the defendants on the first ground without considering the second ground. First Savings Bank, F.S.B. v. First Bank System, Inc., 902 F.Supp. 1366 (D.Kan.1995). On appeal, the Tenth Circuit reversed the summary judgment order holding instead that the defendants' 1971 registration is not confusingly similar to the plaintiff's service mark and that the defendants, as a matter of law, cannot prevail on their constructive notice defense based upon the 1971 registration. First Savings Bank, F.S.B. v. First Bank System, Inc., 101 F.3d 645, 656-57 (10th Cir. 1996). The Tenth Circuit did not consider the defendants' alternative argument for summary judgment, because the record was "not well developed on this issue" and because the district court "never reached" it. Id. at 657. The appellate court expressly recognized that this alternative argument remained a possible ground for summary judgment on remand. Id.

First Savings requested an injunction during the pendency of the appeal, and the district court denied this request. First Savings Bank, F.S.B. v. First Bank System, Inc., 163 F.R.D. 612 (D.Kan.1995). On remand from appeal, the plaintiff filed a motion for leave to file a supplemental complaint that added a claim for damages resulting from the defendants' actions occurring after the filing of the original complaint. The district court sustained the magistrate judge's ruling that granted the plaintiff leave to add this claim. First Savings Bank, F.S.B. v. U.S. Bancorp., 184 F.R.D. 363 (D.Kan.1998). The plaintiff's claim for injunctive relief is moot, as the defendants changed the name of their Kansas branch banks to U.S. Bank in early 1998. The plaintiff's only claim for relief is damages from the filing of this action until the harm from defendants' use of the mark, "First Bank Kansas," has ended.

The defendants now seek summary judgment (Dk.295) on three alternative grounds: (1) applying the Tenth Circuit's likelihood of confusion analysis used in First Savings Bank, F.S.B. v. First Bank System, Inc., 101 F.3d 645, 656-57 (10th Cir.1996), the defendants contend there is no likelihood of confusion, as a matter of law, between the plaintiff's service mark consisting of FIRSTBANK with the "walking one logo" and the defendants' service mark of "First Bank Kansas" with the octagon logo; (2) asserting the same ground which was not addressed in its prior dispositive motion, the defendants argue they used the marks of "First Bank" and "First Bank System" prior to First Savings acquiring any rights in FIRST-BANK; and (3) narrowing its prior argument, the defendants alternatively contend their federal trademark registrations preclude the plaintiff's claims for all areas outside Riley County.

SUMMARY JUDGMENT STANDARDS

A court grants a motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure if a genuine issue of material fact does not exist and if the movant is entitled to judgment as a matter of law. The court is to determine "whether there is the need for a trial — whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "Only disputes over facts that might affect the outcome of the suit under the governing law will ... preclude summary judgment." Id. There are no genuine issues for trial if the record taken as a whole would not persuade a rational trier of fact to find for the non-moving party. Matsushita Elec. Indust. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "[T]here are cases where the evidence is so weak that the case does not raise a genuine issue of fact." Burnette v. Dow Chemical Co., 849 F.2d 1269, 1273 (10th Cir.1988).

The initial burden is with the movant to "point to those portions of the record that demonstrate an absence of a genuine issue of material fact given the relevant substantive law." Thomas v. Wichita Coca-Cola Bottling Co., 968 F.2d 1022, 1024 (10th Cir.), cert. denied, 506 U.S. 1013, 113 S.Ct. 635, 121 L.Ed.2d 566 (1992). If this burden is met, the nonmovant must "come forward with specific facts showing that there is a genuine issue for trial as to elements essential to" the nonmovant's claim or position. Martin v. Nannie and Newborns, Inc., 3 F.3d 1410, 1414 (10th Cir.1993) (citations omitted). The nonmovant's burden is more than a simple showing of "some metaphysical doubt as to the material facts," Matsushita, 475 U.S. at 586, 106 S.Ct. 1348; it requires "`present[ing] sufficient evidence in specific, factual form for a jury to return a verdict in that party's favor.'" Thomas v. International Business Machines, 48 F.3d 478, 484 (10th Cir.1995) (quoting Bacchus Industries, Inc. v. Arvin Indus., Inc., 939 F.2d 887, 891 (10th Cir.1991)). The court views the evidence of record and draws all reasonable inferences in the light most favorable to the nonmovant. Id. A party relying on only conclusory allegations cannot defeat a properly supported motion for summary judgment. White v. York Intern. Corp., 45 F.3d 357, 363 (10th Cir. 1995).

More than a "disfavored procedural shortcut," summary judgment is an important procedure "designed `to secure the just, speedy and inexpensive determination of every action.' Fed.R.Civ.P. 1." Celotex Corp. v. Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). At the same time, a summary judgment motion does not empower a court to act as the jury and determine witness credibility, weigh the evidence, or choose between competing inferences. Windon Third Oil and Gas v. Federal Deposit Ins., 805 F.2d 342, 346 (10th Cir.1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1605, 94 L.Ed.2d 791 (1987).

STATEMENT OF UNCONTROVERTED FACTS

For purposes of this motion for summary judgment, the court considers the following stated facts to be uncontroverted.

A. PLAINTIFF'S SERVICE MARK

1. The plaintiff First Savings Bank, F.S.B. ("First Savings") is a federally chartered savings bank based in Manhattan, Kansas, with branch offices in Junction City and Lawrence, Kansas. It was originally chartered in 1887 as First National Bank of Manhattan and was known in the region as "First National Bank" from 1887 to 1983.

2. In 1983, First Savings adopted a new marketing name and logo, FIRST-BANK next to a number one that appears in motion (the "walking one"). It publicized this change as "a new name, a new logo, [and] a new look." In 1986, First Savings converted to a federal savings bank, changed its charter name from First National Bank of Manhattan to its current name of First Savings Bank, F.S.B., but kept its marketing name of FIRSTBANK. In 1987, First Savings opened its branch...