First Sav. Bank, FSB v. First Bank System, Inc., 95-4020-SAC.

• Decision Date: 11 July 1995
• Docket Number: No. 95-4020-SAC.,95-4020-SAC.
• Citation: 902 F. Supp. 1366
• Parties: FIRST SAVINGS BANK, F.S.B., Plaintiff, v. FIRST BANK SYSTEM, INC. and First Bank, fsb, Defendants.
• Court: U.S. District Court — District of Kansas

902 F. Supp. 1366

FIRST SAVINGS BANK, F.S.B., Plaintiff, v. FIRST BANK SYSTEM, INC. and First Bank, fsb, Defendants.

No. 95-4020-SAC.

United States District Court, D. Kansas.

July 11, 1995.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Thomas H. Van Hoozer, William A. Rudy, Robert D. Hovey, John M. Collins, Hovey, Williams, Timmons & Collins, Kansas City, MO, for plaintiff.

Brett C. Coonrod, Edward W. Mullen, Thomas M. Deacy, Deacy & Deacy, Kansas City, MO, Peter Lancaster, Stephen R. Baird, Dorsey & Whitney, Minneapolis, MN, for defendants.

MEMORANDUM AND ORDER

CROW, District Judge.

This trademark infringement case comes before the court on the defendants' motion for summary judgment (Dk. 127), the plaintiff's motion for relief pursuant to Rule 56(f) of the Federal Rules of Civil Procedure (Dk. 141), the plaintiff's motion for summary judgment (Dk. 142), the plaintiff's motion to strike (Dk. 146), and the plaintiff's motion to reconsider (Dk. 196). The plaintiff brings this action under 15 U.S.C. § 1125(a) seeking to enjoin the defendants from using the names and marks of "First Bank(s)," "First Bank System," or "First Bank Kansas" for their banks servicing the Kansas counties of Douglas, Riley, Geary, Pottawatomie and Marshall. The plaintiff also asserts claims under Kansas law for service mark infringement, common law service mark infringement, and unfair competition.¹ After closely reviewing the written motions, memoranda and attached exhibits, the court finds that oral argument would not materially assist the court in understanding the facts and arguments that have been presented. The court denies the parties' requests for oral argument.

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, 2511, 91 L.Ed.2d 202 (1986). The substantive law governing the suit dictates which facts are material or not. Id. at 248, 106 S.Ct. at 2510. "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 nonmoving party. Matsushita Elec. Indust. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). "There 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 ___ U.S. ___, 113 S.Ct. 635, 121 L.Ed.2d 566 (1992). If this burden is met, the non-moving party must "come forward with specific facts showing that there is a genuine issue for trial as to elements essential to the non-moving party's case." Martin v. Nannie and Newborns, Inc., 3 F.3d 1410, 1414 (10th Cir.1993) (citations omitted). The court views the evidence and draws any possible inferences in the light most favorable to the non-moving party. MacDonald v. Eastern Wyoming Mental Health Center, 941 F.2d 1115, 1117 (10th Cir.1991).

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, 2555, 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).

Just because both parties move for summary judgment arguing the absence of genuine issues of material fact does not mean the court may ignore the above standards and simply enter judgment accordingly. Society of Financial Examiners v. National Ass'n of Certified Fraud Examiners, 41 F.3d 223, 226 (5th Cir.), cert. denied, ___ U.S. ___, 115 S.Ct. 2247, 132 L.Ed.2d 255 (1995). At the same time, the parties' mutual arguments may reveal that there is no genuine dispute over material facts. For purposes of this motion, the court considers the following facts to be uncontroverted.

Background Facts

1. The plaintiff First Savings Bank, F.S.B., is a federally chartered savings bank having its principal place of business in Manhattan, Kansas. In 1987, it opened branch offices in Junction City and Lawrence, Kansas.

2. The defendant First Bank System, Inc., is a corporation having its principal place of business in Minneapolis, Minnesota. The defendant Metropolitan Federal Bank, fsb, is now known as First Bank, fsb. The defendant First Bank System, Inc. merged with the parent company of Metropolitan Federal Bank, fsb, in late January of 1995. Presently, the parent defendant, First Bank System, Inc., through its commercial banks, savings banks, trust companies, and nonbank subsidiaries, operates primarily in eleven states, including Kansas.

3. In connection with the merger, Metropolitan Federal Bank, fsb, became a party to the Master Service Agreement with First Bank System, Inc., thereby acquiring "a nonexclusive and nontransferable license" to use the trade marks and service marks of First Bank System. On February 21, 1995, Metropolitan Federal Bank, fsb, changed its legal name to First Bank, fsb. First Bank, fsb currently operates branch offices in Lawrence and Manhattan, Kansas and many other cities in the states of Kansas, Nebraska, Iowa, North Dakota and Wyoming.

4. The defendants intend to use the name, "First Bank Kansas," to market and promote its branches in Kansas. The Kansas branches, however, will use some standard documents, brochures, statements, and forms that bear only the name of "First Bank."

Plaintiff's Use and Adoption of "First-Bank"

5. The plaintiff in 1887 was chartered as "First National Bank of Manhattan." Some of its advertising and promotional material dating before 1983 shows that the First National Bank occasionally used marketing material and letterhead that emphasized the "First" in its name. On such occasions, however, the plaintiff continued to refer to itself by the full name of "First National Bank."²

6. In September of 1983, the plaintiff formally adopted and began use of the mark "FirstBank." The plaintiff announced and promoted its new logo, mark and name. In September of 1983, the plaintiff ran a news-paper advertisement announcing:

We have a new name, a new logo, a new look. But, we're still the same people you've always known — local bankers who care about Manhattan.

You've known us for years as First National Bank. Now we're FirstBank, a name that tells you we're the number one bank in town.

(Plaintiff's Complaint, Dk. 1, Ex. C).

7. In 1986, the plaintiff converted to a federal savings bank and changed its banking charter name to "First Savings Bank, F.S.B." The plaintiff continued using the mark and name of "FirstBank."

8. The plaintiff opened a FirstBank branch in Junction City, Kansas, in March of 1987 and a FirstBank branch in Lawrence, Kansas, in September of 1987. The plaintiff claims rights in a trade territory consisting of the three counties where its bank and branches are located: Douglas, Geary, and Riley; and two contiguous counties: Marshall and Pottawatomie.

9. The plaintiff hired Peter Scofield, a trademark lawyer in Overland Park, Kansas, to conduct a trademark search for "FirstBank." In late 1986, Scofield sent the plaintiff a written report identifying thirty-two federal registrations along with copies. Among the thirty two was the registered service mark "First Bank System," Reg. No. 915,249.³

10. In 1986, while preparing to open a branch bank in Lawrence, Kansas, the plaintiff learned that another Lawrence bank, the University State Bank, had registered a service mark, "FIRSTBANK", with the State of Kansas in August of 1985. A dispute arose between the two banks over the simultaneous use of the same service marks in Lawrence. This dispute was resolved on September 30, 1988, when the plaintiff acquired by assignment all rights and good will to the state registered service mark, "FIRSTBANK."

11. The plaintiff has never sought federal registration for its mark, "FirstBank."

Defendant's Federal Trademark Registrations

12. On October 1, 1968, First Bank System filed its application for a registered service mark, "First Bank System and design," with the United States Patent and Trademark Office ("PTO"). The application showed the words, "First Bank System," against a black television tube background. The PTO examiner denied the application initially on two grounds. First, the applicant's mark so resembled another registered mark "as to be likely to cause confusion, or to cause mistake or to deceive." The PTO's other reason was:

Second, "the term `First Bank System,' which essentially comprises the mark, since the black background is nothing but a carrier therefor, is merely descriptive or misdescriptive of the fact that the collective involved herein is the first of its nature. See Section 2(e)(1) of the Act. As such, the said term is incapable of functioning as a mark within the meaning of Section 45 of the Act."

(Dk. 128, Peter Lancaster Aff., Ex. I at...