Flushing Bank v. Green Dot Corp.
| Decision Date | 05 October 2015 |
| Docket Number | No. 13 Civ. 9120(KBF).,13 Civ. 9120(KBF). |
| Citation | 138 F.Supp.3d 561 |
| Parties | FLUSHING BANK, Plaintiff, v. GREEN DOT CORPORATION & Green Dot Bank, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Adam Matthew Marshall, Ariel Elaine Ronneburger, James Gerard Ryan, Sean R. Gajewski, Cullen and Dykman, LLP, Jennifer A. McLaughlin, Cullen and Dykman Bleakley Platt LLP, Garden City, NY, for Plaintiff.
Adam David Siegartel, Proskauer Rose LLP, New York, NY, for Defendants.
KATHERINE B. FORREST
, District Judge:
This reverse confusion trademark case concerns plaintiff Flushing Bank, owner of the senior word mark iGoBanking and logo
?trademark, seeking to enjoin Green Corporation's and Green Dot Bank's (together, "Green Dot") use of its junior word mark GOBANK and logo
?
Flushing Bank asserts that although it is the senior user, its iGoBanking mark has less brand recognition than Green Dot's GOBANK mark, and that Green Dot has saturated the market with its advertising. This saturation may, according to Flushing Bank, lead consumers to view it as an infringer; this is of particular concern in the banking market, in which trust is important.
On December 26, 2013, plaintiff Flushing Bank filed its initial complaint against Green Dot; it amended that complaint on February 28, 2014. It asserted five separate causes of action, of which only the first three remain: trademark infringement arising under 15 U.S.C. § 1114
(First Cause of Action), false designation of origin and unfair competition arising under 15 U.S.C. § 1125(a) (Second Cause of Action), declaratory judgment for cancellation of trademark and for a determination that certain applications for registration can be denied for likelihood of confusion, arising under 15 U.S.C. § 1052(d) (Third Cause of Action), trademark infringement and unfair competition arising under the common law of New York (Fourth Cause of Action), and trademark dilution arising under New York General Business Law § 360–1 (Fifth Cause of Action). (ECF Nos. 1, 28.)
On January 31, 2014, Green Dot answered and filed a counterclaim seeking cancellation of the iGObanking, iGObanking.com, and design marks. (ECF No. 14.) Green Dot alleged that Flushing Bank's registration of these marks was the result of fraud in the procurement and that cancellation was thus warranted under 15 U.S.C. §§ 1064(3)
The Court has subject matter jurisdiction over this matter pursuant to 15 U.S.C. § 1121
and 28 U.S.C. §§ 1331, 1338.
On June 19, 2014, the Court dismissed Flushing Bank's state law claims. Flushing Bank v. Green Dot Corp., No. 13 Civ. 9120(KBF), 2014 U.S. Dist. LEXIS 87393, at *11–17 (S.D.N.Y. June 19, 2014). (ECF No. 40.)
On October 1, 2014, the parties consented to proceed with a summary bench trial on the papers, in accordance with Rule 52 of the Federal Rules of Civil Procedure
. (ECF No. 57.) That same day, plaintiff also filed a motion in limine to exclude the testimony and report of Hal Poret. (ECF No. 53.) On October 21, 2014, defendants filed a motion to strike the declaration of Stefanie A. Silvia. (ECF No. 89.)
According to the trial procedures to which the parties consented, they were each able to submit trial declarations and deposition testimony from witnesses as direct testimony along with documentary exhibits. Each side also had the opportunity to respond to the submissions of the other side with additional declarations and deposition designations. As set forth below, both parties submitted a significant amount of material in this regard.1 The parties also stipulated to a number of facts. (ECF No. 117, Exh. M.)
Flushing Bank submitted declarations and deposition excerpts from the following witnesses from Flushing Bank: John Buran, President and Chief Executive Office; Caterina dePasquale, Vice President and Director of Strategic Development and Delivery; William Franz, Vice President and former Director of Marketing; Maria Meihoefer, Assistant Vice President of the Internet Banking Department; and Patricia Tiffany, Senior Vice President and Director of Marketing. (ECF No. 117, Exhs. C, F, K; ECF No. 82, Exhs. E, J, N; ECF No. 103, Exh. C; ECF Nos. 59, 86, 126.)2
Flushing Bank also designated portions of the depositions of several Green Dot employees including Sharon Pope, Head of Marketing and Steven Streit, Green Dot's CEO and Founder. (ECF No. 117, Exhs. H, J; ECF No. 82, Exh. L; ECF No. 103, Exh. D.)
Flushing Bank also presented evidence from third party witnesses, including Dr. Marinilka Kimbro and Connie Meeker, both third party witnesses on consumer confusion; Amy Doll, Assistant Vice President and Marketing Director of Valley Bank; Brandie Flann, Chief Operating Officer of Pine River Valley Bank; Steven Ollenburg, President of Modern Woodmen of America Bank; Debra Weyker, Vice President of Marketing at Bank First National; and Arthur Hodges, Senior Vice President Corporate Communications of CoBank (ECF No. 82, Exh. F).
Flushing Bank also submitted a trial declaration from Sean Cashman of Prime Visibility, a digital marketing agency that worked with Flushing Bank on the digital marketing strategy for its iGObanking brand (ECF No. 61), and a declaration from Stefanie Silvia, custodian of records from Bottomline Technologies, Inc., a company which maintains records for Flushing Bank regarding applications submitted for its iGObanking service. (ECF No. 60; see also ECF No 91.)3
In addition to the above testimony, Flushing Bank also submitted over 180 trial exhibits. (ECF Nos. 63, 88, 127.)
To rebut Hal Poret, Green Dot's proposed survey expert, Flushing Bank submitted deposition testimony of its cross examination of Poret (ECF No. 117, Exh. I; ECF No. 82, Exh. M), as well as two declarations from Mark Keegan from Keegan & Donato Consulting, LLC, a market research firm that specializes in consumer survey research (ECF Nos. 55, 87).
The Court also received a significant volume of material from defendant Green Dot. Green Dot submitted declarations and deposition excerpts from a number of witnesses including from Steven Streit, its Founder and CEO (ECF No. 68; ECF 96, Exh. 12) and Sharon Pope, Chief Marketing Officer and former Vice President working with Product Marketing and Interactive Teams (ECF Nos. 69, 94, 102; ECF No. 96, Exh. 11).
Green Dot also submitted deposition excerpts from the following Flushing Bank employees: Patricia Tiffany, (ECF No. 73, Exh. 1; ECF No. 96, Exh. 1) John Buran, (ECF No. 73, Exh. 2) Maria Meihoefer, (ECF No. 73, Exh. 3; ECF No. 96, Exh. 2) William Franz, (ECF No. 73, Exh. 4, Ex. 96, Exh. 3) and Caterina de Pasquale (ECF No. 73, Exh. 5). Green Dot submitted excerpts of the depositions of some of the same banking third parties that Flushing Bank had, including Brandie Flann, (ECF No. 73, Exh. 7; ECF No. 96, Exh. 4) Debra Weyker, (ECF No. 73, Exh. 8; ECF No. 96, Exh. 5) Steve Ollenburg, (ECF No. 73, Exh. 9; ECF No. 96, Exh. 6.) Amy Doll, (ECF No. 73, Exh. 10; ECF No. 96, Exh. 7) and Arthur Hodges (ECF No. 73, Exh. 6). In addition, Green Dot submitted deposition testimony from two same two consumer witnesses that Flushing Bank asserts were confused, Connie Meeker (ECF No. 73, Exh. 11; ECF No. 96, Exh. 8) and Marinilka Kimbro (ECF No. 73, Exh. 12; ECF No. 96, Exh. 9).
In support of its counterclaims, Green Dot submitted declarations from Tony Yarborough, Vice President of Robert Jackson and Associates, a private investigation firm, (ECF No. 65) and Flushing Bank's former Director of Marketing, William Franz (ECF No. 105, Exh. 13; DX 100). It also submitted two declarations, a survey report dated July 25, 2014, and deposition testimony from its proposed survey expert, Hal Poret, of ORC International. (DX 121, ECF Nos. 66, 85; ECF No. 73, Exh. 13.)4 Green Dot also submitted it cross examination at deposition of Flushing Bank's proposed rebuttal survey expert, Mark Keegan. (ECF No. 96, Exh. 10.)
In addition to the declarations and deposition excerpts referred to above, Green Dot also submitted over 180 trial exhibits. (ECF Nos. 72, 95, 100.)
Based on the record presented by the parties, and in accordance with Rule 52
, the following constitutes this Court's factual findings and conclusions of law.5
Flushing Bank is a New York State chartered bank with its principal place of business in Lake Success, New York. (SF ¶ l.)6 Flushing Bank offers deposit, loan and cash management services at 17 banking locations throughout the New York City metropolitan area. (ECF No. 59 (Tiffany Decl.) ¶ 8.) It also operates an online banking division, iGObanking.com. (Id. ¶ 10; SF ¶ 3.) iGObanking provides online banking services to consumers nationwide. (SF ¶ 14; ECF No. 59 (Tiffany Decl.) ¶¶ 11, 12; PX 30.) The iGObanking.com service is online only. It does not have any brick and mortar locations. (ECF No. 59 (Tiffany Decl.) ¶¶ 30–33.) To open an iGObanking.com account, a prospective customer must fill out an application online or download a paper application and mail it in to Flushing Bank. (Id. ¶ 32.) The iGObanking service offers online checking, savings, and money market accounts, certificates of deposit accounts, debit cards, online bill paying, electronic funds transfer, check and direct deposit, ATM withdrawals, and IRAs. (Id. ¶¶ 37–38; SF ¶ 14.)
As of July 31, 2014, the iGObanking service had 17,127 accounts and customers residing in all 50 states. (SF ¶¶ 17, 18; ECF No. 59 (Tiffany Decl.) ¶¶ 39–40; PX 30.) Those accounts have an aggregate $298,699,955 on deposit. (PX 30, PX 139.)
Flushing Bank first began using the iGObanking, iGObanking.com, and the stylized iGObanking.com mark (collectively the "iGObanking Marks") in interstate commerce in connection with online banking services in November 2006. (ECF No. 59 (Tiffany Decl.) ¶ 13.) At that time, Flushing Bank began offering online banking products through its website, www.igobanking.com....
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