International Travelers Cheque Co. v. Bankamerica Corp.

Citation660 F.2d 215
Decision Date26 August 1981
Docket NumberNo. 80-2749,80-2749
PartiesINTERNATIONAL TRAVELERS CHEQUE COMPANY, Plaintiff-Appellant, v. BANKAMERICA CORPORATION and Bank of America National Trust and Savings Association, Defendants-Appellees.
CourtUnited States Courts of Appeals. United States Court of Appeals (7th Circuit)

James T. Fitzgibbon, Fitzgibbon, Roehrig, Greenawalt & Gilhooly, Chicago, Ill., for plaintiff-appellant.

Michael A. Reiter, Katten, Muchin, Zavis, Pearl, Chicago, Ill., for defendants-appellees.

Before SWYGERT, * Senior Circuit Judge, and SPRECHER, Circuit Judge, and THOMAS, ** Senior District Judge.

SPRECHER, Circuit Judge.

This case stems from the opposition by a national bank, which sells travelers' checks, to an attempt by a competing corporation, which also sells travelers' checks, to register before the Patent and Trademark Office the term "International Travelers Cheque." After the bank successfully opposed the registration in proceedings before the Patent and Trademark Office, the corporation appealed by suing the bank and its holding company in the U. S. District Court for the Northern District of Illinois. But the suit was not in the district where the bank was established, as required by the National Bank Act. Rejecting the plaintiff's arguments that the bank waived the venue provisions of the Act, we conclude that the plaintiff's suit must be dismissed for improper venue. Second, we reject the plaintiff's argument that the venue provision of the National Bank Act does not cover the business of selling travelers' checks.

After the suit against the bank was dismissed, the suit against the holding company was dismissed for failure to join the bank, an indispensable party. Since the plaintiff conceded in district court that the bank was an indispensable party, we decline to now consider the plaintiff's argument that the bank is not an indispensable party. Therefore, we affirm the dismissal of the suit against the holding company.

I

The plaintiff, International Travelers Cheque Company ("International"), is a one-person corporation located in Chicago. In 1976, International filed an application with the United States Patent and Trademark Office to register the term, "International Travelers Cheque." The defendants, Bank of America National Trust and Savings Association ("Bank of America") and BankAmerica Corporation ("BAC"), filed a notice of opposition to International's application before the Patent and Trademark Office on the ground that the term was inherently nonregistrable. The defendants also alleged that each of them would be harmed by International's registration of the term. Bank of America, a California corporation, is a national bank headquartered in San Francisco. BAC, a Delaware corporation, is a one-bank holding company, its principal subsidiary being Bank of America.

The Trademark Trial and Appeal Board of the Patent and Trademark Office refused registration of the term "International Travelers Cheque" on the ground that the term was merely descriptive of International's financial services. Upon a request for reconsideration, the Trademark Trial and Appeal Board affirmed its earlier decision. Rather than taking an appeal to the United States Court of Customs and Patent Appeals, International elected to file a civil action against the defendants in district court, choosing the Northern District of Illinois.

After International had obtained service upon Bank of America, Bank of America filed a motion to dismiss the complaint for improper venue. The district court granted this motion, holding that under the venue provision of the National Bank Act, 12 U.S.C. § 94 ("Act"), a national bank is amenable to suit only in the district in which it is established, here, the Northern District of California. On reconsideration, the district court refused to vacate its order dismissing the Bank of America.

International then obtained service upon BAC. BAC filed a motion to dismiss on four alternative grounds, including the failure to join Bank of America as an indispensable party. The district court granted the motion to dismiss on the latter ground, relying on International's concession in its answer to that motion that Bank of America was an indispensable party to the action against BAC.

From these orders dismissing first Bank of America and then BAC, International now appeals to this Court. First, International argues that Bank of America waived its rights under the venue provision of the Act. Second, International argues that the venue provision of the Act does not apply to litigation involving the business of selling travelers' checks. Third, International argues that Bank of America is not an indispensable party.

II

We consider first International's argument that Bank of America waived its venue rights under the Act. 1 The Act provides that a national bank can be sued only where it is established or located. 2 It is true that the venue provision of the Act has been severely criticized. See, e. g., Aetna Cas. & Surety Co. v. Graves, 381 F.Supp. 1159, 1161 (W.D.La.1974) ("Section 94 is a horse-and-buggy statute in a supersonic age."); 15 C. Wright, A. Miller and E. Cooper, Federal Practice and Procedure § 3813, 82-83 (§ 94 is "archaic" and has created a "wholly unsatisfactory state of affairs"). Nevertheless, the Supreme Court has clearly stated that any harsh results created from the application of § 94 are not for the courts, but "for Congress to consider." Mercantile Nat'l Bank v. Langdeau, 371 U.S. 555, 563, 83 S.Ct. 520, 525, 9 L.Ed.2d 523 (1963).

Since the Bank of America is established in the Northern District of California, 3 it cannot be sued in the Northern District of Illinois unless it has waived or otherwise lost its rights under § 94. See Radzanower v. Touche Ross & Co., 426 U.S. 148, 158, 96 S.Ct. 1989, 1995, 48 L.Ed.2d 540 (1976) ("specific venue provision of the National Bank Act must prevail over the broader, more generally applicable venue provision of the Securities Exchange Act") 4 and Langdeau, 371 U.S. at 559-60, 83 S.Ct. at 522-23.

The basic theory of International's appeal is that, because Bank of America opposed International's attempted registration of the term before the Trademark Trial and Appeal Board, Bank of America should be found to have waived or otherwise lost its rights under the Act. International does not clearly delineate its waiver arguments, but it seems to make two general arguments. First, it seems to argue that Bank of America should be found to have lost the protections of the Act because, although Bank of America became a defendant in district court, its "real" role was more like that of a plaintiff. Second, International seems to argue that Bank of America's opposition before the Trademark Trial and Appeal Board constituted a waiver of the venue provisions of the Act.

A

First, International argues that Bank of America knew, when it filed its opposition, that the trademark statutes call for the prevailing party in an opposition proceeding to become a defendant in an appeal to the district court and that, thus, Bank of America forced International to become a plaintiff in district court. International argues that Bank of America was "really" a constructive plaintiff, however, since its presence in district court results from the Bank's actions determining the status of the parties. We reject this argument. Although it is true that, in the district court action, International became the plaintiff and Bank of America became a defendant, that fact does not warrant causing Bank of America to lose venue rights under § 94 for two reasons.

First, a person dissatisfied with a decision of the Trademark Trial and Appeal Board may pursue two alternative routes of appeal. On the one hand, the person may appeal to the Court of Customs and Patent Appeals pursuant to 15 U.S.C. § 1071(a). 5 The review by the Court of Customs and Patent Appeals is not a review de novo but is limited to a review of the evidence produced before the Patent and Trademark Office. 6 On the other hand, a dissatisfied applicant may receive a trial de novo by filing a civil action pursuant to 15 U.S.C. § 1071(b)(1). 7 Contrary to International's implication, it was not forced into district court in order to appeal. International had the choice of pursuing an appeal on the previous record in the Court of Customs and Patent Appeals or pursuing a trial de novo in district court; it chose trial de novo in district court.

But International's theory also fails for an even more important reason. Even if we assume, arguendo, that there would be some unfairness in finding that International "chose" to sue in district court, the question before us remains in which district court venue lies. As we have discussed, the Act settles this question by providing that a national bank can only be sued in the district in which it is established.

International argues, however, that when a national bank, although nominally a defendant, is in reality a plaintiff, the Act's venue provision relating to a bank as a defendant should not apply. International relies on E. & J. Gallo Winery v. Candelmo, 192 USPQ 210 (D.D.C.1976), for the proposition that when district court proceedings are the direct result of an opposer's earlier opposition to a trademark registration, the "plaintiff" is in reality a "defendant". It argues that, thus, Bank of America is a constructive plaintiff and, as such, has waived the provisions of the Act. Because the Candelmo decision, at first glance, seems to offer some support to International, it is important to analyze that decision with precision.

In Candelmo, Candelmo, a resident of Connecticut, successfully opposed Gallo, a California winery, seeking a trademark registration before the Trademark Trial and Appeal Board. Gallo then appealed to the Court of Customs and Patent Appeals. Candelmo then elected to proceed via civil action in district court. 8...

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