Wyoming Nat. Bank of Casper v. Security Bank & Trust Co.

• Decision Date: 21 December 1977
• Docket Number: No. 4718,4718
• Citation: 572 P.2d 1120
• Parties: The WYOMING NATIONAL BANK OF CASPER, a National Banking Association, and First National Bank of Casper, a National Banking Association, Appellants (Plaintiffs below), v. SECURITY BANK & TRUST CO., a Wyoming Chartered Banking Corporation, Appellee (Defendant below).
• Court: Wyoming Supreme Court

Page 1120

572 P.2d 1120

199 U.S.P.Q. 375

The WYOMING NATIONAL BANK OF CASPER, a National Banking Association, and First National Bank of Casper, a National Banking Association, Appellants (Plaintiffs below), v. SECURITY BANK & TRUST CO., a Wyoming Chartered Banking Corporation, Appellee (Defendant below).

No. 4718.

Supreme Court of Wyoming.

Dec. 21, 1977.

Houston G. Williams, Werhli & Williams, Casper, signed the brief and appeared in oral argument on behalf of appellant, First Nat. Bank of Casper.

William H. Brown, Brown, Drew, Apostolos, Barton & Massey, Casper, signed the brief and appeared in oral argument on behalf of appellant, The Wyoming Nat. Bank of Casper.

Stanley K. Hathaway, Hathaway, Speight & Kunz, Cheyenne, signed the brief and appeared in oral argument on behalf of appellee.

Before GUTHRIE, C. J., McCLINTOCK, RAPER and THOMAS, JJ., and ARMSTRONG, Retired District Judge.

RAPER, Justice.

This case centers around a name change initiated by defendant-appellee, Security Bank & Trust Co. of Casper, Wyoming. Security Bank & Trust Co. is one of 17 members of Wyoming Bancorporation and, as a member of that organization, it has planned to change its name to "First Wyoming Bank-Casper", as in the case of all other member banks throughout the State of Wyoming for conformity to a uniform standard, "First Wyoming Bank-(name of city in which located)". After defendant notified plaintiffs-appellants of the name change, the First National Bank of Casper, a plaintiff-appellant, and the Wyoming National Bank of Casper, a plaintiff-appellant, obtained a temporary restraining order and sought to permanently enjoin defendant, Security Bank & Trust, from using its new name. The basis of the complaint by First National Bank of Casper, hereinafter to be referred to as "First National", and Wyoming National Bank of Casper, hereinafter to be referred to as "Wyoming National", was that they had established trade names in "First" and "Wyoming" and the use of the name "First Wyoming Bank-Casper" will result in confusion and deception. The district court denied permanent injunctive relief. We will affirm.

Presented on appeal are a number of questions concerning the factors required to be established before the courts will protect a trade name. Unless a trade name is confusing and deceptive on its face, those seeking such protection must take the burden of proving that they have given to their trade names a secondary meaning through years of usage and if in this case defendant was to be allowed to use its new name, the public would be confused by its similarity to the trade names of plaintiffs. This confusion, in turn, must be such as to warrant issuance of an injunction. That is, potential customers must be confused or deceived into patronizing one bank in the mistaken belief that they are dealing with another bank. ¹ The advantages of advertising, good reputation, and extensive use would be lost to a competitor if a name is confusingly similar. It is conceded that the banks involved in this lawsuit are competitors, each engaged in the identical enterprise of banking.

Extensive evidence was presented to the trial court by both appellants. This evidence revealed that First National has been in business in Casper since 1889, and it was the first nationally-chartered bank in Casper. That bank's present name was adopted in 1957. Wyoming National was established in Casper in 1914 and has used its present name since that time. Both plaintiffs have offered banking services from their respective bank premises in Casper. Their business has been primarily with the public of Natrona County, but also extends outside of that county. Plaintiffs' business premises are located in downtown Casper and are in close proximity to each other. Defendant's bank is not a new bank, having been established in 1960, and is state-chartered rather than nationally-chartered as are both plaintiff's banks. Defendant's location is only two blocks away from Wyoming National and First National.

Both plaintiffs have invested large sums of money in advertising, and much of the advertising emphasizes "First" and "Wyoming" in plaintiffs' names, respectively. However, it appears that the most used shortened names were "First National" and "Wyoming National". Testimony was introduced as to the programs of these banks to become known to the general public by names relating to their history of service in the area. Such is said to be a common tactic used to deal with increasing competition in the banking business. According to the evidence, advertising tactics appear to be of importance to businesses in the Casper area, due to its transient population and mineral exploration. Other banks in the city, according to plaintiffs' evidence, also have become known by abbreviated names, such as "Hilltop Bank", "Western Bank" and sometimes just the first of those names.

In addition to the testimony introduced, plaintiffs entered into evidence a survey of Casper citizens. This survey was intended to demonstrate the confusion which would result from the changing of defendant's name to First Wyoming Bank-Casper.

Defendant thoroughly cross-examined all of plaintiffs' witnesses and demonstrated how the new name, with its attendant logo and advertising campaign, would clearly distinguish the defendant's bank from plaintiffs' banks. Defendant's evidence tended to show that a confusion which might, at first, result from the change, would be mitigated by time and education of the public. Additionally, it is defendant's position that the public has some responsibility when it comes to dealing with financial institutions; some confusion is inevitable in that many financial institutions have similar names, ² even the banks of the two plaintiffs.

Preliminarily, there are some settled concepts with respect to trade names containing geographic and generic words. Since such words are claimed by plaintiffs to the exclusion of their use by defendant in their competitive banking businesses, we should start our discussion of the law with those hypotheses.

Subject to the rule of secondary meaning, the general rule is that a word or words in common use, when used in a primary sense, as designating a locality or section of the country, cannot be appropriated by anyone and made the subject of exclusive property. Columbia Mill Company v. Alcorn, 1893,150 U.S. 460, 14 S.Ct. 151, 37 L.Ed. 1144. The court there pointed to the use of the word "Minnesota" as not a subject of exclusive use, inferring that the name of a state is not, by itself, subject to appropriation to the exclusion of others. Cases reflect a consistent holding to the same effect. Colorado Association of Accountants v. Colorado Society of Certified Public Accountants, 1963, 152 Colo. 563, 384 P.2d 94 ("Colorado"); Dwight Lydell Chapter of Izaac Walton League of America v. Loeks, 1951, 329 Mich. 342, 45 N.W.2d 311 ("West Michigan"); National Bank in North Kansas City v. Bank of North Kansas City, 1943, 238 Mo.App. 19, 172 S.W.2d 967 ("North Kansas City"); Yonkers Sav. Bank v. Yonkers Savings & Loan Ass'n, 1940, 174 Misc. 973, 22 N.Y.S.2d 368, aff'd, 262 A.D. 755, 28 N.Y.S.2d 715 ("Yonkers"); Bank of Arizona v. Arizona Central Bank, 1932, 40 Ariz. 320, 11 P.2d 953 ("Arizona"); Detroit Sav. Bank v. Highland Park State Bank of Detroit, 1918,201 Mich. 601, 167 N.W. 895 ("Detroit"); Esselstyn v. Holmes, 1911, 42 Mont. 507, 114 P. 118 ("Owl Creek"); California Apparel Creators v. Wieder of California, U.S.D.C., S.D.N.Y. 1946, 68 F.Supp. 499, aff'd in part and appeal dismissed, 162 F.2d 893, 174 A.L.R. 481, cert. den., 332 U.S. 816, 68 S.Ct. 156, 92 L.Ed. 393 ("California"; two competing companies went under the names of "California Sportswear Company" and "California Sportswear, Inc."); Gerson v. Iowa Pearl Button Co., U.S.D.C., S.D.N.Y. 1918, 254 F. 363 ("Iowa").

Subject to the rule of secondary meaning, the general rule is also that a generic word in common use, when used in its primary sense, is regarded as common property, provided it is not used in a trade name in combination with other words, so that it is probable they would mislead persons possessing ordinary powers of perception. Farm Service, Incorporated v. United States Steel Corporation, 1966, 90 Idaho 570, 414 P.2d 898; Fidelity Appraisal Co. v. Federal Appraisal Co., 1933, 217 Cal. 307, 18 P.2d 950. In a case dealing particularly with the word "First", the court observed that the word, as part of a trade name, does not in itself warrant a conclusion that its use by a competitor is for the purpose of deception, without specific facts as to how it will deceive the public in the exercise of ordinary care, into believing that the word "First" might belong, through usage, to another and that the services of the defendant are really those of the plaintiff. First Federal Savings & Loan Ass'n v. First Finance & Thrift Corp., 1951, 207 Ga. 695, 64 S.E.2d 58. See also United Life Ins. Co. v. United Ins. Co., Fla. 1954, 70 So.2d 310 ("United"); Federal Securities Co. v. Federal Securities Corporation, 1929, 129 Or. 375, 276 P. 1100, 66 A.L.R. 934 ("Federal"); International Trust Co. v. International Loan & Trust Co., 1891, 153 Mass. 271, 26 N.E. 693 ("International"); Fidelity Bond & Mortgage Co. v. Fidelity Bond & Mortgage Co. of Texas, 5 Cir. 1930, 37 F.2d 99 ("Fidelity").

Even though geographic and generic words are generally held to be common property not susceptible of exclusive appropriation, there has grown up a rule that if a business has developed to a point, such words of its name may acquire a secondary meaning which the law protects to the extent necessary to prevent confusion, mistake or deception of the public and appropriate to the circumstances. What is commonly called a secondary meaning to a geographic or generic word occurs when by the process of association, the word becomes distinctive and distinguishes not only the producer of a particular...