First Nat. Bank Sioux Falls v. First Nat. Bank SD
679 F.3d 763
8th Cir.2012Background
- FNB Sioux Falls sues FNB South Dakota and affiliates for trademark infringement and unfair competition; district court issues injunction restricting use of marks.
- Historical litigation: 1997 injunction prohibited use of confusingly similar marks within 10 miles of Sioux Falls; later narrowed/modified; 1998 appeal affirmed limits on legal-name use.
- In 2005 FNB South Dakota opens a branch 2 blocks from FNB Sioux Falls and markets with broad 'First National' branding; creates potential confusion.
- 2006 suit alleges Lanham Act and related claims; district court extends injunction to require full legal name within an 18-mile radius and adds a disclaimer; later bans use of full legal name in that area; affiliates’ names not enjoined.
- FNB South Dakota appeals on res judicata and other issues; FNB Sioux Falls cross-appeals denial of attorney’s fees and the district court’s statements about affiliates’ names.
- Issues on appeal include res judicata, admission of a confusion-log, sufficiency of likelihood-of-confusion evidence, attorney’s-fees ruling, and whether affiliate names were advisory.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does res judicata bar this suit? | Sioux Falls claims same nucleus of facts; identical marks were at issue. | Changed facts and market conditions since the prior suit break the causal link. | Not barred; changed facts mean different nucleus of operative facts. |
| Admissibility of the confusion log as evidence | Log shows state of mind and supports likelihood of confusion. | Log is double hearsay and not admissible. | Log itself inadmissible as hearsay, but error deemed harmless given accompanying testimony. |
| Sufficiency of the evidence of likelihood of confusion | Multiple lines of evidence (testimony, survey) support confusion between full legal name and marks. | Evidence insufficient to prove likelihood of confusion. | Evidence supports likelihood of confusion; district court’s finding not clearly erroneous. |
| Attorney's fees under the Lanham Act | Prevailing party should recover fees in exceptional case portions. | Case not largely exceptional; fees not warranted. | Affirmed district court’s denial of attorney’s fees; predominance of non-exceptional issues weighs against awarding fees. |
| Advisory opinion on affiliate names | Language indicated potential infringement by affiliates; should be treated as advisory. | Language reflected balance-of-harms and not infringement findings. | Language read as non-advisory balance-of-harms; not struck. |
Key Cases Cited
- Lane v. Peterson, 899 F.2d 737 (8th Cir.1990) (res judicata elements and same-cause analysis)
- Georgia-Pacific Consumer Prods. v. Myers Supply, Inc., 621 F.3d 771 (8th Cir.2010) (likelihood-of-confusion framework and evidentiary routes)
- Bebe Stores, Inc. v. May Dep't Stores Int'l, Inc., 313 F.3d 1056 (8th Cir.2002) (live testimony can establish likelihood of confusion even without surveys)
- Humble Oil & Refining Co. v. Am. Oil Co., 405 F.2d 803 (8th Cir.1969) (even small percentages of confusion are not insignificant)
- Vitek Sys., Inc. v. Abbott Labs., 675 F.2d 190 (8th Cir.1982) (credibility of employee testimony and addressing credibility findings)
- Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958 (8th Cir.2005) (balancing harms in injunctions; irreparable harm considerations)