Peoples Federal Savings Bank v. People's United Bank
672 F.3d 1
| 1st Cir. | 2012Background
- Peoples Federal Savings Bank operates exclusively in Eastern Massachusetts and has used the PEOPLES marks since 1937, owning multiple Massachusetts registrations filed on the same day suit was filed.
- Peoples United Bank acquired Butler Bank and Marlborough Cooperative in April 2010 and began rebranding Butler branches to its own name with new materials and signage.
- Peoples Federal sued in June 2010 for trademark infringement, dilution, and unfair competition, seeking a preliminary injunction to halt further rebranding.
- The district court denied the injunction after weighing eight Pignons factors, finding the PEOPLES mark descriptive, with secondary meaning limited to specific neighborhoods, and no likelihood of confusion.
- This appeal challenges the district court’s application of the likelihood-of-confusion analysis and the weight given to the Pignons factors; the First Circuit reviews for abuse of discretion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion standard applied | Peoples Federal argues the district court used an improper heightened standard. | People's United contends the eight-factor Pignons analysis was properly applied without requiring certainty of confusion. | Standard proper; no error in applying likelihood-of-confusion factors |
| Descriptiveness and strength of PEOPLES mark | Mark is descriptive with secondary meaning and registrations support protection. | Mark is descriptive and common in banking; strength is weak due to widespread use. | District court did not err in characterizing PEOPLES as descriptive and not inherently strong |
| Actual confusion and defendant's intent | There was evidence of actual confusion and intentional encroachment. | Limited actual confusion; no clear showing of bad faith in adopting the mark. | Evidence insufficient to establish likelihood of confusion; no clear error in weighing factors |
| Relation of advertising channels and consumer care | Similar services and customers could imply confusion across channels. | Different neighborhoods, careful banking-relationship buying behavior limit confusion. | Factors weighed against likelihood of confusion; no reversible error |
Key Cases Cited
- Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981) (eight-factor likelihood-of-confusion framework)
- Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006) (describes framework and weight of factors; no single factor dispositive)
- Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008) (strength of marks and descriptive terms; total impression controls)
- Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8 (1st Cir. 2004) (courts may tailor factors to case; other helpful considerations)
- Int'l Ass'n of Machinists & Aerospace Workers, AFL–CIO v. Winship Green Nursing Ctr., 103 F.3d 196 (1st Cir. 1996) (likelihood-of-confusion defined; consumer care considerations)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (S. Ct. 2006) (establishes traditional equitable framework for injunctions)
- Boston Beer Co. Ltd. Partnership v. Slesar Brothers Brewing Co., 9 F.3d 175 (1st Cir. 1993) (criteria for secondary meaning and strength considerations)