Wells Fargo & Company v. Abd Insurance & Financial Services, Inc.
2014 U.S. App. LEXIS 3969
| 9th Cir. | 2014Background
- Wells Fargo acquired Former ABD Insurance and Financial Services in 2007, then renamed it Wells Fargo Insurance Services in 2008 while continuing to use the ABD mark.
- Former ABD members left in 2009, formed Insurance Leadership Network, Inc. (ILN), and launched New ABD in 2012 using the same name after Wells Fargo failed to renew the ABD mark.
- Wells Fargo sued New ABD on July 24, 2012 for trademark, false affiliation and advertisement, and unfair competition; Wells Fargo moved for a preliminary injunction on January 16, 2013; the district court denied it on March 8, 2013.
- The district court’s abuse-of-discretion standard of review is applied; legal issues are reviewed de novo, while factual determinations are reviewed for abuse of discretion.
- The panel reverses and remands to reconsider Wells Fargo’s likelihood of success on the merits, addressing separate false advertising and abandonment analyses, and clarifying the irreparable harm issue for remand.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether false advertising was properly analyzed separately | Wells Fargo argues false advertising requires its own test. | New ABD treats it as derivative of trademark claims. | Abuse: separate false advertising test required; must consider independently. |
| Whether abandonment analysis was misapplied | Wells Fargo contends continued uses were bona fide in ordinary course. | New ABD contends marks were abandoned due to non-use. | Abandonment error: prospective intent to abandon not considered; totality of bona fide uses present. |
| Whether Wells Fargo's uses constituted bona fide use in the ordinary course | Wells Fargo continued to use ABD in presentations and solicitations to preserve goodwill. | New ABD argues uses were residual and not bona fide. | Court: continued bona fide use demonstrated; district court erred in abandonment finding. |
| Role of actual confusion at preliminary injunction stage | Actual confusion supports likelihood of confusion for injunctive relief. | Actual confusion is a less critical factor at this stage. | Acknowledges actual confusion is less important at preliminary stage; not outcome-determinative. |
| Whether false affiliation claims can be addressed on remand | Wells Fargo can pursue false affiliation claims later. | New ABD contends lack of timely raising limits reconsideration. | Remand allows Wells Fargo to address false affiliation claims consistent with this opinion. |
Key Cases Cited
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (abuse of discretion standard and de novo review for legal issues)
- Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134 (9th Cir. 1997) (Lanham Act false advertising five-element test)
- Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012) (trademark infringement requires likelihood of confusion, eight-factor test)
- Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931 (9th Cir. 2006) (abandonment requires discontinuance and intent not to resume; breadth of ‘trademark use’)
- Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970) (single bona fide use can prevent abandonment)
- Network Automation, Inc. v. Advanced System Concepts, 638 F.3d 1137 (9th Cir. 2011) (actual confusion less critical at preliminary injunction stage)
- Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013) (irreparable harm may rely on loss of control over business reputation and goodwill)