ORDER GRANTING PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION
Nоw before the Court is Plaintiff Midwest Guaranty Bank’s motion for prelimi
FACTS
The underlying facts giving rise to this litigation are relatively straightforward. Plaintiff, Midwest Guaranty Bank (“Midwest Guaranty” or “Plaintiff’) has provided financial services and products to Michigan customers since 1989. 1 (Comply 7-9.) Midwest Guaranty has five Detroit metro■politan area branches located in Troy, Beverly Hills, Livonia, Bloomfield Township, and Farmington Hills, Michigan. (Id.; Maxson Dec. ¶ 12.)
Defendant Guaranty Bank (“Guaranty” or “Defendant”), based in Wisconsin, has been providing retail banking and residential mortgage services since 1923. (Def.’s Prel. Inj. Resp. Br. at 6.) Specifically, Guaranty began operating undеr the name “Guaranty Building and Loan Association” in 1923. It operated under this name until 1951, when it changed its name to “Guaranty Savings & Loan Association.” In February, 1989, Guaranty, once again, changed its name, this time to “Guaranty Bank for Savings, S.A.” This name only lasted for approximately one year; in May, 1990, Guaranty changed its name to “Guaranty Bank, S.S.B.” Finally, in June, 2002, Guaranty converted to a federal savings bank under the name “Guaranty Bank.” (Pl.’s Exh. 75.)
Approximately five years ago, Guaranty opened a “convenience banking location” in a Kohl’s supermarket in Mequon, Wisconsin. Guaranty subsequently opened additional banking locations in other Kohl’s supermarkets. (Id.) After years of discussions, Guaranty decided, in 2002, to expand its in-store banking business into Michigan, executing agreements with both the Farmer Jack and Kroger supermarket chains. (Id. at 7-8.) Guaranty has opened banking locations in the Detroit metropolitan area and is planning further expansion into this market. According to Guaranty Chairman Gerald Levy’s testimony at the May 27, 2003 evidentiary hearing, Guaranty has now opened twenty in-store branches in southeast Michigan, and intends to open approximately twenty more in-store brаnches in the near future.
Midwest Guaranty contends that Guaranty’s use of the name Guaranty Bank has created a likelihood of confusion among Midwest Guaranty customers and others as to the source of Guaranty’s financial services and products, as well as the financial services and products of Midwest Guaranty.
(Id.
¶ 17.) Midwest Guaranty has documented numerous misdirected phone calls and other inquiries intended for Guaranty Bank, and/or Midwest Guar
Midwest Guaranty filed the instant four-count complaint on November 26, 2002: Count I — Lanham Act § 43(a) Unfair Competition [15 U.S.C. § 1125(a) ]; Count II — Common Law Unfair Competition; Count III — Common Law Trademark Infringement; and Count IV — Violation of the Michigan Consumer Protection Act M.C.L.A. § 445.903.
On January 29, 2003, Midwest Guaranty filed the instant motion for preliminary injunction. The parties filed proposed findings of fact and conclusions of law on Friday, May 23, 2003. The Court held an evidentiary hearing on Tuesday, May 27, 2003, and heard final oral argument on Wednesday, May 28, 2003. Having considered the entire record, including the testimony and evidence presented during the evidentiary hearing, the Court is now prepared to rule on Midwest Guaranty’s motion for preliminary injunction.
ANALYSIS
A. Preliminary Injunction Standard
The granting of a preliminary injunction is committed to the sound discretion of the trial court.
United States v. Any And All Radio Station Transmission Equip.,
A court must consider four factors when deciding whether to issue a preliminary injunction: (1) whether the plaintiff has a strong likelihood of succeeding on the merits; (2) whether the plaintiff will suffer irreparable injury absent the injunction; (3) whether issuing the injunction will cause substantial harm to others; and (4) whether the public interest will be furthered by the issuance of the injunction.
Gonzales v. National Bd. Of Med. Examiners,
B. Tea Rose-Rectanus Doctrine — Mark Priority
As a threshold matter, Guaranty contends that it has priority in the “Guarаnty Bank” service mark because it has been using the “Guaranty” name since 1923, well before Midwest Guaranty began using the “Midwest Guaranty” mark in 1989, citing the
Tea Rose-Rectanus
doctrine established by two U.S. Supreme Court
cases
—Hanover
Star Milling Co. v. Metcalf,
[W]here two users operate in geographically remote markets, prior appropriation is legally insignificant. [ACCU Personnel, 846 F.Supp.] at 1205. This is because each user attains rights in the mark in the remote market according to actual use. Thus, a senior user enters a remote market subject to the trademark rights already acquired, in good faith, by another user. See United Drug Co. v. Theodore Rectanus Co.,248 U.S. 90 ,39 S.Ct. 48 ,63 L.Ed. 141 (1918); Hanover Star,240 U.S. 403 ,36 S.Ct. 357 ,60 L.Ed. 713 (the Tea-Rose case); see also Restatement (Third) of the Law of Unfair Competition § 19 (1995). This principle, known as the Tea-RoselRectanus doctrine, governs territorial rights in unregistered trademarks and permits a junior user to enjoin a senior user’s infringing use “in an area where the senior user has no established trade, and hence no reputation and no good will.” Natural Footwear,760 F.2d at 1394 ; see generally 4 McCarthy on Trademarks Ch. 26, passim (“The Territorial Extent of Trademark Rights”). The Tea-Rose/Rectanus doctrine applies to infringement actions premised on § 43(a),, of the Lanham Act. 4 McCarthy on Trademarks § 26.4, at 26-9-10.
Laurel Capital Group v. BT Financial Corp.,
Guaranty Bank did not “actually use”, in the trademark sense, its mark in the relevant geographic market (southeast Michigan), before Midwest Guaranty adopted its mark in 1989. Guaranty claims that since the early 1980’s, it was originating and servicing mortgage loans under the “Guaranty Bank” mark in approximately 40 states, not including Michigan, and that its name appears in closing documents as a servicer of such loans. (Gerald J. Levy Declaration ¶ 5-6.) Mr. Levy’s declaration is deceptively insufficient — no mention is made of significant loan originations in Michigan before 1989 (only loans in 40 states since the early 1980’s). In fact, Midwest Guaranty filed the declaration of Gary Mielock, former Commissioner of the Michigan Financial Institutions Board, 2 who states that until at least June, 2002, Guaranty Bank would have been required to obtain a Certificate of Authority from the Commissioner in order to conduct business in Michigan — no such Certificate was issued. (Mielock Declaration ¶ 20-21.) This was confirmed by Gerald Levy’s own testimony during the evidentiary hearing — Guaranty had not obtаined a Certificate of Authority to do business in Michigan.
C. Strong Likelihood of Success On The Merits
As previously noted, Midwest Guaranty’s Complaint sets forth four counts: Count I — Lanham Act § 43(a) Unfair Competition [15 U.S.C. § 1125(a)];
4
Count II — Commоn Law Unfair Competition; Count III — Common Law Trademark Infringement; and Count IV — Violation of the Michigan Consumer Protection Act M.C.L.A. § 445.903. Both parties acknowledge that in order for Midwest Guaranty to prevail on its State and Federal claims, it must establish that Guaranty’s service mark is likely to cause confusion among consumers in the marketplace.
Carson v. Here’s Johnny Portable Toilets, Inc.,
The Sixth Circuit has identified eight factors that are relevant in determining whether a likelihood of confusion exists in a particular case: (1) the strength of the plaintiffs mark, (2) the relatedness of the
Not all of these factors will be relevant in every case, and in the course of applying them, “[t]he ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.”
Id.
(quoting
Homeowners,
1. Strength of Plaintiffs Service Mark
The strength of Midwest Guaranty’s service mark is determined by the mark’s distinctiveness and the degree of recognition in the marketplace.
Homeowners,
Here, Midwest Guaranty claims a protectable interest in the overall mark “Midwest Guaranty Bank.” The word “bank” is a generic term incapable of protection by itself.
First Savings Bank v. First Bank Sys., Inc.,
Midwest Guaranty argues, however, that insertion of the term GUARANTY renders the overall mark suggestive rather than merely descriptive.
6
(Pl.’s
According to Black’s Law Dictionary, “guaranty” means “a collateral agreement for performance of another’s undertaking. An agreement in which the guarantor agrees to satisfy the debt of another (the debtor), only if and when the debtor fails to repay (secondary liable).” Black’s Law Dictionaey 705 (Deluxe 6th ed.1990). While use of the term “guaranty” may be descriptive, for example, of bank deposits insured by the Federal Deposit Insurance Corporation in the event of a bank’s failure, it is not generally descriptive of banking and other financial services (mortgages, etc.) performed by the parties. Instead, as acknowledged by Guaranty’s counsel during final oral argument, the term suggests that the consumer should trust and feel secure that their money is safe, and thus is more suggestive than descriptive. The Court agrees with Midwest Guaranty that the term “guaranty” is suggestive in this context.
This conclusion — that Midwest Guaranty’s mark may be protectable at common-law — does not automatically warrant a like conclusion that Midwest Guaranty’s mark is strong in the relevant geographic area. The Sixth Circuit has recognized that “[e]ven an arbitrary trademark is not a strong mark, however, if it does not achieve broad public recognition across product lines.”
Therma-Scan,
Midwest Guaranty argues that it has achieved broad public recognition in the relevant geographic market. As support, Midwest Guaranty notes that it, exclusively has used the service mark “Midwest Guaranty Bank” in southeast Michigan since 1990, and that it has spent in excess of $2.5 million promoting its financial products and services (approximately $180,000 per year, on average). (PL’s Br. at 11-12; Maxson Declaration H’s 31-42.) Midwest Guaranty also states that its employees makе “numerous” charitable appearances each year on behalf of the bank. (Maxson Declaration ¶’s 48-49.)
Advertising expenditures can potentially aid in creating public recognition. However, mere citation to an advertising budget does not, by itself, provide a basis for concluding that Midwest Guaranty’s mark is strong in the relevant geographic area. Instead, it creates an attenuated link to actual market recognition.
Homeowners,
Other evidence, however, suggests that Midwest Guaranty’s mark is strong in southeast Michigan. The geographic area involved in this case is relatively small, primarily encompassing south Oakland County, and a small portion of western
Guaranty disagrees, arguing that extensive third-party use of the term “Guaranty” weakens the strength of Midwest Guaranty’s mark. But Guaranty produces no evidence of actual use of “Guaranty” in Michigan other than residence-based Guaranty Capital L.L.C.
The Court recognizes that according to the Sixth Circuit, “extensive third-party use[ ] of a trademark [ ] substantially weaken[s] the strength of a mark.”
Homeowners,
These registrations and applications provide compelling evidence of what most consumers would recognize from experience; namely, that banks are wont to refer to themselves as the “First.” This extensive use suggests that FIRST BANK per se is a weak term, at least when applied to the provision of financial services.
First Savings Bank,
Guaranty has presented evidence of widespread actual use and registration of the term GUARANTY by financial institutions in other states. For example, in 1989, when Midwest Guaranty began opеrating in Michigan, several hundred state and federal trademark applications utilized the word GUARANTY or a variation thereof; 9 numerous registrations were for entities . offering banking/financial related services (22 federal 10 and 20 state). (Ro-dack Declaration K’s 7-11; Def.’s Resp. Br. Exh. 3-4.) None of these, however, were in Michigan, except for Guaranty Federal Savings & Loan which ended its use of that name in 1990. Actual use of the word GUARANTY can be demonstrated by the fact that 25 banks were insured by the FDIC in 1989, 11 (Rodack Declaration ¶ 4; Defi’s Resp. Br. Exh. 3), and at least 45 banks utilized the term GUARANTY on November 26, 2002, 12 the date this litigation was instituted by Midwest Guaranty. (Def.’s Br. at 3 and Exh. 7.) Once again, none of the banks were in Michigan.
2. Relatedness of Services Offered
The Court also concludes that the parties’ services are related. Indeed, at oral argument, Defendant’s conceded that both parties offer similar banking services. The Sixth Circuit has identified three categories regarding the relatedness of the services of the parties:
First, if the parties compete directly by offering their goods or services, confusion is likely if the marks are sufficiently similar; second, if the goods or services are somewhat related but not competitive, the likelihood of confusion will turn on other factors; third, if the goods or services are totally unrelated, confusion is unlikely.
Therma-Scan,
Here, the services clearly fall into the first category — the parties are direct competitors. According to Clarke Maxson, Midwest Guaranty is a community bank offering services to both individual consumers and businesses, including “adjustable rate mortgages, home equity loans, 15/30 year fixed rate mortgages, construction loans, jumbo loans, personal checking and savings accounts, automobile loans, boat loans, and personal loans.” (Maxson Declaration 1i’s 13-14.) Similarly, Gerald Levy, Guaranty’s Executive Chairman, stated that Guaranty provides “retail banking and residential mortgage services primarily to customers (as distinguished from businesses) using the ‘GUARANTY’ name.” (Levy Declaration ¶ 3.)
It makes no difference, as argued by Guaranty, that Midwest Guaranty services both individual and business consumers, while Guaranty only services individual consumers. Both parties provide banking and mortgage services to individual consumers, thus, to a large extent, their services are nearly identical.
See, e.g., Express Funding, Inc.,
3. Similarity of the Marks
Similarity of the marks is an important factor. In its motion, Midwest Guaranty notes that the only difference between the parties’ marks is the geographic identifier “Midwest.” Midwest Guaranty argues that because it has been the exclusive user of GUARANTY in southeast Michigan since 1990, “when the public is ‘singly presented’ with the name GUARANTY BANK, Midwest Guaranty Bank will naturally come to mind.” (Pl.’s Br. at 13.)
Similarity of the marks “is a factor of considerable weight.”
Daddy’s Junky Music,
It cannot be denied that the two marks bear considerable resemblance to each other — the only difference being the weak geographic identifier “Midwest.” Furthermore, the only distinctive component of the two marks — the word “Guaranty” — is common to both. Actual consumers in southeast Michigan would, therefore, likely focus upon the term “Guaranty,” potentially causing confusion in the marketplace when “Midwest Guaranty Bank” and “Guaranty Bank” are viewed in isolation; current and potential consumers may mistаkenly believe that the parties are the same entity upon seeing the term GUARANTY, the dominant feature of both parties’ marks.
See, e.g., Express Funding, Inc.,
The resemblance and pronunciation similarities are tempered somewhat by the actual appearance of the two parties’ logos in the market. Attached to Mr. Maxson’s declaration are numerous uses of Midwest Guaranty’s logo. (PL’s Br. Exh. 1.) Midwest Guaranty’s logo generally contains the word Midwest stacked upon the words Guaranty and Bank. The words are printed in a stylized font and are sandwiched between two bold lines. The phrase “Midwest Guaranty” is generally separated from the word “Bank,” in print material,
13
by a distinctive and prominent picture of a
Notwithstanding this difference in print materials, the Court concludes that the parties’ marks, when viewed alone in the market, are confusingly similar. The Court reiterates the significant potential for confusion arising from the identifying signs utilized by Midwest Guaranty in front of its free-standing bank locations, (Pl.’s Exh. 56), which are similar to the identifying signage used by Guaranty Bank — the signs simply contain the mark “Midwest Guaranty Bank” without any use of an eagle (except for the Bingham Farms location). Thus, the signs publicly identifying Midwest Guaranty’s actual bank branches, like that of Guaranty’s branches, contain the parties’ service mark in large block letters. Such similarity clearly is likely to cause confusion among the average consuming public. It makes no differеnce that Guaranty’s signage utilizes banners, while Midwest Guaranty’s signage utilizes marble/granite signage. The average consumer would not expect the same type of signage material to be utilized outside a free-standing bank branch and inside an in-store convenience branch, physically constrained by the narrow con-fínes of an established supermarket. Thus, because, as noted supra, the Sixth Circuit has instructed that confusion should be judged from the perspective of those who may have a general, vague, or even hazy impression or recollection of the other party’s mark, the Court concludes that this factor weighs in favor of Midwest Guaranty.
4. Evidence of Actual Confusion
The Sixth Circuit has long recognized that evidence of actual confusion is “undoubtedly the best evidence of likelihood of confusion.”
Therma-Scan,
When evaluating this factor, the Court must also recognize that because “a successful Lanham Act plaintiff only must show a sufficient
potential
of confusion, not actual confusion, the fact that some confusion already has occurred favors plaintiff at least to some extent.”
Daddy’s Junky Music,
(i) Hearsay/Other Objections
As a threshold matter, Guaranty has filed two hearsay objections to the numerous declarations submitted by Midwest Guaranty. Guaranty’s objections with respect to these declarations are OVERRULED. The Federal Rules of Evidence define hearsay as “a statement, other than one made by the declarant while testifying аt the trial or hearing, offered in evidence to prove the truth of the matter asserted.” Fed. R. Evid. 801(c) (emphasis added).
The declarations made by Midwest Guaranty’s employees do not contain hearsay statements because the statements attributable to third parties are not being offered to prove the truth of the matter asserted; instead, the are simply being offered to demonstrate that the statements were actually made — the statements are not hearsay because they are merely probative of the declarant’s confusion.
See Armco, Inc. v. Armco Burglar Alarm Co.,
Guaranty also claims that the declarations contained in Midwest Guaranty’s Reply Brief and Supplemental Filings are improper because they do not rebut arguments and evidence raised in Guaranty’s Response Brief, and Midwest Guaranty has not obtained leave of the Court to supplement the record. Guaranty describes this as an attempt to “sneak” the declarations into the recоrd. The Court disagrees.
Before the Court is Midwest Guaranty’s motion for preliminary injunction. Such a motion is heard on an expedited basis, with a record that is continuously developing. The need to continuously supplement the
(ii) Midwest Guaranty’s Evidence of Actual Confusion
Midwest Guaranty has presented 65 declarations representing 51 separate instances of purported “actual confusion” since November 2002. 16
Midwest Guaranty has submitted numerous declarations from third parties, summarized below, who are casually acquainted with Midwest Guaranty. While these declarations are accorded less weight than individuals intimately involved, they do, nevertheless, provide evidence of actual confusion.
Homeowners,
Dec._Date Individual_Brief Summary_
# 3 12/3/02 Federal Express Inquired if Guaranty had a branch in _Employee_Westland, Michigan_
# 6 11/18/02 Job Applicant Asked to speak to someone about _Guaranty Bank lob opportunities
# 7_11/22/02 Karen_Inquired if the parties were related
# 10 12/3/02 Job Applicant Transmitted application material for _Guaranty Bank_
# 11,18 1/23/03 Job Applicant Telephone directory assistance gave number to Midwest Guaranty instead _of Guaranty_
# 12 11/22/02 Wisconsin Mortgage Co. Received Midwest Guaranty’s telephone Employee number by calling directory assis-_tance and asking for Guaranty_
# 13 1/10/03 Unidentified Third Party Inquired about escrow account of a _Guaranty account holder_
# 14_11/22/02 Unidentified Third Party Misdirected phone call_
# 16,17 11/24/02 John Jack Swek Spouse of Midwest Guaranty employee inquired if Midwest Guaranty was opening a branch in a Kroger _supermarket_
# 25 1/28/03 Marilyn Quillan Nolan Third-party at supermarket commented that she was initially confused by the _two banks_
# 26,27 1/29/03 United States Post Called wrong number attempting to Office Employee verify a check drawn on a Guaranty _Bank account_
# 29, 34 1/9/03 Job Applicant_Applied to Guaranty Bank_
# 33 2/11/03 “Charise” Directory assistance gave wrong tele-_phone number_
# 35, 36 2/18/03 Bobbie Gelman_Thought parties were affiliated
# 41 3/6/03 “Cheek & Go” employee Attempted to verify a Guaranty check _Asha__
# 43_3/12/03 Unidentified Female_Asked if she reached Guaranty Bank
# 44,47 2/22/03 Marion Smigielski Mother of Midwest Guaranty employee claimed that she was under the impression that Midwest Guaranty opened a branch in a Farmer Jack _supermarket_
# 45,49 3/13/03 James Edwin Wallace Attempted to transact business at Midwest Guaranty having been given _the location from directory assistance
# 46 3/11/03 Unidentified Female Called Midwest Guaranty in order to _reach Guaranty employee_
# 52 3/26/03 Management Recruiting Attempted to telephone Guaranty; Company retrieved telephone number from _yellow pages_
# 53 4/1/03 Kristen @ Vacation Verify Guaranty account; wrong tele-_Showroom_phone number_
# 54 2/12/03 Unidentified Female Telephoned Midwest Guaranty because she knew the bank she was looking for was “Guaranty something or _other”_
# 58 4/3/2003 Arlen — Standard Verify funds; looked up Guaranty’s Federal Bank phone number on the Internet and _called the first number that appeared
# 59 ■ 4/1/03 Erin Carneal Asked Midwest Guaranty employee if Midwest Guaranty was the new bank _moving into supermarkets_
# 60_4/1/03_._Mis-delivered mail_
# 61_2/22/03 Telecheck Employee_Verify funds_
# 63 4/16/03 Marissа Brown Attempted to cash Guaranty check at a _Midwest Guaranty branch_
# 103 5/16/03 Jena — Standard Federal Verify funds (found phone number in _Bank_yellow pages)_
# 104 5/14/03 Andrea Norman— Verify account number/stop-payment _Charter One Bank_orders for Guaranty account_
# 105 3/21/03 Celine Kleinhans Sought employment with Guaranty, having received wrong bank name from contact person at Manpower Inc.
These examples include a Federal Express employee, numerous job applicants, misdirected phone calls resulting from the use of directory assistance or internet search engines, as well as isolated check verification attempts made by employees of businesses such as the United States Post Office, “Check & Go,” and “Vacation Showroom.” Some of these purported instances of confusion amount to mere inattentiveness and carelessness, which are of very little significance.
Therma-Scan,
Midwest Guaranty has, however, presented substantial evidence of actual confusion among the parties’ customers and/or persons intimately acquainted with Midwest Guaranty and/or Guaranty. Specifically, Midwest Guaranty documented the following:
Dec._Date Individual_Brief Summary_
# 4,15 1/9/03 Customer David Raben Customer commented that he was pleased that Midwest Guaranty opened a new branch at the Livonia _Kroger supermarket_
# 5 12/15/02 Customer Nancy Booth Midwest Guaranty employee’s mother Bissett mentioned that Midwest Guaranty now had an ATM at a Kroger _supermarket_
# 8 12/18/02 Customer Lori Morrison Asked if she could bank at a Kroger in-store branch because it was closer to _her home_
# 9 1/16/03 Guaranty Customer Guaranty customer attempted to with-Michele Honaker draw funds and deposit check at _Midwest Guaranty branch_
# 28, 32 1/29/03 Business Customer Called and inquired about Farmer Jack Caroline Fine in-store location because she thought it was affiliated with Midwest Guaranty_
Commented that he noticed that Midwest Guaranty was opening a branch in a Kroger supermarket, noting that it was a more convenient location_ # 30 2/7/03 Customer Sherwin Cornelius
# 31 2/10/03 Customer Francis Papke Stated that he thought he could do his _banking at a Kroger in-store location
# 37, 40 2/21/03 Customer/Employee Asked if Midwest Guaranty was same as Margaret Henderson the Guaranty Bank in a supermarket, because she associated it with _Midwest Guaranty_
# 39, 48 2/19/03 Customer Wendell Asked if Kroger in-storen branch was a _Combs_branch of Midwest Guaranty_
# 42 3/14/03 Unidentified Wife of Inquired if Midwest Guaranty had a Midwest Guaranty branch inside a Dearborn Farmer Customer Jack, hoping that they were the same _bank_
# 50, 51 3/21/03 Customer Lois Elain Asked if Guaranty Bank in Farmer Jack Latterell was a Midwest Guaranty branch because her son told her about a Guar-_antv bank in the store_
# 55 3/13/03 Potential Customer Inquired about new Guaranty Bank and Bruce Sewell_the personal deposit accounts
# 64, 66 4/16/03 Business Custоmer Thomas Alcini Customer’s employee attempted to make deposits at a Farmer Jack location
# 80 4/3/03 Supplier Julie Anne Kennedy Asked Guaranty employee if he was a Midwest Guaranty employee after viewing his Guaranty Bank name tag
# 81 4/15/03 Business Customer Thomas Alcini Believed that he could make deposits at Farmer Jack in-store branch
# 86, 87 N/A Potential Business Customer James Veit Telephoned to switch business account to Midwest Guaranty, believing he could bank at in-store location
#90 5/7/03 Unidentified Female Requested telephone number of in-store branch
#91 5/10/03 Customer Celia Ransom Attempted to cash Midwest Guaranty check at Farmer Jack location, believing that it was a Midwest Guaranty branch
# 102 4/10/03 Guaranty Customer Guaranty mortgage customer entered Midwest Guaranty branch-for closing of her mortgage loan
Serious confusion among actual consumers is accorded greater weight.
Homeowners,
Given the fact that Guaranty entered the market in November, 2002, a mere six months ago, and the fact that Guaranty has only opened one-half of its anticipated in-store branches, these documented instances of confusion cannot be deemed isolated.
Cf. Therma-Scan,
5. Marketing Channels Utilized
This factor “consists of considerations of how and to whom the respective goods or services of the parties are sold.”
Homeowners,
As previously noted, the parties service, to a large extent, an identical customer base. Furthermore, during the evidentia-ry hearing, the Court learned that both parties utilize similar marketing approaches — Midwest Guaranty utilizes television, radio, community newspapers, direct mail and point of sale advertising; Guaranty utilizes on-site signage, community newspapers, direct mail and point of sale advertising. This factor favors Midwest Guaranty.
Therma-Scan,
6. Degree of Customer Care and Sophistication
According to the Sixth Circuit:
Generally, in assessing the likelihood of confusion tо the public, the standard used by the courts is the typical buyer exercising ordinary caution. However, when a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the services at issue, a higher standard is proper. Similarly, when services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. When services are sold to such buyers, other things being equal, there is less likelihood of confusion.
Homeowners,
Further, “confusingly similar mаrks may lead a purchaser who is extremely careful and knowledgeable about the instrument that he is buying to assume nonetheless that the seller is affiliated with or identical to the other party.”
Daddy’s Junky Music,
7. Guaranty’s Intent in Selecting the Mark
According to the Sixth Circuit:
If a party chooses a mark with the intention of creating confusion between its products and those of another company, “that fact alone may be sufficient to justify an inference of confusing similarity.” [Daddy’s Junky Music, 109 F.3d] at 286 (citation omitted). Circumstantial evidence of copying, particularly “the use of a contested mark with knowledge of the protected mark at issue,” is sufficient to support an inference of intentional infringement where direct evidence is not available. Id.; see Champions Golf Club, Inc. v. The Champions Golf Club, Inc.,78 F.3d 1111 , 1121 (6th Cir.1996) (instructing the district court to evaluate the credibility of one of the defendant’s former employees, who testified that he had told the defendant’s owner about the prior use of the mark by the plaintiff). Where thereis no evidence that the defendant actually knew that a protected trademark existed, such knowledge can be presumed if evidence exists of the plaintiffs “extensive advertising and long-term use of a protected mark.” Daddy’s Junky Music Stores, 109 F.3d at 286 .
Therma-Scan,
During the evidentiary hearing, counsel for Midwest Guaranty conceded that Guaranty did not choose the mark “Guaranty Bank” with the intention of creating confusion. On the other hand, when Guaranty came into this market it was aware of Midwest Guaranty’s presence in the market, and Guaranty chose not to enter the market with a new name, thereby intentionally carrying its mark into the territory of Midwest Guaranty Bank.
8. Likelihood of Expansion of Product Lines
Both parties acknowledge that this factor is not relevant in this case.
9. A Strong Likelihood of Success on the Merits Has Been Established
When synthesizing the eight factors, it becomes clear that virtually all of the important factors favor Midwest Guaranty. Circumstantial evidence supports a finding that Midwest Guaranty’s mark is strong in the relevant geographic area. Moreover, the parties services are related and their marks are confusingly similar. Finally, and most importantly, evidence of actual confusion strongly supports a conclusion that confusion is likely to occur. Based on the record currently before the Court, Midwest Guarаnty has succeeded in establishing a strong likelihood of success.
D. Irreparable Injury
Midwest Guaranty claims that it will suffer irreparable injury if a preliminary injunction does not issue in this case. As noted by Midwest Guaranty, this inquiry is inextricably intertwined with the likelihood that Midwest Guaranty will succeed on the merits.
The law of this Circuit holds that no particular finding of likelihood of entry or irreparable harm is necessary for in-junctive relief in trademark infringement or unfair competition cases. See Wynn Oil Co. v. American Way Serv. Corp.,943 F.2d 595 , 608 (6th Cir.1991). The Wynn Court noted that irreparable injury “ordinarily follows when a likelihood of confusion or possible risk to reputation appears” from infringement or unfair competition. Id. (quoting Koppers Co. v. Krupp-Koppers GmbH,517 F.Supp. 836 , 849 (W.D.Pa.1981)). Thus, a court need only find that a defendant is hable for infringement or unfair competition for it to award injunctive relief.
Circuit City Stores, Inc. v. CarMax, Inc.,
E. Harm to Others
Guaranty argues that a preliminary injunction would cause substantial harm to itself and others. Guaranty estimated that it would cost $10,908,402
over ten years
if it were required to use a different name in Michigan. (Jay Skemp Declaration.) Guaranty believes that it would be required to hire an additional 17.5 employees, in addition to other ongoing costs of operation. Additionally, Guar
Even, assuming arguendo, that Guaranty’s claim of costs over ten years is accurate, the Court, nonetheless, rejects Guaranty’s argument as to harm. Gerald Levy, Guaranty’s Executive Chairman, acknowledges that in August 2002, several months before Guaranty opened its first Michigan in-store branch, he was aware that Midwest Guaranty was operating in the relevant geographic area. Additiоnally, only days after Guaranty opened its first in-store branch, counsel for Midwest Guaranty sent a cease and desist letter to Guaranty. (PL’s Exh. 84.) Finally, and most important, Guaranty was well aware of the risks associated with entering a market in which a direct competitor was already utilizing a confusingly similar mark because Guaranty has a history of aggressively attacking the use of the word “Guaranty” by others in its market — Guaranty had previously enforced its common-law rights against Guaranty Federal Savings Bank, a California Bank, and Guaranty Mortgage. (Pl.’s Exhs. 82, 88, 89.) In fact, Guaranty rejected Guaranty Mortgage’s offer to operate under the name “Guaranty Mortgage Bancorp Services,” noting that “the last two words constitute an insufficient distinction even if they were immediately adjacent to the first two words.” (PL’s Exh. 89.)
The Court agrees with Midwest Guaranty that any alleged actual harm suffered by Guaranty has been self-inflicted. During the evidentiary hearing, Gerald Levy acknowledged that the costs of operating under two names would be substantially the same, whether they occurred before Guaranty entered the Michigan market, or after a preliminary injunction has been entered by the Court аt this juncture. Thus, Guaranty placed itself in a position of risk. It chose to enter southeast Michigan under the mistaken belief that the marks were not confusingly similar despite its localized claims of “Guaranty” confusion in Wisconsin. Guaranty, having made this strategic decision, cannot now claim that a preliminary injunction should not issue because it would be forced to incur the same costs that it would have incurred had it properly entered the Michigan market. Stated another way, Guaranty cannot place itself in harms way, and then later claim that an injunction should not issue because of costs which it must incur in order to remedy its own misconduct. 17
F. Public Interest
The public interest is served by protecting one’s trademark rights and avoiding confusion in the marketplace.
R.L. Polk & Co. v. INFOUSA, Inc.,
The policy behind protecting trademarks is to prevent the public from being misled as to the source or origin of the goods or services they are buying. “Trademark infringement, by its verynature, adversely affects the public interest in the ‘free flow* of truthful commercial information.” Thus, enjoining Defendant from using a mark confusingly similar to [Plaintiffs] mark would best serve the public interest.
Big Boy Restaurants v. Cadillac Coffee Co.,
G. A Preliminary Injunction is Granted
After weighing the four preliminary injunction factors, the Court concludes that Midwest Guaranty’s motion for preliminary injunction must be granted. Plaintiff has demonstrated a strong likelihood of success on the merits. Additionally, the irreparable harm likely to be suffered by Midwest Guaranty is not outweighed by any alleged harm to others. Finally, an injunction will serve the public interest.
As such, pending a final trial on the merits, Guaranty is hereby RESTRAINED and ENJOINED from using the mark GUARANTY BANK in conjunction with its banking and related financial services offered in southeast Michigan. 18 Guaranty, however, shall have 30 days from the date a security bond is posted by Midwest Guaranty, see infra, to terminate operating bank branches in southeast Michigan under the Guaranty Bank name.
H. Federal Rule of Civil Procedure 65(c) — Bond
Federal Rule of Civil Procedure 65(c) states, in relevant part:
No restraining order or preliminary injunction shall issue except upon the giving of security by the applicant, in such sum as the court deems proper, for the payment of such costs and damages as may be incurred or suffered by any party who is found to have been wrongfully enjoined or restrained. No such security shall be required of the United States or of an officer or agency thеreof.
Fed.R.Civ.P. 65(c). While a district court must consider whether security is appropriate, the court need not actually require security — instead, the decision is left to the sound discretion of the court.
Roth v. Bank of the Commonwealth,
Guaranty contends that a bond of no less than $10 million is required in this case. Midwest Guaranty, on the other hand, argues that no bond, or a de mini-mus bond in the amount of $5,000 or $10,000 should be entered in this case. Based on the record currently before the Court, including testimony given during the evidentiary hearing, the Court concludes that a $500,000 bond is appropriate in this case.
CONCLUSION
For the foregoing reasons, the Court GRANTS Plaintiffs motion for preliminary injunction. Specifically, pending a final trial on the merits, Defendant is hereby RESTRAINED and ENJOINED from using the mark GUARANTY BANK in conjunction with its banking and related financial services offered in southeast Michigan. Defendant, however, shall have 30 days from the date a security bond is
SO ORDERED.
Notes
. According to Clarke Maxson, President, CEO and co-founder of Midwest Guaranty, the bank is "a community bank that offers a wide range of financial services to both individual consumers and business.” "Financial services offered by Midwest Guaranty Bank include, but are not limited to, adjustable rate mortgages, home equity loans, 15/30 year fixed rate mortgages, construction loans, jumbo loans, personal checking and savings accounts, automobile loans, boat loans, and personal loans.” (Pl.’s Prelim. Inj. Br. Exh. 1— Maxson Declar. ¶ 13-14.)
. Guaranty filed an objection to Mr. Mielock's declaration. Guaranty argues that the declaration does not comply with Federal Rule of Civil Procedure 26(b)(2)(B), dealing with pretrial expert disclosures. Given the expedited nature of a preliminary injunction hearing, Mr. Mielock's declaration will be permitted for the limited purpose of deciding the instant motion. Both parties must comply with Rule 26(b)(2), before trial, as provided in the Rules. Moreover, the declaration will be permitted, notwithstanding any minor technical deviation from 28 U.S.C. § 1746.
. As noted supra, Guaranty did not use the simple "Guaranty Bank” mark in 1989; Guaranty was known as "Guaranty Bank for Savings, S.A.” In fact, in 1999, Guaranty, when defending its own local common law trademark rights against "Guaranty Federal Savings Bank,” stated:
Please be advised that the name "Guaranty Bank” is presently being used by Guaranty Bank, S.S.B., a Wisconsin state savings bank and has been in continuous use by Guaranty Bank, S.S.B. since its conversion to state savings bank charter in 1993. Formerly, Guaranty Bank, S.S.B. was know as Guaranty Savings and Loan. Guaranty Savings and Loan was established in 1923.
(Pl.'s Exh. 82) (emphasis added).
. Specifically, 15 U.S.C. § 1125 provides, in relevant part:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, •term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1).
. These "categories constitute a spectrum of increasing strength and are not perfectly discrete.”
Daddy's Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr.,
. As noted by a respected commentator:
Under the anti-dissection rule, a composite mark is tested for its validity and distinctiveness by looking at it as a whole, rather than dissecting it into its component parts. As the U.S. Supreme Court stated: "The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.”
However, it is not a violation of the anti-dissection rule to separately view the component parts as a preliminary step on the way to an ultimate determination of probable customer reaction to the composite ás a whole. As the Trademark Board observed:
It is perfectly acceptable to separate a compound mark and discuss the implications of each part thereof with respect to the question of descriptiveness provided that the ultimate determination is made on the basis of the mark in its entirety. An Examining Attorney's discussion ofeach word separately in order to show that the term in its entirety is descriptive is not the same thing as dissecting a mark.
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:27 (4th ed.2002) (footnotes omitted).
. Guaranty cites to Guaranty Capital, L.L.C., a Michigan entity formed on August 16, 1999. (Delbert Ruth Dep. at 6.) However, Guaranty Capital does not provide banking and/or related financial services, checking or savings accounts, offer debit cards or money market accounts, does not utilize automatic teller machines, and does not originate or service mortgage loans. (Id. at 9.) Instead, Guaranty Capital was founded to provide investment banking services to small and medium size companies. (Id. at 6.) It operates out of a residence which contains no signage. (Id. at 10.)
. According to a District Court in the Eastern District of Michigan, there are generally five types of evidence which are considered when ascertaining whether secоndary meaning has been attached to a mark: (1) survey evidence; (2) the length and manner of use of the mark; (3) the nature and extent of advertising and promotion of the mark; (4) the volume of sales; and (5) instances of actual confusion.
Sprinklets Water Ctr. v. McKesson Corp.
. Several utilized the spelling GUARANTEE.
. Guaranty claims that 30 federal registrations existed in January, 1989. (Seth Rodack Declaration ¶ 11.) However, 8 of the registrations/applications were either abandoned and/or cancelled prior to 1989. (Def.'s Resp. Br. Exh. 4.)
. These banks include: GUARANTY BANK, GUARANTY BOND BANK, GUARANTY NATIONAL BANK, MEMO GUARANTY BANK, STATE GUARANTY BANK, COMMUNITY GUARANTY SAVINGS BANK, WOODS-VILLE GUARANTY SAVINGS BANK, LUM-BEE GUARANTY BANK, GUARANTY BANK & TRUST, GUARANTY FSB, MIDWEST GUARANTY BANK, FIRST GUARANTY BANK, GUARANTY SAVINGS & HOMESTEAD ASSOCIATION, CITIZENS GUARANTY BANK, GUARANTY STATE BANK & TRUST, FIRST GUARANTY BANK & TRUST and GUARANTY BANK OF CALIFORNIA.
. These banks were identified through the Dun & Bradstreet/American Business Information Search datábase. The banks include: GUARANTY BANK (Wisconsin), GUARANTY BANK (Texas), GUARANTY BANK (Illinois), GUARANTY BANK (Virginia), GUARANTY BANK (Louisiana), GUARANTY BANK (Pennsylvania), GUARANTY BANK (Ohio), GUARANTY BANK (Mississippi), GUARANTY BANK (California), GUARANTY BANK & TRUST (Louisiana), DEPOSIT GUARANTY BANK (Louisiana), CITIZENS GUARANTY BANK (Kentucky), COMMERCIAL GUARANTY BANCSHARES (Kansas), FIRST GUARANTY BANCORP (California), FIRST GUARANTY BANK (Louisiana), FIRST GUARANTY BANK & TRUST CO. (Florida), FIRST GUARANTY BANK INC. (Kentucky), FIRST GUARANTY BANK INVESTMENT (Florida), GUARANTY BANK TRUST CO. (Texas), GUARANTY BANCORP (New Hampshire), GUARANTY BANCSHARES (Oklahoma), GUARANTY BANCSHARES CORP. (Kansas), GUARANTY BANCSHARES INC. (Texas), GUARANTY BANK & TRUST (Kansas), GUARANTY BANK & TRUST (Missouri), GUARANTY BANK & TRUST CO. (Oklahoma), GUARANTY BANK & TRUST CO. (Mississippi), GUARANTY BANK & TRUST CO. (West Virginia), GUARANTY BANK & TRUST CO. (Florida), GUARANTY BANK & TRUST CO. (Iowa), GUARANTY BANK & TRUST CO. (Louisiana), GUARANTY BANK & TRUST CO. (Texas), GUARANTY BANK & TRUST CO. (Colorado), GUARANTY BANK OF CALIFORNIA (California), GUARANTY BANK OF MAMOU (Louisiana), GUARANTY FEDERAL BANK FSB (Wisconsin), HOME GUARANTY BANK (Illinois), JEFFERSON GUARANTY BANK (Louisiana), LUMBEE GUARANTY BANK (North Carolina), LYNDON GUARANTY BANK (New York), MENO GUARANTY BANK (Oklahoma), MIDWEST GUARANTY BANK (Michigan), STATE GUARANTY BANK (Oklahoma), TEXAS GUARANTY BANK (Texas) and WEST COAST GUARANTY BANK (Florida). (Def.’s Resp. Br. at 3-4 and Exh. 7.)
. Midwest Guaranty's checks and deposit slips, employee business cards, stationary, and debit and credit cards usually contain the
. Although the Sixth Circuit has not addressed this issue, it has recognized that only one circuit — the Eighth Circuit — has disagreed with this conclusion.
Marketing Displays, Inc. v. TrafFix Devices, Inc.,
. Federal Rule Evidence 803(3) provides that the following is not excluded by the hearsay rule:
A statement of the declarant's then existing state of mind, emotion, sensation, or physical condition (such as intent, plan, motive, design, mental feeling, pain, and bodily health), but not including a statement of memory or belief to prove the fact remembered or believed unless it relates to the execution, revocation, identification, or terms of declarant’s will.
. Several declarations discuss the same incident.
. Similarly, the potential harm to Michigan employees and the disruption to Farmer Jack and Kroger do not override the irreparable harm caused by Guaranty in this market. A quick name changeover by Guaranty in the 30 day grace period provided by this Court should eliminate any significant harm to its Michigan employees and to the Farmer Jack and Kroger supermarket locations.
. Testimony elicited during the evidentiary hearing indicates that any concern with respect to the Interagency Statement on Branch Names can be properly managed and mitigated by Guaranty.