Case Information
*1 United States Court of Appeals
For the First Circuit
No. 10-2053
PEOPLES FEDERAL SAVINGS BANK, Plaintiff, Appellant,
v.
PEOPLE'S UNITED BANK,
Defendant, Appellee.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS [Hon. Nathaniel M. Gorton, U.S. District Judge]
Before
Torruella, Selya, and Lipez, Circuit Judges.
Lee Carl Bromberg, with whom Erik Paul Belt, Lori J. Shyavitz, and McCarter & English LLP, was on brief for appellant.
David H. Herrington, with whom Lawrence B. Friedman, Arminda B. Bepko, Cleary Gottlieb Steen & Hamilton LLP, Nicholas B. Carter, and Todd & Weld LLP, was on brief for appellee.
February 10, 2012
*2
TORRUELLA, Circuit Judge.
Plaintiff-Appellant Peoples
Federal Savings Bank ("Peoples Federal") challenges an
interlocutory order denying its motion to preliminarily enjoin
defendant-appellee People's United Bank ("People's United") from
using the mark "PEOPLES" in the rebranding of several recently
acquired banks in Eastern Massachusetts. After careful
consideration, we conclude that Peoples Federal's motion for a
preliminary injunction was properly denied. Peoples Fed. Sav. Bank
v. People's United Bank,
I. Facts and Procedural History A. Factual Background
Peoples Federal is a community bank that operates exclusively in Eastern Massachusetts. It was chartered in 1888 [1]
and became a federally insured savings and loan institution in 1937. While its headquarters are in Brighton, it has grown over the years and now operates branches in Allston, Brookline, Jamaica Plain, Norwood, and West Roxbury.
Peoples Federal has been using the term "Peoples" in its name and service marks since 1937 and claims to be the only *3 continuous user of the PEOPLES mark for banking services in Eastern Massachusetts since that time. It owns six Massachusetts [2]
registrations for its marks, including PEOPLES, PEOPLES FEDERAL, and PEOPLES FEDERAL SAVINGS BANK, which were granted on June 15, 2010, the same day Peoples Federal filed suit in this case. It promotes its marks through advertising and marketing efforts, involvement in community activities, and charitable giving. The bank has attracted media attention and been portrayed favorably in the press.
Defendant-Appellee People's United was founded in 1842 in Bridgeport, Connecticut, and has used the word "People" in its name for at least eighty years. The bank was called "People's Bank" until 2007, when it changed its name to "People's United Bank" in consideration of its plans to expand beyond Connecticut and distinguish itself from other banks that also use the word "People" in their titles. People's United is a full-service, regional bank with over $22 billion in assets.
On April 16, 2010, as the result of a competitive bidding process, People's United acquired from the Federal Deposit Insurance Corporation ("FDIC") the deposits and banking operations of the failed Butler Bank, which had branches in north central *4 Massachusetts, and Butler Bank's subsidiary, Marlborough Cooperative, which had branches in Marlborough (collectively, "Butler"). On the following day (April 17, 2010), People's United began rebranding all former Butler branches and re-opened them under its own name. Specifically, it covered or otherwise replaced exterior signs at the former Butler branches with signs bearing the name and logo of "People's United Bank." People's United also used its name and logo to replace the failed bank's interior posters and brochures, and to publish new marketing materials and newspaper advertisements for these branches. Butler's troubles were covered extensively in the press as the first Massachusetts bank to fail in sixteen years. The press also covered the related purchase and rebranding of all Butler branches by People's United.
B. Procedural History
On June 15, 2010, Peoples Federal filed suit against People's United alleging trademark infringement, trademark dilution, and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as Massachusetts statutory and common law. One month later, on July 15, 2010, after unsuccessful negotiations with People's United, Peoples Federal presented its motion for preliminary injunction and temporary restraining order. Peoples Federal avered that People's United proposed to launch the rebranding of its former Butler branches on July 19, 2010 and that this would cause confusion among Peoples *5 Federal's current and potential customers, damaging its goodwill and threatening irreparable harm to its name recognition in Eastern Massachusetts. It therefore sought to enjoin People's United from rebranding its newly acquired Butler branches -- and any other branches that it might procure in Eastern Massachusetts -- with the People's United name, logo or other PEOPLES-formative marks, pending adjudication of the parties' rights in the instant suit.
At an emergency hearing convened on July 16, 2010, People's United informed the district court that the rebranding of the former Butler branches had already occurred and had been in place for the past three months. Regardless, it agreed to refrain from taking further action, i.e., make any additional changes to branch facades or marketing or advertising materials, in the immediate future. People's United explained that the July 19 date must have been based on a misunderstanding because People's United had no plans to execute any further rebranding on that date. Once [3] satisfied that the status quo would be maintained, the district court scheduled a status conference and motion hearing for July 29, 2010. At the motion hearing, the court announced its preliminary *6 findings and invited argument from the parties. On August 9, 2010, after considering the parties' written submissions and oral arguments, the district court issued a memorandum and order denying Peoples Federal's motion.
1. Denial of Preliminary Injunctive Relief
In assessing Peoples Federal's motion, the district court
weighed the four preliminary injunction factors: (1) the
plaintiff's likelihood of success on the merits, (2) the likelihood
of irreparable harm, (3) the balance of relevant equities, and (4)
the effect of the court's action on the public interest. See Voice
of the Arab World, Inc. v. MDTV Med. News Now, Inc.,
As to likelihood of success on the merits, the district court first rejected Peoples Federal's argument that its PEOPLES mark was entitled to a presumption of protectability, i.e., inherent distinctiveness, based on its six Massachusetts trademark [4]
registrations. Peoples Fed. Sav. Bank,
registration "substantially outdates Peoples Federal's recent, litigation-driven registrations." Id.
The court nevertheless considered whether, independent of its Massachusetts registrations, the PEOPLES mark was inherently distinctive. It concluded that the PEOPLES mark is properly classified as "descriptive" rather than "suggestive" because it did not require a stretch of the imagination to associate the term "People" with banking services. Id. at 223. In reaching this [6]
*8
conclusion, which the district court characterized as "a close
call," it distinguished another district court opinion, Commerce
Bank & Trust Co. v. TD Banknorth, Inc., 554 F. Supp. 2d 77 (D.
Mass. 2008), in which the word "Commerce" was found to be
suggestive in the banking context. The Commerce Bank & Trust Co.
court had found that, unlike "Commerce," words such as "Community,"
"National," and "Mutual" are "descriptive of a specific
characteristic" of a banking institution. Id. at 84. Similarly,
the district court in this case concluded that "the term 'Peoples'
is a straightforward way to describe a bank as 'people-oriented.'"
Peoples Fed. Sav. Bank,
Having found the mark to be descriptive, the district
court then determined whether the same had acquired secondary
meaning sufficient to entitle it to protection. The court looked
at the bank's advertising budget, the nature and extent of its
promotion efforts, and evidence of the bank's growth, per this
"upon an affirmative showing of secondary meaning." Borinquen
Biscuit Corp.,
district court found that, although Peoples Federal had demonstrated that its mark had acquired secondary meaning within the neighborhoods where it has branches, it had not done so beyond those areas. Specifically, although it had developed plans to open branches in Suffolk, Middlesex, and Norfolk counties, Peoples Federal had not shown that a substantial portion of the consuming public in those areas recognized the PEOPLES mark. Its advertising efforts and community involvement, though significant, were found to be highly localized within the Boston city limits and nearby urban areas. Therefore, the district court concluded that Peoples Federal's mark was enforceable, but only "within Allston/Brighton, Brookline, Jamaica Plain, Norwood and West Roxbury . . . [and] not throughout all of Eastern Massachusetts, or even the rest of Middlesex, Suffolk and Norfolk counties." Id. at 224.
The district court then evaluated whether People's
United's alleged infringing use was likely to result in consumer
confusion. In finding against Peoples Federal on this point, the
court carefully weighed the eight likelihood-of-confusion factors
established in Pignons S.A. de Mecanique de Precision v. Polaroid
*10
Corp. (Pignons),
although the banks' marks contain the same dominant word, important
differences between the marks, including additional essential words
(such as "Federal" and "United") and visual differences in their
logos "undoubtedly help customers distinguish between the two
banks, thus decreasing the chance of confusion." Peoples Fed. Sav.
Bank,
Although the district court considered the similarity of the services and found that this factor weighed in favor of Peoples Federal, it also weighed the parties' differing views on whether the two banks market to the same kinds of retail and commercial consumers. It noted that while Peoples Federal emphasizes its identity as a small neighborhood bank, People's United is a large, regional bank with numerous branches throughout New England. As to the similarity of their advertising, channels of trade and prospective customers, the court also determined that because banking customers "ordinarily gather information before choosing a bank and make their decision based on substantive factors (other *11 than a bank's name)," the likelihood of confusion on those grounds was minimal, "particularly because the banks [in this case] do not operate branches in the same neighborhoods." Id. at 226. Therefore, the balance of these three factors tipped slightly in favor of People's United.
The district court then considered two instances of alleged confusion cited by Peoples Federal in support of its motion, both of which stemmed from a Boston Globe article that discussed a merger between People's United and River Bank, an entity that operates branches in Essex County. Evidence was presented that Thomas Leecht ("Leecht"), President and CEO of Peoples Federal, was asked on two separate occasions whether Peoples Federal (as opposed to People's United) was acquiring River Bank. The district court stated that neither of the reported [8]
incidents involved confusion among current or prospective customers, which indicated "a paucity of evidence of actual consumer confusion." Id. Nonetheless, it found that because [9]
[8]
Leecht stated in an affidavit that several days after the Boston
Globe article appeared, a fellow rotary club member asked him
whether Peoples Federal was purchasing River Bank. Leecht also
reported that, during a sales pitch, a billboard vendor indicated
that he had thought Peoples Federal was acquiring River Bank, but
that he may have been confusing Peoples Federal with another bank.
Peoples Fed. Sav. Bank,
*12 People's United entered Eastern Massachusetts only a few months prior, the lack of proof of actual confusion was less salient, and concluded that the scarcity of such evidence was not in itself dispositive of Peoples Federal's claim.
It next determined that Peoples Federal presented no compelling evidence that People's United acted in bad faith by adopting the mark "People's United Bank", and that -- to the contrary -- it had used the word "People's" in its name for decades, asserting that "its decision to change its name from 'Peoples Bank' [sic] to 'Peoples United Bank' [sic] aimed to avoid, rather than create, confusion in the market place." Id. It [10] further found credible People's United's contention that the rebranding of the acquired Butler branches was consistent with standard practice in FDIC-assisted acquisitions. The court perceived "no intent by Peoples [sic] United to get a free ride off the good will of plaintiff's mark or to confuse prospective customers," thus the intent factor weighed in People's United's favor. Id. at 227.
Finally, the district court considered the strength of the marks. Per its discussion regarding the lack of inherent their paychecks at the new branches.
[10] Throughout its opinion, the district court referred to People's United as "Peoples United." Here we have used the phrasing of the bank's name in the possessive form, as reflected in the parties' briefs and the record on appeal.
distinctiveness of Peoples Federal's mark, the court noted that "the conceptual strength of the PEOPLES mark is belied by the fact that 159 banks elsewhere around the country use that mark and many coexist in the same market areas." Id. Although the PEOPLES mark had developed secondary meaning in the specific neighborhoods in which Peoples Federal operates, the court found the term to be a common one in the banking industry as a whole. Thus, the mark's lack of inherent conceptual strength tilted this factor in favor of People's United. The district court concluded that the balance of the Pignons factors -- particularly the dissimilarity between the parties' logos, consumers' tendency to perform research before selecting a bank, the absence of bad faith, and the scarcity of evidence of actual confusion -- weighed against a finding of likelihood of consumer confusion. The court additionally noted that
at least at this stage of the proceedings, [Peoples Federal] has not adequately demonstrated that it is likely to succeed on the merits of its trademark claim. If, however, evidence is elicited that 1) [People's United] is deliberately encroaching into the specific neighborhoods in which [Peoples Federal] operates and/or promotes itself as "Peoples" (rather than "People's United") in an effort to divert [Peoples Federal's] customer base and 2) [People's United's] actions have caused actual confusion among [Peoples Federal's] clientele, the [c]ourt would entertain a renewed motion for injunctive relief.
Id.
*14 The district court concluded its analysis by considering the other three preliminary injunction factors. It found that, because Peoples Federal had failed to make a showing of likelihood of consumer confusion, it was not at risk of continuing irreparable harm. Its finding that whatever harm incurred thus far was neither imminent nor irreparable was buttressed by the fact that People's United had been using its name to operate former Butler branches for more than three months with scant evidence of consumer confusion or Peoples Federal's awareness until June of 2010. The court concluded that, because Peoples Federal had failed to show both likelihood of confusion and irreparable harm, the balance of the equities and the analysis of the public interest weighed against providing injunctive relief.
This interlocutory appeal ensued.
II. Discussion
Peoples Federal challenges the district court's denial of a preliminary injunction on multiple grounds. The main thrust of its appeal is that the court imposed an impermissibly high standard for establishing a likelihood of success on the merits by improperly weighing the eight Pignons factors for likelihood of consumer confusion. As will be discussed below, we hold that the district court acted within its discretion when it denied injunctive relief based on its appraisal of the evidence and an accurate application of our case law.
A. Preliminary Injunction Standard
"A preliminary injunction is an extraordinary and drastic
remedy that is never awarded as of right." Voice of the Arab
World, Inc.,
*16
The district court's conclusions regarding these factors
and its determinations as to their relative weight deserve
considerable deference on appeal. Id. at 116. Accordingly, the
grant or denial of a preliminary injunction is reviewed for abuse
of discretion. United States v. Weikert,
We turn now to Peoples Federal's challenges on appeal, all of which center on the first factor in the preliminary injunction analysis: likelihood of success on the merits. B. Likelihood of Success on the Merits
In order for a party to succeed on a claim of trademark
infringement, it must demonstrate that (1) its mark merits
protection and (2) the allegedly infringing use is likely to result
in consumer confusion. Borinquen Biscuit Corp.,
As conveyed by the district court, we have enumerated eight factors to guide the inquiry into likelihood of confusion:
[1] the similarity of the marks; [2] the similarity of the goods; [3] the relationship between the parties' channels of trade; [4] the relationship between the parties' advertising; [5] the classes of prospective purchasers; [6] evidence of actual confusion; [7] the defendant's intent in adopting its mark; [8] and the strength of the plaintiff's mark.
Pignons, 657 F.2d at 487; accord Astra Pharm. Prods., Inc. v.
Beckman Instruments, Inc.,
The court below applied this eight-factor test and concluded that, on the whole, the evidence weighed against a finding that People's United's use of the PEOPLES mark was likely to cause consumer confusion. Peoples Federal attacks the district court's determination on various grounds, all of which we find unpersuasive. We consider each in the order presented to us on appeal.
1. Actual Confusion and the Defendant's Intent We first evaluate Peoples Federal's related arguments as to the sixth and seventh factors in the Pignons analysis: evidence of actual confusion and the defendant's intent in adopting the PEOPLES mark.
a. Actual Confusion
Peoples Federal argues that the district court erred by
requiring proof of actual confusion. It posits that, "[w]hile
evidence of actual confusion is 'often deemed the best evidence of
possible future confusion,' proof of actual confusion is not
essential to finding likelihood of confusion." Id. (quoting
Attrezzi, LLC v. Maytag Corp.,
Peoples Federal's argument is a red herring. It is patently clear from a balanced reading of the district court's *20 opinion that it only considered confusion regarding current or prospective buyers as one in a series of factors. Indeed, after noting that evidence of actual confusion was limited in this case, the court went on to state that "the scarcity of such evidence [was] not in itself dispositive of plaintiff's claim," Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 226 (citing to relevant case law), and acknowledged that People's United had entered Eastern Massachusetts only a few months prior. The district court then continued to weigh the remaining Pignons factors before reaching its determination.
While it is true that evidence of actual confusion is not
a prerequisite for a finding of likelihood of confusion, courts may
still weigh evidence presented on this factor as part of their
balanced analysis. See, e.g., Beacon Mut. Ins. Co.,
*21
b. People's United's Intent in Adopting the Mark
Peoples Federal argues that the district court erred by
requiring evidence of deliberate encroachment (or bad intent) to
divert Peoples Federal's customers. It points out that "[e]vidence
of bad intent, . . . while potentially probative of likelihood of
confusion, is simply not required in a trademark infringement case;
moreover, 'a finding of good faith is no answer if likelihood of
confusion is otherwise established.'" Star Fin. Servs., Inc. v.
AASTAR Mortg. Corp., 89 F.3d 5, 11 (1st Cir. 1996) (quoting
President & Trs. of Colby Coll. v. Colby Coll.-N.H.,
Putting aside the fact that the referenced poll used loaded
questions to require predictions as to a litigation that is not
related to the present case, thus undercutting its accuracy and
relevance, we do not think the district court committed error, let
alone clear error, by not referencing this poll in its opinion
because its findings were adequately supported by other evidence.
This "proof" of potential confusion is not strong enough that we
would set aside the lower court's finding as clear error for
failure to consider the same. Cf. Boston Athletic Ass'n v.
Sullivan,
required" for a finding of trademark infringement, the defendant's
intent in adopting the mark is an appropriate consideration in the
court's assessment of whether the public is likely to be confused
about the actual source of the goods or services at issue. See,
e.g., Boston Duck Tours, LP,
c. Application of a "Heightened" Standard for Likelihood of Confusion
Peoples Federal contends that the district court erred by requiring proof of actual confusion, actual loss of business, and bad intent, thereby applying an improperly high standard for likelihood of success on the merits. Peoples Federal points to the district court's statement at the end of its likelihood of success analysis to support its position. The district court indicated that "at least at this stage of the proceedings, the plaintiff ha[d] not adequately demonstrated it [would be] likely to succeed on the merits of its trademark claim." Peoples Fed. Sav. Bank, 750 F. Supp. 2d at 227. In particular, the district court stated it *23 "would entertain a renewed motion for injunctive relief" if evidence was elicited of (1) deliberate encroachment into specific neighborhoods where Peoples Federal operates and of (2) People's United's actions having caused actual confusion among Peoples Federal's clientele. Id. Peoples Federal argues this language confirms that the district court required more than a mere likelihood of confusion, and that it found against the grant of a preliminary injunction because Peoples Federal failed to present proof of these two factors. We are not persuaded.
Peoples Federal reads more into the district court's words than is warranted. The district court's findings as to likelihood of confusion were supported by the record before it, which included scant evidence of actual confusion, a proper consideration of People's United's intent in adopting the mark, and a thorough analysis of six other factors. These additional expressions were only an attempt to clarify to the parties the court's willingness to consider future motions for injunctive relief if it were given a more developed record.
We also reject Peoples Federal's related contention that the district court applied an improperly high standard as to likelihood of confusion because it indicated that in a trademark infringement case the plaintiff carries "a considerable burden" to show "not just a 'possibility of confusion' but rather a 'substantial likelihood of confusion.'" Id. at 224 (emphasis *24 added) (quoting Bear Republic Brewing Co. v. Cent. City Brewing Co., 716 F. Supp. 2d 134, 140 (D. Mass. 2010)). The district court's consideration of the actual confusion factor did not amount to a requirement "to prove an iron-clad, sure-bet likelihood of confusion," as characterized by Peoples Federal. The district court accurately framed the plaintiff's burden, see, e.g., Star Fin. Servs., Inc., 89 F.3d at 10 ("We require evidence of a substantial likelihood of confusion -- not a mere possibility . . .") (internal quotation marks omitted), and -- after an appraisal of Peoples Federal's slim proffer of evidence -- determined, in its discretion, that the proffered evidence was insufficient to support a finding of likelihood of confusion.
2. Similarity of the Marks
Peoples Federal argues that the district court erred by engaging in a side-by-side comparison of the banks' respective logos, and that it gave too little weight to the use by both banks of the same dominant word in its similarity-of-the-marks analysis. However, as Peoples Federal recognizes, "[s]imilarity is determined on the basis of the total effect of the designation, rather than a comparison of the individual features." Volkswagenwerk, 814 F.2d at 817 (quoting Pignons, 657 F.2d at 467). Accordingly, the district court took a holistic approach in assessing the parties' marks, considering their "sight, sound and meaning," and finding important differences. Peoples Fed. Sav. Bank, 750 F. Supp. 2d at *25 225 (quoting Boustany v. Boston Dental Grp., Inc., 42 F. Supp. 2d 100, 107 (D. Mass. 1999)). Specifically, the district court noted that People's United's mark contains the equally prominent word "United" and that its logo uses a red and blue color scheme, as well as a red orbit icon that encircles both the words "People's" and "United." Id. Meanwhile, Peoples Federal uses a green color scheme, with a yellow horizontal line separating the word "Peoples" from "Federal Savings Bank." Id. The district court concluded
that "[a]lthough the banks' marks contain the same dominant word, the visual differences in their logos neutralize[d] this factor." Id.
Contrary to Peoples Federal's contentions, the court's
conclusion is supported by our case law. See Int'l Ass'n of
Machinists, 103 F.3d at 204 ("otherwise similar marks are not
likely to be confused if they are used in conjunction with clearly
displayed names, logos or other source-identifying designations");
Pignons,
*26
assessment of the appellant's strength-of-the-marks arguments
infra, the district court did not commit error in determining that
the word "Peoples" was descriptive, rather than suggestive, and
that determination cuts in favor of its finding against Peoples
Federal on the similarity factor. See, e.g., Boston Duck Tours,
LP, 531 F.3d at 29 (finding "Boston Duck Tours" and "Super Duck
Tours" dissimilar despite both parties' use of same dominant word;
emphasizing that "[e]ven if elements of each party's mark overlap,
or are visually similar, the marks as a whole may still create a
distinct commercial impression, especially if the similarities are
limited to generic or descriptive elements"); see also First Sav.
Bank, F.S.B. v. First Bank Sys., Inc.,
scant. The record reflects that most instances of curtailment occurred within contextual marketing materials where phrases such as "It's Possible at People's" were used in conjunction with the respective bank's full name and logo.
We also reject the argument that a special rule should apply in
cases involving banks where a dominant word is alleged to cause
confusion. Peoples Federal provides no legal support for this
proposition; it merely cites district court decisions involving
banks where the facts supported a finding of likelihood of
confusion. People's United found just as many cases involving
banks that reached the opposite outcome. The question is one of
fact, Borinquen Biscuit Corp.,
3. Similarity of the Services
Peoples Federal contends that because the district court
found that "[t]he parties offer essentially identical retail and
commercial banking services," and this factor weighed in favor of
People's United, Peoples Fed. Sav. Bank,
4. Relationship Between the Parties' Advertising and Channels of Trade, and the Classes of Prospective Customers
After considering these three interrelated factors
together, see Beacon Mut. Ins. Co.,
In addition, contrary to the appellant's contention, the
district court's conclusion that customers would not likely be
confused between the banks because banking customers "ordinarily
gather information before choosing a bank and make their decision
based on substantive factors (other than a bank's name)," Peoples
*29
Fed. Sav. Bank, 750 F. Supp. 2d at 226, is supported by expert
testimony on the record, and Peoples Federal fails to articulate
how this conclusion constitutes either a legal or a factual error.
Our Circuit's precedent indicates that "any meaningful inquiry into
the likelihood of confusion necessarily must replicate the
circumstances in which the ordinary consumer actually confronts (or
probably will confront) the conflicting mark." Int'l Ass'n of
Machinists,
5. Strength of the Marks
Peoples Federal argues that the district court erred by not enjoining People's United's use of the PEOPLES mark within the trade area when it concluded that the mark had acquired secondary meaning. Alternatively, Peoples Federal contends the court erred by classifying the PEOPLES mark as descriptive rather than suggestive, and by not ascribing inherent distinctiveness to the mark by virtue of Peoples Federal's trademark registrations.
First, the fact that the district court found the mark to
be protectable in a particular trade area (i.e., within
Allston/Brighton, Brookline, Jamaica Plain, Norwood and West
Roxbury) does not itself entitle Peoples Federal to a preliminary
*31
injunction, particularly when it has not been able to prove a
likelihood of confusion, Borinquen Biscuit Corp.,
Peoples Federal suggests that, in reaching its conclusion
that the mark lacked inherent conceptual strength, the district
court improperly relied on uses of the PEOPLES-formative mark which
were outside of the relevant trade area. We hold that the district
court did not commit legal error on this ground. As a threshold
matter, the court found that "159 banks elsewhere around the
country use [the PEOPLES mark] and many coexist in the same market
areas." Peoples Fed. Sav. Bank,
Furthermore, in assessing the strength of the plaintiff's
mark, the district court may analyze both its conceptual and
commercial strength. Boston Duck Tours, LP,
Accordingly, the district court here concluded that the mark was
descriptive, in part because it was frequently used in the banking
industry as a whole. See Peoples Fed. Sav. Bank, 750 F. Supp. 2d
at 227 ("Although the PEOPLES mark has developed a secondary
meaning in the specific neighborhoods [where] Peoples Federal
operates, the term is a common one in the banking industry as a
whole."). This is not an improper consideration in a
distinctiveness analysis. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 11:69 (4th ed. 2011)
[hereinafter, McCarthy] ("If others are in fact using the term to
describe their goods or services, an inference of descriptiveness
can be drawn . . . . 'If [a word or syllable] has been frequently
*33
[used in similar merchandise], the inference is warranted that it
is not purely arbitrary; that it would be likely to be understood
by purchasers as identifying or describing the merchandise itself,
rather than the source thereof and hence as having little or no
trademark significance.'" (quoting Shoe Corp. of Am. v. Juvenile
Shoe Corp.,
Finally, Peoples Federal argues that the district court failed to give proper presumptive weight to its six Massachusetts trademark registrations. See Mass. Gen. Laws ch. 110H, § 5(b) (registration of a mark in Massachusetts is, "when introduced in any action, prima facie evidence of the registrant's exclusive right to use the registered mark in [the] commonwealth on goods or services specified in the registration"). Peoples Federal argues that this statutory provision shifted the burden to the accused infringer (here, People's United) to prove descriptiveness. See 3 McCarthy § 22:1 (where state law indicates registration is prima facie evidence of ownership and validity of the mark, "[t]he burden is on the challenger to rebut the presumption of validity"). However, even if such a presumption applies in these circumstances (a matter on which we take no view), a fair reading of the record supports the district court's finding that there was sufficient evidence to rebut such a presumption. Principally, the fact that another Massachusetts bank (PeoplesBank) had already registered a mark that includes the dominant word "Peoples," and which *34 "substantially outdates" Peoples Federal's registrations, directly controverts the proposition that the registration is valid. This, in addition to other evidence that belied Peoples Federal's contention of senior usage, i.e., prior use of the PEOPLES mark by other banks in the area, supported the district court's determination. There was therefore no clear error in the court's assessment that the state registration was not presumptively valid and, hence, that the mark was not inherently distinctive.
III. Conclusion
We find that the district court did not err in its assessment of the record; nor did it misapprehend applicable legal principals or otherwise abuse its discretion. Because its determinations as to likelihood of success on the merits were correctly reached, we reject Peoples Federal's alternative argument that the district court's erroneous findings on the first preliminary injunction factor improperly colored its conclusions as to the other three.
For the foregoing reasons, we affirm the district court's denial of preliminary injunctive relief.
Affirmed .
Notes
[1] As used in this opinion, the term "Eastern Massachusetts" will refer to the counties of Suffolk, Norfolk, Middlesex, Plymouth, Barnstable, Bristol, Dukes, Nantucket, Essex, and Worcester east of the City of Worcester. This definition was provided by Peoples Federal in its briefing to the Court and used by the district court in reaching its determination.
[2] People's United refutes this contention, asserting that at least four different banks that have names containing the word "People" have operated branches in the eastern part of the state during the same time period.
[3] Peoples Federal alleges it first learned that People's United was moving into its trade area in April of 2010, when People's United acquired Butler. However, it claims that it was not until June of that year when it learned, through announcements in the media, that instead of operating these banks under their previous names, People's United was planning to convert all of its New England branches to the "People's United" brand. It made this averment, despite the fact that actual rebranding of the Butler branches had occurred in mid-April, immediately after acquisition.
[4] In order for a mark to be eligible for trademark protection, it must qualify as distinctive, Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006), meaning that "[the mark] is capable of functioning as a source-identifier of goods." Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008).
[5] On this point, the district court referenced an ongoing
trademark dispute between PeoplesBank and the same defendant-
appellee in this case, People's United. People's United Bank v.
PeoplesBank, No. 08-cv-01858 (Dist. Conn. filed Dec. 8, 2008).
PeoplesBank seeks to enjoin People's United from using its name in
certain parts of Western Massachusetts. The district court denied
preliminary injunctive relief in that case after a six-day
evidentiary hearing, finding that PeoplesBank had failed to
demonstrate a likelihood of consumer confusion. See 2010 WL
2521069 (D. Conn. June 17, 2010), aff'd,
[6] In assessing a mark's distinctiveness, proposed marks are
categorized along a spectrum as "(1) generic (least distinctive),
(2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful
(most distinctive)." Boston Duck Tours, LP,
[7] In Pignons, we stated that when determining whether a putative
infringer's use of a mark is likely to cause consumer confusion, a
court should examine the following factors: "the similarity of the
marks; the similarity of the goods; the relationship between the
parties' channels of trade; the relationship between the parties'
advertising; the classes of prospective purchasers; evidence of
actual confusion; the defendant's intent in adopting its mark; and
the strength of the plaintiff's mark."
[9] In doing so, the district court distinguished the present case
from the facts in Commerce Bank & Trust Co.,
[11] We recently noted that this Court has in the past employed a
presumption that irreparable harm can be assumed "if a trademark
holder demonstrates a likelihood of success in establishing
infringement." Mercado-Salinas v. Bart Enters. Int'l, Ltd., No.
10-2359,
[12] Notably, the only other evidence presented by Peoples Federal in support of a finding that actual confusion weighed in its favor was an online poll conducted by "Banker & Tradesman" related to the litigation between PeoplesBank and People's United. The poll was conducted over the course of a week and purportedly resulted in
[13] On this ground we must reject the related contention by Peoples Federal that the district court abused its discretion or otherwise committed clear error because it did not give greater weight to its own finding that the banks' marks were "often abbreviated" to simply "Peoples". Evidence of name abbreviation by both banks was