Trade names and trade marks can be among a company’s most valuable assets, and lawsuits to protect them are not uncommon. To name a few highly recognized trade names and marks, think of General Electric, Coca Cola (with its specially shaped bottle and nick name “Coke”), Ford, and Kodak. Even relatively small companies may find themselves enmeshed in litigation involving these issues.
To determine whether a company’s image is infringed upon can be difficult since the issue deals often with aesthetic considerations, and the line where infringement begins is often blurred. So it was that MetLife recently sought to enjoin a New York Bank, MetBank, from using the name and logo it had adopted. The 2nd U.S. Circuit Court (
A 1961 case, Polaroid Corp. v. Polarad Electronics Corp. created an eight-point test to assist courts in making a determination. The points to be considered in a dispute between a prior user and a new user are:
(1) the strength of the prior user’s mark (how long has it been used, how widely disseminated has it been, etc.);
(2) the degree of similarity between the two marks;
(3) the amount of actual confusion the new user’s mark has created;
(4) the good faith, or lack of it, of the new user (did he intentionally make the mark similar?);
(5) the similarity of the companies’ products;
(6) the quality of the new user’s products;
(7) the sophistication of the buyers of both companies’ products; and
(8) the timeliness of the prior user’s legal action.
The last of these may be the most important; if the prior user has become aware of the similar trade name or mark, and has “slept” on his rights (i.e., has waited until the new user has built an effective business identified with its allegedly similar logo before taking action) the prior user may be barred by the equitable doctrine of laches (undue delay).
In the MetLife case, both logos were blue (slightly different shades); both used sans serif fonts (i.e., letters which do not have those little lines at the top or bottom; the fonts in this article do have serifs); both names contained seven letters with the fourth letter capitalized without a space after the third letter; both companies provided banking services; MetBank attempted to open a bank only a few steps from the MetLife Tower in Manhattan with its huge logo on its side; and a survey by MetLife indicated that 38% of those polled thought the two companies were related. The trial judge found that “the two marks leave an overall impression that is strikingly similar” and could be confusing to the public; and he concluded that the people at MetBank must have been aware of the possible infringement, that the similarities were more than coincidental, and therefore that they acted in bad faith.
The value of a good name is not something limited to large, national firms. It can be just as important on a local basis. Since states will not permit the formation of a corporation (or other entity) which has a name which is deceptively similar to another, there is some protection in a corporate name (though it may be limited to the state of incorporation). Another device widely used is the registration of fictitious names used by individuals, corporations, and other entities. A fictitious name registration does not give the user any guarantee of exclusivity; but at a modest cost it does put the world on notice that the name is being used, and it can protect the user in his trading area (which will vary depending on the nature of the business). Of course, a formal, federal registration with its broader protection is available to those who feel that the nature and scope of their businesses warrant it.
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