On October 10, 2007, First Niagara Insurance Brokers, Inc. (“FN Insurance”), located in Niagara Falls, Ontario, filed a lawsuit in the U.S. District Court in for the Southern District of New York against First Niagara Financial Group, Inc. (“FN Financial”). See First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Case 7:07-cv-08720 (SDNY). FN Insurance is seeking an injunction against FN Financial to stop the company from using the First Niagara name and also seeking $532 million in actual damages (pre-tax net revenues the bank has taken in since adopting the name in January 2000) and treble damages of $1.5 billion.
The trademark dispute has been on ongoing one for several years – with the two parties fighting over the First Niagara name in the U.S. Patent and Trademark Office for some time. When the decision was made back in January 2000 for Lockport Savings Bank to change its name to First Niagara Financial, FN Financial filed intent-to-use trademark registration applications right away on January 7, 2000, including FIRST NIAGARA, FIRST NIAGARA (and design), FIRST NIAGARA FINANCIAL GROUP (each application covering four classes of goods and services, including insurance services in Class 36)
In February 2001, FN Insurance instituted oppositions with the Trademark Trial and Appeal Board (“TTAB”) against FN Financial’s applications seeking to prevent registration on the grounds of Section 2(d) likelihood of confusion. See Opposition Nos. 91122072, 91122193, 91122224, 91122450, 91122712 and 91150237.
Meanwhile, on September 27, 2002, FN Insurance filed its own trademark applications, FIRST NIAGARA INSURANCE BROKERS and FIRST NIAGARA (both for insurance agency services), claiming use in commerce back to 1984. FN Financial filed its own opposition against FN Insurance’s application for FIRST NIAGARA INSURANCE BROKERS (Opposition No. 91163457, which was suspended pending the outcome of the other consolidated oppositions) while prosecution on FN Insurance’s other application was suspended.
On October 21, 2005, the TTAB, in a precedential decision, decided against FN Insurance finding that FN Insurance could not establish use of its marks for insurance brokerage services “regulable by Congress.” See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005) (decision here). In essence, because FN Insurance only offered its services in Canada, and not in the U.S., its use could not constitute use in commerce because Congress does not regulate use in commerce outside of its borders. The TTAB disregarded evidence of FN Insurance’s advertising efforts in the United States as use in commerce within the United States. Without such use, the TTAB found FN Insurance could not establish priority, could not make out a claim for Section 2(d) likelihood of confusion, and dismissed the oppositions.
However, that decision was reversed by the Court of Appeals for the Federal Circuit (“CAFC”) in its own precedential ruling holding that the TTAB had used the wrong standard in holding that use must be use “regulable by Congress.” First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Appeal No. 06-1202, 81 USPQ2d 1375 (Fed. Cir. Jan. 9, 2007). The CAFC, finding that FN Insurance had submitted sufficient evidence to demonstrate use of its mark in the United States to satisfy the requirements of Section 2(d), found that the TTAB had clearly erred in dismissing the oppositions and remanded the case back to the TTAB for further proceedings.
On remand, the TTAB sustained three of the oppositions in part and dismissed the oppositions in the other three cases. See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group, Inc. (TTAB June 6, 2007) (decision here). The Board found a likelihood of confusion between FN Insurance’s marks and three of FN Financial’s applications when used in conjunction with insurance services (class 36). The court did not find such a likelihood of confusion with respect to the other classes of goods in those three FN Financial’s applications nor with FN Financial’s other three trademark applications (which were directed only to banking services).
Both parties have appealed this recent TTAB decision to the CAFC. FN Insurance is apparently not satisfied that FN Financial will continue to use the name First Niagara in association with banking services (which FN Insurance maintains is closely related to insurance services). On the other side, FN Financial is apparently not satisfied that FN Insurance has shown sufficient use within the United States to establish Section 2(d) likelihood of confusion.
FN Insurance, however, appears to have gotten impatient with the wait and has decided to take much more drastic action. By going straight to District Court, FN Insurance can seek an injunction to stop FN Financial from using the name FN Insurance. Of course, given the fact that the two businesses have coexisted for some time, FN Insurance may be hard pressed to show that it now faces irreparable harm, much less a strong showing of likelihood of confusion to justify a presumption of irreparable harm in order to obtain a quick preliminary injunction against FN Financial. After all, the TTAB in its second decision found that so-called evidence of actual confusion (the 2600 misdirected e-mails) may have been more the result of confusion over the parties similar domain names and not from a confusion as to source. In addition, the emails were apparently addressed to specific individuals, and not general inquiries searching for insurance policies.
There is also some question of whether a presumption of irreparable harm should follow a finding of likelihood of confusion or whether the holding of the U.S. Supreme Court in eBay, Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (U.S. 2006), which involved an injunction in the area of patents, has set a new standard by which federal courts should abide in deciding whether to grant injunctions for trademark infringement. For an interesting article on this uncertainty, see “The Unsettled State of Preliminary Injunctions for Trademark Infringement,” Day Pitney LLP Alert (July 26, 2007) (link here).
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