Consumer Studies Linking the Mark to a Source:
For reasons already discussed above, the Court does not find Trustco's survey to be helpful in determining whether its use of "Home Town Bank" has achieved secondary meaning.
Unsolicited Media Coverage:
Trustco submitted several newspaper articles, unsolicited by Trustco, which link Trustco with the phrase "Home Town Bank." Terry Aff. Ex. C. However, most of the articles, which include news stories, editorials, and letters to the editor, describe actions taken by Trustco that appear to contradict its claim to be a "Home Town Bank."
Unsolicited media coverage was considered in Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946 (2d Cir. 1981), to determine whether a romance novel cover format had acquired secondary meaning. The unsolicited media coverage in that case described the enthusiasm and loyalty shown by Harlequin's readers, not Harlequin's use of a particular cover format. See also Scarves by Vera, Inc. v. Todo Imports Ltd. (Inc.), 544 F.2d 1167, 1174 (2d Cir. 1976) (Court considered newspaper articles that indicated a recognition of plaintiff as a designer of a particular product). The articles submitted by Trustco do not indicate a recognition of Trustco as the provider of the type of services one would expect from a "Home Town Bank", nor that Trustco has engendered much enthusiasm or loyalty from its customers -- quite the opposite.
Without explaining the connection, Trustco alleges that it has enjoyed "considerable commercial success" since it began using "Home Town Bank."
Attempts to Plagiarize the Mark:
This factor is also referred to as "copying of the mark." GFN's slogan, "The Original Hometown Bank," is obviously similar to Trustco's mark, and Trustco urges the Court to accept this similarity as evidence of copying.
In Centaur Communications, the Second Circuit looked at whether the defendant, publisher of "ADWEEK's Marketing Week," had intentionally copied the name of the plaintiff's publication, "Marketing Week." The Court found that it did, but based its finding on the defendant's failure to provide a credible explanation for the change in the name of its magazine that did not involve copying. 830 F.2d at 1224.
Here, defendant GFN has offered a credible explanation for using "The Original Hometown Bank" slogan in its advertisements. GFN serviced the Glens Falls area long before Trustco. GFN believed the phrase "hometown bank" to be non-protectable and used it in a manner not likely to engender confusion among potential customers.
Length and Exclusivity of the Mark's Use:
From the record before it, the Court finds that Trustco has used "Home Town Bank," in some form, longer and more extensively than GFN. When Trustco was still going by the name Schenectady Trust, the slogan it used in its advertising was "The Capital Region's Home Town Bank" (usually preceded by "Trust in Us"). Terry Reply Aff. Ex. A. Trustco lists 424 forms or bank documents upon which its full mark, "Trustco Bank, Your Home Town Bank," appears. Terry Aff. P 4. Further, before GFN used "Hometown Bank," Trustco's reference to itself as the "Home Town Bank" appears to have been unique in the Schenectady, Albany, and Glens Falls banking markets. See Terry Aff. P 7.
Nonetheless, after considering all of the above evidence together and weighing it carefully, the Court finds that the phrase "Home Town Bank" by itself has not acquired the secondary meaning necessary to enjoin GFN's use of that phrase in its own slogan. See generally McCarthy on Trademarks, Chapter 15. Thus, Trustco is not likely to succeed on the merits of its infringement claim under the Lanham Act or its dilution claim under New York law.
B. Sufficiently Serious Question Going to the Merits that Makes It a Fair Ground for Litigation and a Balance of Hardships Tipping Decidedly Toward the Party Requesting Relief
The Court assumes, for the purposes of this motion, that a serious question has been presented that goes to the merits of this dispute and makes it a fair ground for litigation. The plaintiff argues that the balance of the hardships that would result from the Court's denial of the plaintiff's motion for a preliminary injunction tip in favor of the plaintiff.
Plaintiff's general allegations of hardship include customer confusion, dilution of its service mark, and harm to its goodwill and reputation. Mainly, however, the plaintiff points to the fact that GFN agreed to stop using "The Original Hometown Bank" pending this Court's decision, and argues that the ease with which GFN could stop using the mark, as opposed to the difficulty Trustco would have in doing so, is evidence of the balance of hardships tipping in Trustco's favor. If not allowed to use its mark in Warren and Washington counties, Trustco argues, it would have to change all of the forms and documents that say "Trustco Bank, Your Home Town Bank." This argument, though, seems disingenuous. Denial of Trustco's motion will not prevent it from using its service mark; it may still continue to use its mark as it previously did.
On the other side of the equation, however, the Court finds that GFN would suffer hardship if it were enjoined from using the phrase "hometown bank" to describe the atmosphere it has been attempting to provide to its customers since long before Trustco had branches in the area. Balancing the hardships that would be suffered by either party, the Court finds that the balance of hardships does not tip decidedly toward the plaintiff.
WHEREFORE, based on the findings above, it is hereby
ORDERED that plaintiff's motion for a preliminary injunction is DENIED.
HON. FREDERICK J. SCULLIN, JR.
U.S. District Judge
Dated: November 3, 1995
Syracuse, New York