United States District Court, S.D. New York
June 22, 2005.
METLIFE, INC., a Delaware Corporation, METROPOLITAN LIFE INSURANCE COMPANY, a New York Corporation, Plaintiffs,
METROPOLITAN NATIONAL BANK, a New York Corporation, Defendant.
The opinion of the court was delivered by: P. KEVIN CASTEL, District Judge
MEMORANDUM AND ORDER
Plaintiffs MetLife, Inc. and the Metropolitan Life Insurance
Company ("MLI") move for a preliminary injunction to enjoin the
defendant Metropolitan National Bank ("MNB") from utilizing a
logo that utilizes the name "MetBank." Since 1968, MLI has
utilized a "MetLife" logo consisting of seven letters with the
first and fourth letters capitalized, in a thick, block,
sans-serif font with the individual letters printed in the color
blue. In 2004, MNB adopted a logo that contains "Met" and "Bank",
a total of seven letters with the first and fourth letters
capitalized, in a thick, block, sans-serif font, with the letters
printed in the color blue. MLI moves to enjoin MNB from using the
MetBank logo at MNB's street-level, retail banking office, which
is scheduled to open for business on July 1, 2005. (June 13 Tr.
at 5-6, 16, 18) MNB's retail banking site will be located at 99
Park Avenue in midtown Manhattan, in close proximity to the
MetLife Building, which is located at 200 Park Avenue. On June 13, 2005, I held a hearing on plaintiffs' motion for a
preliminary injunction. Testifying at the hearing were Beth
Hirschhorn, vice president and chief marketing officer of MLI;
Philip Johnson, an expert retained by MLI who conducted a survey
on consumer confusion; Mark R. DeFazio, president and chief
executive officer of MNB; and George Mantis, an expert retained
by MNB who critiqued Johnson's expert report.
Having heard the testimony and reviewed the parties'
submissions, I conclude that the plaintiffs have established a
probability of success on the merits and irreparable harm. Their
motion for a preliminary injunction is granted.
Plaintiffs filed this action on April 20, 2005, alleging
trademark infringement and unfair competition pursuant to
Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(a) and
1125(a), and trademark dilution under New York General Business
Law § 360. MLI alleges that it has broad proprietary rights in a
family of "Met" marks, and the Complaint seeks a permanent
injunction against the use of the the "Met" prefix by MNB. The
motion for a preliminary injunction seeks relief that is
considerably narrower in scope: an injunction against the use by
MNB of a particular form of the "MetBank" logo at a street-level
office located at 99 Park Avenue.
According to DeFazio, MNB commenced operations on June 22,
1999. It was granted a national banking charter under the name
Metropolitan National Bank. From inception, MNB used the
shortened name "MetBank" with no space between the prefix "Met"
and the word "Bank" with a capitalized first letter. Between 1999
and mid-2001, MNB's business focused on commercial real estate
loans and middle-market commercial loans. (DeFazio Dec. ¶ 7) MNB also sold certificates
of deposit through its office and over an internet web site.
(DeFazio Dec. ¶ 8) In addition, DeFazio states, MNB offered "more
traditional methods of obtaining deposits," including checking
accounts and savings accounts. (DeFazio Dec. ¶ 9) DeFazio states
that by the end of 2004, MNB's website was processing
approximately 7,000 transactions per month. (DeFazio Dec. ¶ 9)
MNB also operates a subsidiary, CashZone Check Cashing
Corporation ("CashZone"). (DeFazio Dec. ¶ 10) According to
DeFazio, CashZone permits persons without traditional bank
relationships to cash checks, wire funds, access ATM machines,
and engage in other banking services. (DeFazio Dec. ¶ 10) Signs
at CashZone locations identify the business as part of MNB by
displaying the MetBank logo. (DeFazio Dec. ¶ 11; Exs. C, D)
MNB's MetBank Marks
A brief history of MNB's use of the MetBank mark is helpful to
understanding the plaintiffs' contention that a MNB logo adopted
in 2004 infringes plaintiffs' marks. MNB obtained two service
mark registrations with the United States Patent and Trademark
Office ("PTO") for use in banking services. (Werbin Dec. Exs. E,
F) The first of the two applications registered a mark using the
MetBank name for use in banking services, and was filed on or
about January 25, 2001. (Werbin Dec. ¶ 4; Ex. A) The design is in
black text, with the lettering in a small-caps style, such that
the logo reads METBANK. (Werbin Dec. ¶ 4; Ex. A) The font
includes prominent serifs in the lettering, which give a
block-like and angular appearance. (Werbin Dec. ¶ 4; Ex. A)
Perched atop the letters "E" and "T" is a drawing of an eagle,
which is heavily textured and made to appear somewhat three-dimensional. (Werbin Dec. ¶ 4;
Ex. A) At oral argument, MNB's counsel characterized the overall
appearance of this prior logo as looking "very official," and the
previous eagle image as "the old sort of stodgy eagle sitting on
top of the mark design logo." (Tr. at 14-15)
In response to MNB's application, the PTO sent a non-final
Office Action dated June 5, 2001, stating that the design was
"likely to cause confusion" with registrations owned by the
plaintiffs in the marks Met, Met P&C and Met Investment Services.
(Werbin Dec. ¶ 7; Ex. A) In October 2001, MNB contacted the
plaintiffs to discuss whether plaintiffs would formally consent
to MNB's application to the PTO for use of the MetBank mark.
(Werbin Dec. ¶¶ 8-11) According to MNB's general counsel, MLI's
response was "non-committal." (Werbin Dec. ¶ 12) Meanwhile, MNB
drafted a response to the PTO's Office Action, which it submitted
on December 5, 2001. (Werbin Dec. ¶ 14) The PTO accepted MNB's
response, and approved its trademark application for publication.
(Werbin Dec. ¶ 16) No opposition was filed, and the PTO granted
MNB's registration on September 10, 2002. (Werbin Dec. ¶ 16)
On January 9, 2003, MNB filed a second application with the PTO
to register the mark "MetBank," with no design element. (Werbin
Dec. ¶ 17) MNB designated the mark for use in connection with
"banking services." (Werbin Dec. ¶ 17) The PTO did not pursue any
Office Action and no opposition was filed when the mark was
published. (Werbin Dec. ¶ 18) The PTO granted registration in the
mark on October 28, 2003. (Werbin Dec. ¶ 18)
In 2003 and 2004, MNB decided that its then-existing MetBank
logo should be redesigned. Stephen McAllister is the creative
director and chief executive officer of Design Matters, Inc! ("DMI"), a graphic design company
that assists enterprises in developing advertising and marketing
materials. (McAllister Dec. ¶ 1) MNB has engaged DMI since 2000.
(McAllister Dec. ¶ 3) In 2003, McAllister approached MNB about
launching an overall redesign of MNB's branding. McAllister
describes his goals as follows:
While working on the [MNB] annual report for 2003, I
approached [MNB] with a concept for changing the
company's identity, developing brand architecture and
contemporizing the overall look of its
communications, which at the time were outdated and
mismatched. The Bank agreed to my proposal, and I
proceeded to redesign all of [MNB's] then existing
corporate communications materials everything from
the company's stationary to its logo design to its
(McAllister Dec. ¶ 4) Ultimately, McAllister proposed a
redesigned logo that featured the word "MetBank." (McAllister
Dec. ¶ 5) The text is in blue, utilizing a sans-serif font.
(McAllister Dec. ¶ 5) Instead of the heavily textured eagle image
perched atop the letters "E" and "T," the redesigned logo
featured a line drawing of an eagle, placed to the right of the
term "MetBank." (McAllister Dec. ¶ 5) McAllister states:
I developed this updated identity because I believed
it was a cleaner, more contemporary design that would
be perceived by consumers as being more inviting and
less institutional than the prior identity, which I
had no role in creating. At the same time, the new
identity preserved the key aspects of the company's
prior branding, notably the METBANK ® trademark, the
capitalized and enlarged "M" and "B" and the eagle
(McAllister Dec. ¶ 5) McAllister declares under penalty of
perjury that his design was not influenced by any of the
plaintiffs' designs or logos. (McAllister Dec. ¶ 6) DeFazio
ultimately approved McAllister's design. (June 13 Tr. at 105) MNB
has filed an application to register this logo with the PTO,
which MLI is opposing. (June 13 Tr. at 112) On December 31, 2004, MNB announced that it would open a
street-level, retail branch, to be located at 99 Park Avenue.
(DeFazio Dec. ¶ 23) MNB had been operating out of the fourth
floor of that same building since 2003. (DeFazio Dec. ¶¶ 232-4)
DeFazio states that the street-level space will make MNB's
services more accessible to its customers. (DeFazio Dec. ¶ 23)
MLI's MetLife and related Marks
MLI was organized in the 19th Century as a life insurance
company. In 2004, MLI provided more than $39 billion in financial
services. (Hirschhorn Dec. ¶ 6) MLI has registered numerous
trademarks with the PTO that utilize "Met" as a prefix. According
to the plaintiffs' counsel, MLI first used the "Met Life" mark in
1968 as a single-word abbreviation for "Metropolitan Life." (June
13 Tr. at 7) Sometime in the 1980s, MLI went from using a
two-word "Met Life" mark to its current, single-word MetLife
mark. (June 13 Tr. at 7) MLI did not register "METLIFE" as a mark
until 1989. (Hirschhorn Dec. ¶ 3) In addition to the MetLife
name, MLI's registered trademarks, including MetPay, "Get Met. It
Pays.", Met-Review, Met-Elect, and numerous other similar terms.
(Hirschhorn Dec. ¶ 3) According to Ms. Hirschhorn, MLI's overall
branding scheme focuses on widespread consumer recognition of the
MetLife mark, as well as the prefix "Met." (Hirschhorn Dec. ¶ 3)
MLI expends more than $100 million annually to promote its
MetLife brand, which includes advertisements on television, in
print, and on aerial blimps that appear at major public events.
(June 13 Tr. at 40-41)
Occasionally, as illustrated by an exhibit at the June 13
hearing, MLI varies its use of the mark, as they did in a blimp
using the mark "Met life," with the two words separated and
"life" written entirely in lowercase. (June 13 Tr. at 7-8) Since 1997, the MetLife logo has often appeared in the font Futura,
though it previously appeared in the Helvetica font, and at times
still does. (June 13 Tr. at 38-39) Both Helvetica and Futura are
sans-serif fonts, although Futura is somewhat bolder in
appearance. From 1985 to 2001, MLI marketed itself under the
slogan, "Get Met. It Pays." (June 13 Tr. at 40-41) It now uses
the slogan, "have you met life today?" (June 13 Tr. at 41) The
current MetLife logo often appears in a color called Pantone PMS
285 MetLife blue. (June 13 Tr. at 39) MLI has marketed itself
using such a shade of blue since the 1960s. (Hirschhorn Aff. Ex.
1, at "MetLife Brand Evolution")
Preliminary Injunction Standards in a Lanham Act Action
The Lanham Act makes it unlawful for any person, in connection
with goods, services, or containers for goods, to use in commerce
"any word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin . . . which . . . is
likely to cause confusion . . . as to the origin, sponsorship, or
approval" of the goods, services, or commercial activity.
15 U.S.C. § 1125(a)(1). "A defendant will be held to have infringed
on a protected mark if `numerous ordinary prudent purchasers are
likely to be misled or confused as to the source of the product
in question because of the entrance in the marketplace of
defendant's mark.'" Patsy's Brand, Inc. v. I.O.B. Realty, Inc.,
317 F.3d 209, 217 (2d Cir. 2003) (quoting Arrow Fastener Co. v.
Stanley Works, 59 F.3d 384, 3909-1 (2d Cir. 1995)).
In order to obtain a preliminary injunction the plaintiffs must
show (a) irreparable harm and (b) either (1) likelihood of
success on the merits or (2) sufficiently serious questions going
to the merits to make them a fair ground for litigation and a
balance of hardships tipping decidedly in favor of the party
seeking preliminary relief. See, e.g., Brooks v. Giuliani, 84 F.3d 1454, 1462 (2d Cir.
1996); Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc.,
596 F.2d 70, 72 (2d Cir. 1979). Irreparable injury may be presumed based
upon a plaintiff's showing of likelihood of success on a
trademark infringement claim. Federal Express Corp. v. Federal
Espresso, Inc., 201 F.3d 168, 174 (2d Cir. 2000).
Application of the Polaroid Factors to MLI's Claim of Consumer
In evaluating a trademark infringement claim, a court considers
evidence of consumer confusion in light of eight factors set
forth in Polaroid Corp. v. Polarad Electronics Corp.,
287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961). Those
factors are: (1) strength of the plaintiff's mark, (2) similarity
of plaintiff's and defendant's marks, (3) competitive proximity
of the products, (4) likelihood that a plaintiff will "bridge the
gap" and offer a product of the type that the defendants offer,
(5) actual confusion, (6) good faith on the defendant's part, (7)
quality of defendant's product, and (8) sophistication of the
buyers. Id. The Polaroid factors must be considered in the
context of how each factor supports or undermines the ultimate
issue of whether a consumer will be confused by the disputed
marks. Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,
799 F.2d 867, 872 (2d Cir. 1986).
I address each factor in turn.
A. Strength of Plaintiff's Mark
"The strength of a mark refers to its distinctiveness, that is
to say, the mark's ability to identify goods sold under it as
coming from one particular source." Streetwise Maps, Inc. v.
VanDam, Inc., 159 F.3d 739, 743 (2d Cir. 1998). "Ultimately, the
strength of the mark turns on its origin-indicating quality, in
the eyes of the purchasing public, so that in a given case whether the mark has acquired secondary
meaning is a matter which may be relevant and probative and hence
useful in determining the likelihood of confusion." Lang v.
Retirement Living Publishing Co., 949 F.2d 576, 581 (2d Cir.
1991) (internal quotation marks omitted). Distinctive lettering
may render a mark strong, even if the overall mark is otherwise
descriptive. Patsy's Brand, 317 F.3d at 217. In evaluating the
lettering, a court may consider size, shape, color combinations,
texture, and graphics. Id.
Inasmuch as it pertains to the blue, sans-serif logo heavily
utilized in its promotional materials, MLI's MetLife trademark is
strong. The MetLife mark is both inherently distinctive and
distinct in the marketplace.
The MetLife logo often appears in a recognizable blue coloring.
At the hearing, Hirschhorn described the color as "Pantone PMS
295 MetLife blue." (June 13 Tr. at 39) The words MetLife appear
in the font Futura, modified slightly by MLI to establish "kind
of a bold look."*fn1 (Tr. at 38-39) It is a sans-serif font
that includes a sloping "M" and rounded lettering on the two e's.
(Hirschhorn Dec. ¶ 8) In addition, the MetLife logo is presented
as a single word, making it more distinctive than would be the
case if the two terms were separated, with the "Met" abbreviation
of "Metropolitan" used as a descriptor of the word "Life."
MLI aggressively markets its MetLife logo. (June 13 Tr. at
40-41) It spent more than $109 million in brand advertising and
direct marketing in 2003. (Hirschhorn Dec. ¶ 4) In 2004, MLI
spent $111 million to market the MetLife brand. (Hischhorn Dec. ¶
4) Hirschhorn estimates that MLI has spent over a billion dollars
on marketing in the past 15 years, and asserts that the MetLife brand is "well
recognized and consumers attach tremendous goodwill to our
trademarks." (June 13 Tr. at 41; Hischhorn Dec. ¶ 4) According to
Hirschhorn, a study conducted by MLI showed 96% consumer
awareness for MetLife, which she says is "one of the highest of
any brand in the world." (Hirschhorn Reply Dec. ¶ 9) The MetLife
Building, located at 200 Park Avenue in Manhattan, is adorned
with the lettering "MetLife" near the top of the structure. I
take judicial notice of the fact that the building's logo is
visible throughout much of Manhattan, and evidence introduced at
the hearing shows that the building's logo also is visible within
close proximity to the MetBank office.
In light of the foregoing, I conclude that MLI has a strong
mark in its MetLife logo.
B. Similarities of the Marks
The MetBank logo and the MetLife logo are highly similar. Both
utilize sans-serif fonts, with text printed in blue. "In
assessing similarity, courts look to the overall impression
created by the logos and the context in which they are found and
consider the totality of factors that could cause confusion among
prospective purchasers." Gruner Jahr U.S.A. Publishing v.
Meredith Corp., 991 F.2d 1072, 1078 (2d Cir. 1993). Typefaces
are relevant considerations when evaluating marks' similarities.
Lang, 949 F.2d at 582. MNB contends that the darker shade of
blue on its logo and small variations in the fonts warrant my
concluding that the marks lack similarity.
True, the MetBank logo appears in a shade of blue deeper than
the MetLife logo. (McAllister Dec. ¶ 9) Nevertheless, the
difference in shade is not so notable that a consumer or passerby
would readily differentiate between MetBank's blue and MetLife's blue. While the shade of MNB's blue is slightly darker, it is not
so dark as, for example, the color navy blue. I credit Ms.
Hirschhorn's testimony in which she described how the MLI and MNB
shades of blue are listed in close proximity to each other in the
Pantone directory, which she asserted is a commonly used
sourcebook of colors employed in print advertising. (June 13 Tr.
In addition, as MNB points out, the sans-serif fonts used by
the plaintiffs' and defendant's logos are not identical.
(McAllister Dec. ¶ 8) The MetLife logo's Futura font results in
letters that are visibly thicker than the same letters in the
MetBank logo. (McAllister Dec. ¶ 8) In addition, the "e" letters
in MetLife are more rounded than the letters in the MetBank logo,
and the "t" contained in the MetBank logo includes a rounded,
hook-like base, whereas the "t" in MetLife is more angular,
resulting in lettering "resembling a cross." (McAllister Dec. ¶
McAllister asserts that these differences, while not "terribly
significant" in isolation, create distinct impressions when
assessed in their totality. (McAllister Dec. ¶ 9) I disagree. Ms.
Hirschhorn described the MetBank font as being from the "same
family of fonts" as the MetLife logo's Futura font. (June 13 Tr.
at 52) The distinctions between the lettering of the MetLife logo
and that of the MetBank logo are such that their distinctions
become clear only after careful, side-by-side comparison and
consideration. Indeed, Ms. Hirschhorn points out that the version
of the MetLife logo atop the MetLife building utilizes the
Helvetica font in which the "t" has a curved base akin to the "t"
in MNB's logo. (June 13 Tr. at 60-61) From the appearance and
overall impression, I conclude that a consumer of banking
services standing in front of the Park Avenue branch of MNB would not readily distinguish between MNB's blue logo and MLI's
blue logo, except to note that one contains "Bank" and the other
There are additional bases for concluding that the two marks
are similar. Both marks are seven letters in length, with the
first and fourth letters capitalized. Combined with the
similarity of fonts and usage of blue lettering, the two marks
leave an overall impression that is strikingly similar. While, as
Mr. McAllister notes, it may be common for companies such as
JetBlue and ConAgra to adopt such composite marks, the similarity
here derives in large part from the common prefix "Met," coupled
with a similar color and font style, followed by a four-letter
word. Moreover, as noted by plaintiffs at the June 13 hearing,
both logos utilize a sloping, slightly angular "M" in which the
letter's base is wider than its top. (June 13 Tr. at 53) These
"M's" contrast with the style of MNB's previous logo, where the
"M" contained no sloping angle. (McAllister Aff. ¶ 5)
MNB's prior logo employed a figure of an eagle atop the
lettering. It was a realistic image and conveyed a
three-dimensional impression. In the new blue-font logo, a
black-and-white, line-drawn eagle has been placed to the side of
the text and has been redrawn to be less detailed, less
realistic, and to have a more open interior. MNB argues that the
eagle is a significant distinguishing characteristic between the
two marks. The simple black-and-white eagle design has some
design characteristics not unlike the black-and-white Snoopy
cartoon character often included in MLI advertisements in
proximity to MLI's blue logo. The Snoopy character has appeared
in MetLife ads since 1985, often appearing adjacent to the
MetLife logo. (June 13 Tr. at 48; Hirschhorn Reply Dec. Ex. 2;
Hirschhorn Dec. Ex. 2) A reasonably observant consumer looking at
the drawings of the two creatures would never mistake the MNB
eagle for Snoopy. But I do reject MNB's argument that the overall similarity of the two marks is
substantially lessened by the placement of the black-and-white,
line-drawn eagle to the right of the blue text.
I conclude that MNB's mark is similar to MLI's mark, thus
supporting a finding of likely consumer confusion.
C. Proximity of products and services
In considering the proximity of the products, a court examines
the extent to which the products compete with one another, and
how this competition may lead to consumer confusion. See
Brennan's, Inc. v. Brennan's Restaurant LLC, 360 F.3d 125, 134
(2d Cir. 2004); Lang, 949 F.2d at 582. Competitive proximity
considers two elements: market proximity and geographic
proximity. Brennan's, 360 F.3d at 134.
It is indisputable that MLI and MNB each engage in retail
banking geared toward consumers. MLI has registered a trademark
for use of the mark MetLife Bank for the provision of banking
services, credit card services, mortgage lending, and retail
banking services. (Hirschhorn Dec. ¶¶ 3, 5(c)) Similarly, MNB has
a registered trademark in "METBANK" for use in banking services.
(Werbin Dec. Ex. F) MNB's line of business has included retail
banking and financial services since 1999, including checking
accounts, savings accounts, mortgage lending, and ATM services.
(DeFazio Dec. ¶¶ 2, 9) The market proximity of MNB and MLI was
indisputably high at the time that MNB adopted its revised
In addition, I note that there is close geographic proximity
between MNB's anticipated street-level branch and the MetLife
Building. As shown by evidence introduced at the June 13 hearing,
the prominent signage atop the MetLife Building is visible from
the street outside of MNB's branch location. Because MNB's branch
office is located in the shadow of a prominent Manhattan skyscraper
containing plaintiffs' logo, I find that the geographic proximity
of MLI and MNB is high.
D. Likelihood of bridging the gap
This factor requires the court to consider the likelihood that
the parties will engage in the same business at some point in the
future. Because both parties now engage in retail banking, I do
not consider this factor.
E. Evidence of actual confusion
Actual confusion need not be shown to prevail under the Lanham
Act; a plaintiff need only establish that there is a likelihood
of confusion as to a mark's source. Lois Sportswear,
799 F.2d at 875. A survey as to the potential consumer confusion may be
weighed when considering the likelihood of confusion. Mobil Oil
Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259 (2d Cir.
1987) (Lumbard, J.). Evidence of actual confusion weighs most
heavily once two marks have been in competition for a substantial
period of time. Lois Sportswear, 799 F.2d at 875. Here, MNB's
new logo has not been in wide use for an extended period of time.
MLI submits the declaration of Philip Johnson, the CEO of
Chicago-based market research firm, Leo J. Shapiro and
Associates, Inc. (Johnson Dec. ¶ 1) Johnson conducted a survey of
350 consumers in an effort to determine whether they were likely
to confuse the parties' marks; the questions were administered to
potential consumers of banking services in midtown Manhattan.
(Johnson Dec. ¶ 5-6) A test group was shown the blue "MetBank"
logo as photographed at the 99 Park Avenue location and a control
group was shown a similar blue logo with the name "MetroBank."
The images were identical in size, quality, and manner of
depiction. The interviewers did not mention the names Metropolitan Life or MetLife to either the test group or
the control group. The results of the survey were that 38% of the
test group believed that MetBank was owned, operated, associated
with, or sponsored by MLI. In contrast, only 4% of the control
group believed that "MetroBank" was owned, operated, associated
with or sponsored by MLI. Johnson considered the net difference
between the two groups of 34% to be significant. He concludes
that "there is a significant degree of likelihood of confusion
found in the marketplace such that consumers of retail banking
services in midtown Manhattan mistakenly believe that MetBank is
owned by MetLife, or is a related, sponsored, or associated
facility." (Johnson Dec. ¶ 25)*fn2
MLI also submits an affidavit from Robert Fitzgerald, an
insurance industry professional who states that he was confused
as to whether MetBank was owned by or affiliated with MetLife.
(Fitzgerald Dec. ¶¶ 1-4) Fitzgerald e-mailed an MLI employee as
follows: "Am I right that this is not an arm of MeLife [sic]? If
not they certainly push the idea with the large B in MetBank."
(Fitzgerald Dec. Ex. B)
In opposition, MNB submits the declaration of George Mantis, an
expert in consumer surveys, who has reviewed the Johnson survey.
In his declaration, Mantis asserts that MLI's study was premised
on deficient methods and flawed consumer sampling. For instance,
he contends that in order to be probative, a study of consumer
confusion must be based on the perceptions of likely purchasers
of the defendant's products or services, not just the public at
large. (Mantis Dec. ¶ 9) Mantis contends that it is essential to the validity of the study to restrict the
sample pool to prospective purchasers of bank services, a group
he would limit to those who do not have a satisfactory
pre-existing relationship with a bank. (Mantis Dec. ¶
10)*fn3 In assembling the pool of consumers, Mantis states,
Johnson failed to assemble a representative population because
the surveyed group tended to be younger than the U.S. Census data
would lead one to predict of a representative sample. (Mantis
Dec. ¶¶ 14-17) Lastly, Mantis contends that the Johnson Study was
stripped of marketplace and commercial context, leading to "a
word association test, not a test of confusion." (Mantis Dec. ¶
27) Notably, MNB did not offer evidence of any consumer study of
In evaluating the sampling methods employed by an expert, a
court should consider factors such as whether 1) the population
was properly chosen and defined, 2) the sample chosen was
representative of that population, 3) the gathered data was
accurately reported, and 4) the data was analyzed in a manner
consistent with accepted statistical principles. MANUAL FOR
COMPLEX LITIGATION (FOURTH) § 11.493 (2004). In addition, when
considering the validity of a survey, the court should consider
whether 1.) the survey questions were clear and not leading, 2.)
the survey was conducted by qualified persons, and 3.) the survey
was conducted in a manner that ensured objectivity. Id.
Nevertheless, even a flawed survey as to consumer confusion can
be "somewhat probative" as to the risk of actual confusion in the
post-sale context. Lois Sportswear, 799 F.2d at 875.
I have examined the instructions to the interviewers, the
screening criteria for inclusion of test participants, the
precise wording of the questions posed to the subjects, and the methodology in reporting and analyzing the
results. I have viewed the foregoing in light of the criticisms
of MNB's expert and the standards set forth in the Manual for
Complex Litigation. The universe of potential survey participants
was defined as those over the age of 18 who say they will
"definitely," "probably," or "maybe" bank in midtown Manhattan in
the next twelve months. Potential participants were selected at
random according to a counting formula. The interviewers were not
informed of the identity of the entity commissioning the study.
While Mantis claims that the survey underrepresented persons over
age 45 as measured by U.S. Census data, he offers no age data for
persons likely to conduct banking in midtown Manhattan, a
population likely to be skewed toward persons presently in the
workforce. The record before me shows the data was accurately
reported and analyzed in a manner consistent with accepted
principles. I conclude that the methodology has sufficient
validity to give the survey probative value. The Johnson survey
is evidence of consumer confusion.
Because MNB has not yet entered the marketplace, the issue of
actual confusion has limited bearing on my consideration of this
motion. Nevertheless, the Johnson study supports the conclusion
that there is a likelihood of consumer confusion.
F. Good Faith
Intentional bad-faith copying of a trademark establishes a
presumption that the copier succeeded in causing confusion.
Paddington Corp. v. Attiki Imports & Distributors, Inc.,
996 F.2d 577, 586-87 (2d Cir. 2003) (collecting cases). "Where such
prior knowledge is accompanied by similarities so strong that it
seems plain that deliberate copying has occurred, [the Second
Circuit has] upheld findings of bad faith." Id. at 587. The logo utilized by MNB at its retail banking facility is
strikingly similar to MLI's "MetLife" logo, such that, at the
preliminary injunction stage, a conclusion of bad faith is
appropriate. See Paddington Corp., 996 F.2d at 586-87;
American Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560,
562-63 (2d Cir. 1953) (evidence of highly similar mark supports
inference of bad-faith conduct) (L. Hand, J.). I credit the
testimony of Mr. DeFazio insofar as he stated that the MetLife
logo did not "come up in any way" during the redesign process.
(Tr. at 106) Nevertheless, the similarity between the parties'
marks is such that it strains credulity to believe that neither
MNB nor the firm it hired to redesign its logo were not
consciously influenced by the MetLife logo. This is particularly
true in light of the PTO's initial concerns about the similarity
between the first MetBank logo and the MetLife mark. See
Paddington Corp., 996 F.2d at 587 (actual or constructive
knowledge of the prior user's mark may indicate bad faith).
Having been placed on notice by the PTO that the initial MetBank
mark risked consumer confusion with MLI's marks, MNB nevertheless
proceeded to adopt a mark highly similar to the MetLife logo.
I find that there is circumstantial evidence of bad faith on
the part of MNB that lends further support to the grant of a
G. Quality of Services
"Generally, quality is weighed as a factor when there is an
allegation that a low quality product is taking unfair advantage
of the public good will earned by a well-established high quality
product." Gruner Jahr, 991 F.2d at 1079. The parties do not
address in significant detail the quality of the services
provided by MNB. MNB contends that its products and services are
in no way inferior to the plaintiffs', and the plaintiffs state that they do not know the quality of MNB's retail banking
products and services. Plaintiffs assert that to the extent that
MNB's services are comparable to their own, the likelihood of
confusion is heightened. See Morningside Group Ltd. v.
Morningside Capital Group, LLC, 182 F.3d 133, 142 (2d Cir. 1999)
(noting that comparable quality of service may heighten the
likelihood of consumer confusion).
Because the parties have failed to submit proof as to the
quality of their respective products and services, the evidence
does not favor either side on this issue.
H. Sophistication of Consumers
The sophistication of the intended consumer is a factor to be
considered in evaluating the likelihood of consumer confusion. A
higher degree of consumer sophistication decreases the risk of
consumer confusion. Courts have held that when the process of
purchasing a financial instrument or service entails several
steps and substantial funds, the buyer sophistication is
presumably higher. See Beneficial Corp. v. Beneficial Capital
Corp., 529 F. Supp. 445, 450 (S.D.N.Y. 1982). Nevertheless, the
financial services industry is not immune from the Lanham Act
because of the sophistication of its consumers. See Lexington
Mgt. Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271
(S.D.N.Y. 1998) (granting a preliminary injuction). The services
to be offered by MNB at 99 Park Avenue include a range of retail
financial services. These will likely call into play more
sophisticated scrutiny than, for example, the purchase of a
consumer good selling for under twenty dollars. But the level of
sophistication required for opening a bank account or purchasing
a certificate of deposit is moderate and does not approach that
of a business-to-business transaction. Based on the record before me, I conclude that the evidence of
the moderate level of sophistication of consumers of basic retail
banking services does not tip the scales one way or the other on
this final Polaroid factor.
MNB Has Not Established Priority as to the Disputed Logo
"The user who first appropriates the mark obtains an
enforceable right to exclude others from using it, as long as the
initial appropriation and use are accompanied by an intention to
continue exploiting the mark commercially." La Societe Anonymes
des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271
(2d Cir. 1974). If "two or more companies adopt the same mark,
basic rules of trademark priority determine use and ownership of
the mark." Buti v. Impressa Perosa, S.R.L., 935 F. Supp. 458,
468 (S.D.N.Y. 1996).
MNB contends that it possesses "prior and superior rights" as
to the use of the MetBank trademark. MNB began utilizing the mark
"MetBank" for banking services at a point in time when MLI was
precluded by federal law from offering banking services. See
Banking Act of 1933, Pub.L. No. 73-66, 48 Stat. 162 (the
"Glass-Steagall Act"). While it is true that MNB utilized an
earlier version MetBank mark black lettering with serifs and
the eagle atop the "e" and "t" before MLI began to offer retail
banking services, the plaintiffs made clear at the June 13
hearing that they are no longer seeking to preliminarily enjoin
Because the plaintiffs significantly narrowed the scope of this
motion at oral argument, and because the defendant's arguments
are not tailored to the use of the current blue, sans-serif
MetBank logo, the concept of priority does not present an
obstacle to the plaintiffs' motion. MNB's first trademark
registration was specific to its previous logo, which is not implicated in this motion. (Werblin
Dec. Ex. E) MNB's second trademark registration granted rights to
the mark "METBANK" for use in connection with banking services,
but contained no specific design elements such as color or font
and, indeed, does not address the use of lower case letters for
all but the first and fourth letters. (Werblin Dec. Ex. F) This
second registration does not provide priority for the blue,
sans-serif MNB logo that MLI contends infringes the MetLife mark.
MetLife's current logo has been in use since 1997, and varies
only slightly from the logo that dates back to 1968. "The
exclusive right to a distinctive mark belongs to the one who
first uses it in connection with a particular line of business."
Talk To Me Products, Inc. v. Larami Corp., 804 F. Supp. 555,
559 (S.D.N.Y. 1992) (citing McLean v. Fleming, 96 U.S. 245
(1877)). MLI's current MetLife logo predates MNB's trademark
registrations. I conclude that MNB does not have priority to the
blue, sans-serif logo at issue on this motion.
New York Trademark Dilution
In addition to the Lanham Act claims, plaintiffs also seek a
preliminary injunction on the basis of New York's law of
MNB argues that plaintiffs' dilution claim fails because MNB
has registered two trademarks for the MetBank mark as it pertains
to banking services. Pursuant to the Lanham Act, federal
registration of a trademark establishes a complete affirmative
defense to a state dilution claim. 15 U.S.C. § 1125(c)(3); 4
McCarthy on Trademarks § 24.82. In MLI's reply brief, plaintiffs
assert that they are seeking to enjoin use of MNB's "current
logo, which is not federally registered," and contend that the
affirmative defense is therefore invalid. (Reply Br. at 20)
Because this motion for a preliminary injunction hinges on MNB's use of the blue,
sans-serif unregistered logo, I conclude that the action is not
preempted by the Lanham Act.
Under New York law, "[d]ilution has been defined as either a
blurring of a mark's product identification or the tarnishment of
the affirmative associations a mark has come to convey. A
prerequisite to a finding of dilution is that the marks are
substantially similar." Savin Corp. v. Savin Group,
391 F.3d 439, 455 (2d Cir. 2004). A likelihood of confusion is not a
necessary prerequisite to establish trademark dilution. Allied
Maintenance Corp. v. Allied Mechanical Trades, Inc.,
42 N.Y.2d 538, 541-42 (1977). The Second Circuit also has observed that a
plaintiff must prove that its trademark has "a truly distinctive
quality or has acquired secondary meaning," and that predatory
intent may also be a significant consideration in finding a
violation. Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 42
(2d Cir. 1994).
As with the Lanham Act claim, I conclude that plaintiffs have
established a likelihood of success as to the blue, sans-serif
logo, and that their motion for a preliminary injunction should
be granted as to the use of that logo at MNB's 99 Park Avenue
branch office. As previously discussed, the coloring, font and
overall appearance are sufficiently distinct and the advertising
of the mark has been widespread such that the MetLife logo has
attained secondary meaning. MNB's opposition to the New York
dilution claim was based on a defense to MLI's broader assertion
that MNB is barred from using the "Met" prefix entirely, a
contention that I need not reach on this motion. Plainitiffs have
shown a likelihood of success on their New York anti-dilution
claim. MLI Did Not Unduly Delay Pursuing Injunctive Relief as to the
New MetBank Logo
MNB contends that injunctive relief should be denied because
MLI engaged in undue delay prior to commencing this litigation. I
conclude that the relatively modest delay by MLI does not
foreclose its claim for injunctive relief insofar as it seeks to
enjoin use of MNB's new blue "MetBank" logo at the planned
street-level retail branch.
A party's delay in bringing an infringement action is relevant
to considering injunctive relief against an alleged trademark
infringer. See Nabisco, Inc. v. PF Brands, Inc.,
191 F.3d 208, 222 (2d Cir. 1999) (overruled on other grounds, Moseley v.
V Secret Catalogue, Inc., 537 U.S. 418 (2003)). A "presumption
of irreparable harm is inoperative if the plaintiff has delayed
either in bringing suit or in moving for preliminary injunctive
relief." Tough Traveler, Ltd. v. Outbound Products,
60 F.3d 964, 968 (2d Cir. 1995).*fn4 Although the law of this
Circuit is not explicit as to which party bears the ultimate
burden of proof on the issue of delay, both parties agree that
the opposing party must first come forward with evidence of
delay, at which point the plaintiff must set forth a legally
sufficient explanation for the delay. See S.D. Markowitz
Jewelry Co. v. Chapal/Zenray, Inc., 988 F. Supp. 404, 406-08
(S.D.N.Y. 1997) (first observing that the plaintiff acted with
undue delay in seeking relief, then evaluating whether plaintiff
set forth a credible explanation for the delay). It is logical
that the movant should bear the ultimate burden of proof on the
absence of delay because it is on the movant's shoulders to prove
that it will suffer irreparable harm if no injunction is granted.
In this case, I hold MLI to that burden and conclude that it is has not unreasonably
delayed in seeking judicial relief.
MNB did not announce its plans to open a street-level retail
operation at 99 Park Avenue until December 31, 2004 (DeFazio Dec.
¶ 23), the eve of a holiday. Slightly more than 3½ months passed
between MNB's announcement and MLI's initiation of this
litigation. During that time, MLI investigated the likelihood of
consumer confusion, including the commission of the Johnson
study. There is no evidence that this passage of time amounted to
dilatory conduct on the plaintiffs' part, or that it was due to
anything more than an effort to investigate facts relevant to
this motion. See King v. Innovation Books, 976 F.2d 824, 831
(2d Cir. 1992) (eight-month delay between discovery of infringing
activity and lawsuit's initiation was explained by a need to
investigate underlying facts and negotiate with the alleged
Having found a likelihood of consumer confusion and that the
plaintiffs will suffer irreparable harm in the absence of an
injunction, I GRANT plaintiffs' motion for a preliminary
injunction. Pursuant to Rule 65, Fed.R.Civ.P., defendant
Metropolitan National Bank and those in active participation or
concert with it are hereby enjoined from exhibiting, displaying
or employing in any manner the term "MetBank" in a sans-serif
font in any shade of the color blue in or at a street-level
banking facility at 99 Park Avenue, New York, NY. Plaintiffs will
be required to post a bond in the amount of $200,000 by June 27,
2005. SO ORDERED.