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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


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 marketing brochures.
(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 imagery.
(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 Confusion

  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 ...

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