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Oct. 6 — A “reverse confusion” trademark infringement case—in which a trademark user alleges that a better-known newer user of a similar mark creates the impression that the first user infringes—was resolved in favor of the newer user after the U.S. District Court for the Southern District of New York determined on Oct. 5 that confusion was unlikely. (Flushing Bank v. Green Dot Corp., S.D.N.Y., No. 1:13-cv-09120, 10/5/15).
The court found that two online banking trademarks—the first user's “iGObanking.com” and newer user's “GoBank”—were unlikely to be confused because the first mark was weak, and the marks on the whole were dissimilar.
Flushing Bank operated an online banking division, iGObanking.com, offering online checking, savings, deposits and debit cards, among other things. Flushing Bank registered trademarks for “iGObanking,” “iGObanking.com,” and a related logo in 2006.
Green Dot Corp., which offers prepaid debit cards through nearly 95,000 department and drug stores like Wal-Mart, CVS, and 7-Eleven, owns Green Dot Bank.
Green Dot adopted “GoBank” as a trademark for its online banking services in January 2013. While Green Dot was aware of Flushing's “iGO” marks at that time, the company's CEO said he believed the mark did not infringe because of stylistic differences with the “iGO” marks, and because third parties were using similar marks. Green Dot's “GoBank” mark and related logo were registered in June 2013.
Green Dot conducted an extensive advertising campaign for GoBank, purchasing banner advertisements on prominent news websites and product placements in 14 episodes of the reality television show, Project Runway. The court said that GoBank's advertising “saturated the market,” with at least tens of millions of consumers having been exposed to it.
Flushing has never used its “iGO” marks to a similar extent, arguing that Green Dot's more famous mark, therefore, may “lead consumers to view [Flushing] as an infringer.”
Flushing sued Green Dot for trademark infringement in the Southern District of New York in 2014. The court ruled for Green Dot, finding there was no likelihood of confusion based on a multi-factor test.
The court said that the “iGO” marks were “generic, or, at most, descriptive,” and therefore not entitled to strong trademark protection, which favored a finding for Green Dot.
The court also found that the marks were dissimilar: the overall impression of “iGObanking” was “one of action,” while “GoBank” gives “the impression of a location.” The court said the logos were also dissimilar, as the “iGO” logo focused on the “i” and “GO,” while the “GoBank” logo used an arrow within the word “GO” to draw the viewer's attention to the word “bank.”
The court also said that while the banks appeared to provide similar services at first glance, this factor was neutral because the customer bases for the banks were different—Flushing “tends towards more affluent customers,” while Green Dot tends toward those with lower incomes.
The court, therefore, found that, on the whole, the factors indicated that Green Dot didn't infringe Flushing's marks.
Judge Katherine B. Forrest wrote the opinion.
Flushing was represented by Cullen & Dykman LLP, Garden City, N.Y. Green Dot was represented by Adam David Siegartel of Proskauer Rose LLP, New York.
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