First National Bank in Sioux Falls v. First National Bank South Dakota, No. 11-1568, 11-1683, 2012 WL 1887125 (8th Cir. May 25, 2010)
In 1997, FNB Sioux Falls sued FNB South Dakota for infringement of its unregistered mark of its FNB name. At the time, the district court permanently enjoined FNB South Dakota from using the terms “First National,” “First National Bank,” and “First National Bank Sioux Falls within a 10-mile radius of Sioux Falls. After the court entered an injunction, FNB Sioux Falls federally registered its marks. In 2005, FNB South Dakota applied to open a new state branch just two blocks from the main office of FNB Sioux Falls in Sioux Falls, and began to use marketing materials that visually highlighted the terms “First National” and “First National Bank” and minimized the “South Dakota” portion of its name. FNB Sioux Falls then filed a second suit alleging trademark infringement under both the Lanham Act and common law. After an initial decision and reconsideration, the district court permanently enjoined FNB South Dakota from using its full legal name under any circumstances within an 18-mile radius of Sioux Falls.
On appeal, the parties posed several issues to the Eighth Circuit. Notably, the court decided that res judicata did not apply because the new case contained facts not included in the prior action. Specifically, the fact that FNB South Dakota opened its new location only a few blocks away from FNB Sioux Falls’ principal office had led several customers to believe that the site was simply a new drive-through window for FNB Sioux Falls. The court also decided that a “confusion log” that FNB Sioux Falls had established to record possible incidents of confusion was not admissible as double hearsay. In addition, the court found that all of the evidence considered by the court was permissible in light of the likelihood of confusion test.
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