Citizens Financial Group, Inc v. Citizens National Bank of Evans City

REPORTED - NOT PRECEDENTIAL
IN THE UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
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No. 01-3776
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CITIZENS FINANCIAL GROUP, INC.
v.
CITIZENS NATIONAL BANK OF EVANS CITY; CITIZENS INC;
CITIZENS NATIONAL BANK OF SOUTHERN PENNSYLVANIA
Citizens National Bank of Eva
Citizens, Inc.,
Appellants
___________
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
(D.C. Civil No. 01-cv 1524)
District Judge: The Honorable Donetta W. Ambrose
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ARGUED JANUARY 25, 2002
BEFORE: NYGAARD and STAPLETON, Circuit Judges,
and SLEET, District Judge.
(Filed February 25, 2002)
Timothy P. Ryan, Esq (Argued)
Eckert, Seamans, Cherin & Mellott
600 Grant Street
44th Floor
Pittsburgh, PA 15219
Ray F. Middleman, Esq.
Malone, Larchuk & Middleman
Northridge Office Plaza
117 VIP Drive, Suite 310
Wexford, PA 15090
Counsel for Appellants
Paul F. Ware, Jr., Esq. (Argued)
Goodwin Procter
Exchange Place
Boston, MA 02109
Patrick R. Kingsley, Esq.
Stradley, Ronon, Stevens & Young
2600 One Commerce Square

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Philadelphia, PA 19103
Counsel for Appellee
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MEMORANDUM OPINION OF THE COURT
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NYGAARD, Circuit Judge.
Citizens National Bank of Evans City and Citizens, Inc. ("CNBEC") appeal
from the District Court’s denial of their request for a preliminary injunction enjoining
Citizens Financial Group, Inc. ("CFG") from using any name or mark incorporating the
word "CITIZENS" in four counties in Western Pennsylvania. CNBEC raises numerous
issues on appeal, each of which challenges the District Court’s determination that
CNBEC was unlikely to prevail on the merits of its infringement claims and unfair
competition. It asks us to reverse this determination, and conclude that a preliminary
injunction would have been appropriate. We will affirm.
I.
Because we write solely for the parties, and they are as familiar with the
facts as is the court, we need not set forth a detailed recitation of them and will limit our
discussion to those necessary to a resolution of the issues presented on appeal.
CNBEC began operations in 1893 and adopted the name "Citizens National
Bank of Evans City" in 1907. It currently has 16 branches in three counties in Western
Pennsylvania. CFG began operations in 1871 and currently has 300 branches along the
east coast. In 2001, CFG acquired in excess of 300 branches formerly owned by Mellon
Bank, some of which are located in Pennsylvania. CFG planned to rename its new
Pennsylvania branches "Citizens Bank of Pennsylvania."
In response to this plan, CNBEC sent a "cease and desist" letter to CFG
requesting that CFG not use any name that included the word "CITIZENS" in reference to
its Western Pennsylvania banks. CFG responded to this letter by filing suit in the
Western District of Pennsylvania seeking a declaratory judgment that CNBEC could not
prevent it from using the word "CITIZENS." CNBEC’s answer to CFG’s complaint
contained affirmative defenses and a counterclaim alleging trademark infringement and
unfair competition under 43(a) of the Lanham Act, 15 U.S.C. 1125(a). CNBEC then
filed a motion for preliminary injunction.
II.
"[T]he ultimate decision to grant or deny the preliminary injunction is
reviewed for ’abuse of discretion.’" Brian B. v. Pennsylvania Dept. of Educ., 230 F.3d
582, 585 (3d Cir. 2000). "Unless the trial court abuses [its] discretion, commits an
obvious error in applying the law or makes a serious mistake in considering the proof, the
appellate court must take the judgment of the trial court as presumptively correct." Cont’l
Group, Inc. v. Amoco Chems. Corp., 614 F.2d 351, 357 (3d Cir. 1980) (quoting A.O.
Smith Corp. v. FTC, 530 F.2d 515, 525 (3d Cir. 1976)).
To prevail on a request for preliminary injunction, the moving party must
establish that: (1) its is likely to succeed on the merits of its underlying claim; (2) it wil
be irreparably harmed without the injunction; (3) the irreparable harm to itself outweighs
the harm to the non-moving party; and; (4) the public interest will be served by the
granting of the injunction. Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d
187, 191-92 (3d Cir. 1990).
Section 43(a) of the Lanham Act prohibits the use of a mark that "is likely
to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to origin, sponsorship, or approval
of his or her goods, services, or commercial activities." 15 U.S.C. 1125(a).
In determining the amount of protection, if any, a given mark receives,
courts engage in a two-part inquiry. Courts first classify the mark along a distinctiveness
spectrum, then analyze the mark’s "commercial strength." A & H Sportswear, Inc. v.
Victoria’s Secret Stores, Inc., 237 F.3d 198, 221 (3d. Cir 2000). Under the first part of
the test, marks are classified along a scale beginning with generic (which receives no
protection), through descriptive (which requires proof that the mark has acquired "second

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meaning"), on to suggestive (which implies something about the product or service), and
then arbitrary or fanciful (which receives the most protection). Checkpoint Sys., Inc. v.
Checkpoint Software Techs., 269 F.3d 270, 282 (3d Cir. 2001). The District Court found
the term "CITIZENS" to be suggestive, but nonetheless found that "the mark is inherently
weak, regardless of its categorization as a descriptive or suggestive mark" and thus not to
warrant protection.
After finding that "CITIZENS" was not a valid and protectable mark for
trademark purposes, the District Court engaged in the second prong of Lanham Act
analysis: whether CFG’s use of "CITIZENS" would likely result in confusion. A
determination of the likelihood of confusion of marks requires the balancing of ten factors
set out in Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228-9 (3d Cir.
1978); Interspace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983). In applying
these Lapp factors, the District Court found, among other things, that: 1) the strength of
the word "CITIZENS" as a mark is very weak; 2) although sharing the word
"CITIZENS," the marks of CNBEC and CFG are not very similar; 3) there was no
evidence that CFG intended to cause confusion by using "CITIZENS," and; 4) the
evidence of actual confusion offered by CNBEC was not significant in light of the
volume of CNBEC’s business. Considering these facts, the court concluded that the
majority of the Lapp factors favored CFG and therefore that CNBEC had not established
a likelihood of confusion. Thus, the District Court concluded that CNBEC was unlikely
to succeed on the merits of its Lanham Act claim and denied its request for a preliminary
injunction.
The District Court appears to be of the view that, although CNBEC has
shown its mark to be suggestive, it is entitled to no protection because CNBEC has failed
to prove its mark has acquired secondary meaning. To the extent the District Court so
concluded, we agree with CNBEC that it committed an error of law. We have pointed out
that a suggestive mark is entitled to protection without proof of secondary meaning.
A&H Sportswear, 237 F.3d at 222. The error is harmless, however, because it is apparent
that the District Court would have permissibly denied a preliminary injunction in any
event because of an absence of a showing of likelihood of confusion. With respect to the
District Court’s analysis of the likelihood of confusion issue, we see no error in the
court’s findings of fact, nor any abuse of discretion in its conclusions. In particular, we
note our agreement with the District Court that it is permissible to distinguish marks on
the basis of portions of the mark that are generic. See A&H Sportswear, 237 F.3d at 218.
CONCLUSION
In summary, the District Court’s denial of CNBEC’s request for a
preliminary injunction on the grounds that it was unlikely to succeed on the merits of its
Lanham Act claim was fully supported by properly found facts, and its conclusions were
well within its considerable discretion. We will affirm.
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TO THE CLERK:
Please file the foregoing opinion.
/s/ Richard L. Nygaard
Circuit Judge

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