Court Denies Wells Fargo’s Motion for Preliminary Injunction in Trademark Case

On March 8, 2013, United States District Court Judge Phyllis Hamilton entered an Order Denying the Motion for Preliminary Injunction filed by Wells Fargo Bank against BartkoZankel client, The ABD Team.  The case concerns Wells Fargo’s claim that the ABD Team is infringing the ABD trademark that Wells Fargo acquired when it merged the former ABD Insurance and Financial Services, Inc. into its Wells Fargo Insurance Services subsidiary.  The ABD Team asserts that Wells Fargo abandoned the ABD trademark in 2009, when it failed to renew its federal trademarks to the term ABD, instructed its employees to no longer use the ABD name, and thereafter stopped using the name.  The ABD Team started using the ABD name in July 2012.

In a detailed decision, the Court held “that Wells Fargo did not keep its trademark registrations current with regard to the ‘ABD’ mark,” and demonstrated “a clear intent to stop using the ‘ABD’ mark.”  Judge Hamilton found that “to the extent that Wells Fargo continued to use the ABD name …, such uses were either residual … or in the context of a historical background.”  Finally, the Court held that Wells Fargo failed to establish the requisite consumer confusion or any “lost business as the result of defendants’ alleged trademark infringement.”  In sum, the Order found that “defendants have made sufficient showing of a likelihood of success on the merits of their abandonment claim to preclude a finding that Wells Fargo is likely to succeed” on its claims.

Ben Riley, Kerry Duffy, Jayne Laiprasert and Zaneta Butscher, along with co-counsel Katy Basile, are defending the ABD Team. View a PDF copy of the Court’s Order and a report from the San Francisco Business Times may be accessed here.