2 Florida Credit Unions In a War Over Brand Taglines (Courtesy of Credit Union Times) — Two Florida credit unions have been embroiled in a war of words over their individual taglines.
The $11.4 billion VyStar Credit Union in Jacksonville asked a federal judge to grant a declaratory judgement that would allow it to use a catchphrase, “Do Good. Bank Better.” VyStar filed its request in Jacksonville federal court after the $2.4 billion Achieva Credit Union in Dunedin submitted a notice of opposition with the U.S. Patent and Trademark Office (USPTO) to stop VyStar’s application to trademark its slogan.
However, the credit unions are apparently in negotiations to settle the months-long dispute, according to a court document filed by Achieva last week.
Achieva argued that VyStar’s tagline, “Do Good. Bank Better.” would create consumer confusion because it is similar to Achieva’s tagline, “Banking for Good,” a registered trademark.
According to court documents, Achieva’s lawyer, Megan E. Thomas of Birmingham, Ala., wrote VyStar two letters in March and April of this year explaining the reasoning behind Achieva’s consumer confusion claim.
A comparison of the appearance and sound of the two tagline reveals strong similarities, Thomas wrote in part, because of the “dominance of the shared words bank/banking and good.” Additionally, the “connotation and commercial impression are almost identical, and are only made more so by the fact that the services on VyStar’s application … are exactly the same as Achieva.”
“It is a well-accepted principal in trademark case law that the more closely the parties’ services are related in the mind of consumers, the more likely that consumer confusion will occur and the less similar the marks need to be to show confusion,” Thomas wrote. Achieva’s attorney said that the only possibility to avoid consumer confusion and dilution of Achieva’s federal trademark rights is for VyStar to withdraw its USPTO application to trademark “Do Good. Bank Better.”, and cancel any planned use of it.
VyStar contended the two taglines bear no similarity.
“The marks do not look the same, sound the same or mean the same things,” VyStar’s attorney, Richard S. Vermut in Jacksonville, wrote in a May 4 letter in response to Achieva. “VyStar will not withdraw its application. Should Achieva pursue an opposition as threatened in your letter, VyStar will defend its position and will file an action in the United States District Court for the Middle District of Florida seeking declarations there is no likelihood of confusion or dilution, and that Achieva’s marks are invalid or so weak that enforceability is limited to only third-party use of the identical phrase ‘Banking For Good.’”
He also noted that the USPTO examiner “correctly determined” that VyStar’s slogan is registrable, and that she “allowed the application over Achieva’s two registrations because there is no likelihood of confusion between them.”
By May 28, Achieva filed a “notice of opposition” with USPTO to VyStar’s application to trademark its tagline, which VyStar later answered to that objection. Court documents did not say whether USPTO issued a decision.
On Oct. 7, VyStar filed its lawsuit in federal court and asked for a declaratory judgement to use its tagline because it was under a “real and reasonable apprehension” that it will be sued for trademark infringement after its planned launch of a “Do Good. Bank Better.” campaign.
Although VyStar’s lawsuit was filed on Oct. 7, Achieva did not receive a copy of it until Nov. 17, according to court documents.
Nevertheless, VyStar’s “real and reasonable apprehension” did not stop it from launching its “Do Good. Bank Better.” campaign on Oct. 13. The campaign, as VyStar described it, centers on its “values-centric brand” by elevating the credit union’s promise to support its members and communities by “offering better banking options and giving back to strengthen the places it calls home.”
Though a federal judge has given Achieva until Dec. 23 to file an answer to VyStar’s lawsuit, Achieva said in a Dec. 2 court filing that the credit unions are actively involved in settlement negotiations and that they need additional time to reach a final agreement.
Photo courtesy of Todd Van Hoosear