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In a trademark infringement case, a federal judge has granted a preliminary injunction blocking MetBank from using its logo in a retail location just steps away from the landmark MetLife building looming over Grand Central Station. In assessing the trademark claim in MetLife Inc. v. Metropolitan National Bank, 05 Civ. 3960, Southern District of New York Judge P. Kevin Castel applied the eight-step test established by the 2nd U.S. Circuit Court of Appeals in a 1961 case, Polaroid Corp. v. Polarad Electronics Corp. In the current case, MetLife, the well-known insurance and financial services company, requested an injunction against Metropolitan National Bank for using a logo containing the wording “MetBank.” The first step of the Polaroid test, measuring the strength of MetLife’s mark, was an easy decision for the judge. MetLife had spent more than $100 million a year advertising its brand, a logo it has been using since 1968. The judge noted that the MetLife logo “adorned” the MetLife skyscraper on Park Avenue. Ironically, Metropolitan National placed its logo on a retail storefront just steps away from the monolithic MetLife superstructure. The judge spent far more time in analyzing the similarity of the marks, also a factor in the Polaroid test. “In assessing similarity,” Judge Castel wrote, “courts look to the overall impression created by the logos and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers.” In that light, he made a side-by-side comparison of the logos, and found them “highly similar.” “Both utilize sans-serif fonts, with text printed in blue,” wrote Castel. The blue used by the defendant was a deeper shade but “the difference in shade is not so notable that a consumer or passerby would readily differentiate between MetBank’s blue and MetLife’s blue.” The judge arrived at the same conclusion in comparing the fonts that were not identical between the logos. “The distinctions between the lettering of the MetLife logo and that of the MetBank logo are such that their distinctions become clear only after careful, side-by-side comparison and consideration,” the judge held. Both marks also used seven letters with the fourth letter capitalized. “From the appearance and overall impression,” Castel wrote, “I conclude that a consumer of banking services standing in front of the Park Avenue branch of [MetBank] would not readily distinguish between [MetBank's] blue logo and [MetLife's] blue logo. … [T]he two marks leave an overall impression that is strikingly similar.” The judge also found that litigants provided similar services — banking in this case — and had “close geographic proximity” as MetBank prepared to open a branch just steps away from the MetLife building. The final area of contention dealt with the need to show evidence of actual confusion, a Polaroid step that often involves dueling experts referring to contradictory consumer studies. In this case, since MetLife was seeking a preliminary injunction to block MetBank from using its logo at a new branch, the litigants could not survey consumers to find the level of confusion between the marks. Instead, MetLife’s expert conducted a survey of potential customers and found that 38 percent of the test group believed MetBank was associated or directly owned by MetLife. MetBank’s expert disagreed with the findings and the sampling methods used. After looking at the instructions from interviewers, the screening criteria for the people surveyed, the wording of the questions and the methodology of the analysis, Castel held that MetLife’s expert was right to conclude that the similarity of the two trademarks was confusing. The court also found “circumstantial evidence of bad faith” on the part of MetBank. “[T]he similarity between the parties’ marks is such that it strains credulity to believe that neither [MetBank] nor the firm it hired to redesign its logo were not consciously influenced by the MetLife logo,” the judge held. The fact that the U.S. Patent and Trademark Office had warned MetBank about this possibility contributed to his ruling. The judge granted MetLife’s request for a preliminary injunction blocking MetBank from using its logo at its proposed location on 99 Park Avenue. The injunction did not apply to the use of the logo in other locations. Parker Bagley of Milbank, Tweed, Hadley & McCloy represented Metropolitan Life Insurance Company. Bruce Ewing of Dorsey & Whitney represented Metropolitan National Bank.

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