The Court of Appeals for the Eighth Circuit affirmed the District Court’s opinion that First National Bank South Dakota infringed on Merchant & Gould client The First National Bank in Sioux Falls’ trademarks

May 25, 2012

Overview

The Court of Appeals for the Eighth Circuit affirmed the District Court’s opinion that First National Bank South Dakota infringed on Merchant & Gould client The First National Bank in Sioux Falls’ trademarks FIRST NATIONAL and FIRST NATIONAL bank. The parties had engaged in litigation in the 1990s that resulted in a permanent injunction against First National Bank South Dakota. Despite that injunction, the defendant entered the Sioux Falls market using the FIRST NATIONAL BANK mark. The First National Bank in Sioux Falls brought suit and the case went to trial in 2008. The Court ruled First National Bank South Dakota infringed an enjoined the use of the mark. First National Bank South Dakota appealed on the issue of res judicata, claiming the decision from the 1990s controlled. The Eighth Circuit found that the cause of action differed because the nucleus of operative fact differed in the second lawsuit.