Merchant & Gould Scores Litigation Victory for The First National Bank in Sioux Falls

September 16, 2009

Firm Earns Permanent Injunction Against Defendant Roughly Twenty Times the Size of the Plaintiff

Merchant & Gould, an intellectual property law firm, today announced it has won a major litigation victory on behalf of The First National Bank in Sioux Falls over First National Bank South Dakota, First National Merchant Solutions, First National Bank of Omaha and First National of Nebraska, Inc. The defendants are all part of the largest privately held banking company in the country with banks in seven states and over six million customers.

The United States District Court for the District of South Dakota found "a likelihood of confusion among potential consumers", and ordered the defendants to be permanently enjoined from using the service marks "First National," "First National Bank," and "The First National Bank in Sioux Falls" in Minnehaha County and the part of Lincoln County, South Dakota which is within an eighteen-mile radius of The First National Bank in Sioux Falls' main office. The court also awarded the plaintiff its litigation costs.

Jack Clifford, co-lead counsel for The First National Bank in Sioux Falls and a partner in Merchant & Gould's Minneapolis office, explained the result this way: "Our client provided us with a strong brand to protect, a sterling reputation for integrity and customer service, and evidence of actual confusion any trademark lawyer would be thrilled to have," said Clifford. The trial lasted six days in the Spring of 2008 and involved the testimony of numerous local business leaders, bank tellers, customers and others who experienced or observed confusion in the marketplace. "This very favorable outcome was made possible by the dedicated and skillful work of our entire team," said Clifford. "Our experience in handling complex trademark litigation allowed us to ultimately bring about a strong result for our client." Also involved with the case from Merchant & Gould were attorneys Allen Hinderaker and Will Schultz, and lawyers from Davenport, Evans, Hurwitz & Smith, LLP in Sioux Falls, South Dakota.

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