Motion for Preliminary Injunction against ABD denied again
On August 28, 2014, United States District Court Judge Phyllis Hamilton again denied the motion for preliminary injunction filed by Wells Fargo against BartkoZankel client ABD Insurance and Financial Services (the “ABD Team”). Wells Fargo alleges 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. In March 2013, the ABD Team defeated Wells Fargo’s first motion for preliminary injunction based on arguments 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. The Ninth Circuit reversed on the abandonment issue and remanded the case back to the trial court.
Wells Fargo filed its renewed motion for preliminary injunction in June 2014. While the Court held that Wells Fargo had made a preliminary showing of likelihood of confusion, it found that Wells Fargo continued to fail to prove the required element of irreparable harm. The Court found that Wells Fargo’s alleged proof of harm to reputation and goodwill were “unsupported and conclusory statements regarding harm [it] might suffer,” consisting of “platitudes rather than evidence.” While Wells Fargo contended it lost business, the Court observed that it “has not shown any connection between that lost business and defendants’ use of the ‘ABD’ name. In fact, all of the evidence before the court supports its earlier finding that ‘it seems equally (if not more) likely that Wells Fargo’s lost business was the result of each customer’s informed choice about whether to do business with Well Fargo or ABD.’” The Order relies on Wells Fargo’s inability to cite any examples of companies that moved their insurance business to ABD “because of the mistaken assumption that Team ABD was the same thing as Wells Fargo’s ABD.”
Ben Riley, Griff Towle, 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.