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John B.
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Lawrence E. Laubscher, Jr.

 

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BB&T and SunTrust become Truist and get sued by Truliant Federal Credit Union – What Trademark-Selection Lessons Can Be Learned?

Tuesday, June 18th, 2019

Would use of these two marks for banking services be confusing to consumers?

A trademark fight just broke out involving the merger of BB&T and SunTrust, two banks with heavy footprints in Central Virginia. Those combining banks recently announced their merged name (meaning their trademark) will be “Truist.”

Shortly afterward, Truliant Federal Credit Union sued BB&T and SunTrust for trademark infringement. Truliant contends “Truist” is confusingly similar to “Truliant” and other trademark phrases Truliant uses that are based on the word “true.”

It’s a backyard brawl. BB&T and Truliant each are headquartered in Winston-Salem, North Carolina.

I don’t know which bank will win the fight. In a quick search, I found several other banks that have federally registered trademarks containing the word “true” or a variation of it. Yet, the Truist versus Truliant conflict is immediate because they serve the same geographic market.

This conflict piques my interest because I’ve been through many business, product, or service namings (which are trademark selections) where the business picking a new name won’t back down from making a bad choice.

Don’t fall in that hole. The hole can take several shapes.

Sometimes, the business gets a trademark attorney to do a clearance analysis of the new name, the result shows it’s risky, but the business goes ahead anyway. Certainly that was the case with picking “Truist.” BB&T/SunTrust surely knew of Truliant and was warned by counsel that it was taking a risk by adopting a similar name.

Or sometimes the business is bent on picking a name that’s merely descriptive of the goods and services and possibly even a generic name for them (e.g., BANK OF VIRGINIA). Such names can be difficult or impossible to register as trademarks and often are unprotectable.

Or, after being warned, the business insists on using a name commonly used in the industry. For example, many banks use variations of CITIZENS, PEOPLES, COMMUNITY, and UNION. That’s begging for trademark conflict.

The common theme to these poor choices is company leadership fell in love with a name and let love trump reason. Often this happens when leadership picks a single name candidate and gets attached before having it legally vetted.

The way to avoid this is to explore various naming options with legal counsel before falling in love.

Give your attorney a list of 5-10 widely varying name candidates to vet before getting attached. Look more closely at the ones that do well in initial vetting.

Stay away from merely descriptive names, such as COMMUNITY BANK.

Stay away from names commonly used in the industry, such as CITIZENS BANK.

Ultimately, you’ll save money. Picking a name that poses trademark problems is the road to high legal bills and difficulty distinguishing yourself from competitors with similar names. In the worst case, you could be forced to immediately change your name and pay damages to the company that had the similar name first.

When you’re doing a new branding, there’s no excuse for putting your company at risk. Pick a clean name so you can protect it from imitators. Let reason rule the day, not true love at first sight.

Written on June 18, 2019

by John B. Farmer

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