Puerto Rico's Banco Popular N.A. has been ordered to pull its south Florida advertising because of a trademark dispute with a local community bank.
A U.S. District Court judge in Miami has granted a preliminary injunction requested by Popular Bank of Florida, Coral Gables. Popular Bank, with $358 million of assets, is suing the San Juan-based banking company for infringing on its name.
The ruling restricts Banco Popular from advertising in metropolitan Miami but does not prevent the $16.7 billion-asset bank from promoting itself in other parts of Florida or elsewhere in the United States.
Banco Popular's television commercials, which ran on the Univision network, caused "immense confusion among thousands of consumers familiar with Popular Bank," said Mitchell H. Stabbe, an attorney with Dow, Lohnes & Albertson, Washington, who is representing Popular Bank. The ads were scheduled to stop running Friday.
The Puerto Rican bank entered Florida in April 1997 when it bought Seminole National Bank, based in Sanford. It soon began running ads introducing itself and offering special promotions.
Mr. Stabbe said 25-year-old Popular Bank was flooded with phone calls in response to Banco Popular's commercials. "Many callers became angry when they learned that they had called the wrong bank, particularly because the two banks did not offer the same promotions," he said. The Florida bank sued Banco Popular in August 1997.
Alan S. Cooper, an attorney with Shaw, Pittman, Potts & Trowbridge in Washington who is representing Banco Popular, said the Puerto Rican bank plans to decide its next move this week. Its options include appealing the injunction, going to trial, or both, he said.
To win a trademark infringement case, the plaintiff must demonstrate that it was first to use the trademark in the market, that its mark is distinctive, and that the defendant's use of the mark is likely to cause confusion among consumers. The court found that Popular Bank was likely to succeed at trial on all three elements, and it entered the preliminary injunction, Mr. Stabbe said.
No trial date has been set.
