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Wells Fargo & Co. v. ABD Ins. & Financial Services, Inc.

United States Court of Appeals, Ninth Circuit

March 3, 2014

WELLS FARGO & COMPANY; WELLS FARGO INSURANCE SERVICES USA, INC., Plaintiffs-Appellants,
v.
ABD INSURANCE & FINANCIAL SERVICES, INC., FKA Insurance Leadership Network, Inc.; KURT DE GROSZ; BRIAN HETHERINGTON, Defendants-Appellees

Argued and Submitted, San Francisco, California December 2, 2013.

Appeal from the United States District Court for the Northern District of California. D.C. No. 4:12-cv-03856-PJH. Phyllis J. Hamilton, District Judge, Presiding.

Preliminary Injunction / Lanham Act

The panel withdrew the mandate, granted a request for publication, withdrew a memorandum disposition, and filed an opinion reversing the district court's denial of plaintiffs' motion for a preliminary injunction in a trademark infringement case.

The panel held that the district court abused its discretion in its analysis of plaintiffs' likelihood of success on the merits of their claims. First, the district court abused its discretion when it did not consider a false advertising claim separately from a trademark infringement claim because the two claims were distinct and required the application of separate tests. Second, the panel held that the district court abused its discretion in its analysis of the abandonment defense to the trademark infringement claim when it considered evidence of prospective intent to abandon the mark to determine whether plaintiffs' uses were bona fide and in the ordinary course of business. The panel reversed the district court's order and remanded the case for reconsideration and further proceedings.

Kevin D. Rising (argued) and Stephen R. Mick, Barnes & Thornburg LLP, Los Angeles, California; Felicia J. Boyd, Barnes & Thornburg LLP, Minneapolis, Minnesota, for Plaintiffs-Appellants Wells Fargo & Co. et al.

Benjamin K. Riley (argued), Kerry L. Duffy, and Jayne Laiprasert, Bartko, Zankel, Bunzel & Miller, San Francisco, California, for Defendants-Appellees ABD Insurance & Financial Services, Inc. et al.

Before: Michael Daly Hawkins, Ronald M. Gould, and Richard A. Paez, Circuit Judges. Opinion by Judge Gould.

OPINION

Page 1070

GOULD, Circuit Judge:

Appellants Wells Fargo & Co. et al. (" Wells Fargo" ) bring this case against Appellees ABD Insurance and Financial

Page 1071

Services et al. (" New ABD" ) arguing that the district court abused its discretion when it denied Wells Fargo's motion for preliminary injunction. We have jurisdiction pursuant to 28 U.S.C. § 1291, and we reverse the district court's order and remand the case for reconsideration of the motion for preliminary injunction consistent with this opinion.

Wells Fargo acquired the original ABD Insurance and Financial Services (" Former ABD" ) in 2007, at which point hundreds of Former ABD employees joined Wells Fargo offices. In 2008, Wells Fargo changed the name of ABD to " Wells Fargo Insurance Services," but continued to display the Former ABD mark on customer presentations and solicitations, to maintain the abdi.com website and metatags, and to accept customer payments made to ABD. However, members of the Former ABD left Wells Fargo in 2009 and created a new insurance and financial services company called Insurance Leadership Network, Inc. (" ILN" ). Those members then used ILN to launch New ABD in June or July 2012, using the exact same name as Former ABD, when they learned that Wells Fargo had not renewed the registration of the Former ABD mark. Wells Fargo filed suit against New ABD on July 24, 2012 asserting trademark, false ...


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