When Oblon client HomeTrust Bank set its sights on expanding into Virginia, it had not anticipated that its own reputable name would be a barrier to entry in the region.
In 2014, HomeTrust Bank and HomeTown Bank exchanged correspondence regarding HomeTown’s claim that HomeTrust could not use its name and mark in Virginia because the two banks’ names would likely be confused by the public. HomeTrust disagreed with HomeTown’s assertions of likely confusion and noted that it had received a federal registration for its HOMETRUST BANK mark and had begun using its mark in Virginia, well before HomeTown had begun operations in Virginia under its name.
When the two banks could not resolve their differences, HomeTrust brought an action for declaratory judgment of service mark priority and non-infringement. In response, HomeTown Bank brought an action for false designation of origin and common law trademark infringement, among other claims. HomeTown also requested a preliminary injunction, temporarily prohibiting HomeTrust (until trial) from expanding its operations under its federally registered name and mark in Virginia.
On the eve of the hearing on HomeTown’s preliminary injunction motion, the parties settled their differences. Under the parties’ agreement, HomeTrust is required to use the phrase “Roanoke Division” in connection with its HOMETRUST BANK mark on office signage and in advertising within a discrete portion of Southwestern Virginia, and on website landing pages and microsites specifically targeting the Roanoke Valley. The parties also agreed to refrain from using the logos and color schemes associated with one another’s marks. HomeTrust is otherwise free to use its HOMETRUST BANK service mark in Virginia and elsewhere in any way it chooses.
In the end, Oblon was able to negotiate favorable terms on behalf of our client, and HomeTrust was pleased with the end result.
Dana Stonestreet, Chairman, President and CEO, stated, “HomeTrust is most appreciative of the quality of the legal representation it received in this matter. We amicably resolved this dispute to put the distraction of litigation behind us and will proceed as planned with our expansion into the greater Roanoke Valley as HOMETRUST BANK.”