‘simply signifies that the bank has been certified, or chartered, by the state or federal government.
We disagree. “Charter National Bank” is entitled to protection.

The determination of whether a party has established a protectable right in a trademark is
made on a case by case basis, considering the totality of the circumstances. New West Corp. v.

NYM Co. of Cal., Inc., 595 F.2d 1194, 1200 (9" Cir. 1979). A party may acquire a protectable right

simply through the use of the mark in connection with goods or services. Zazu Designs v. L’Oreal,
S.A., 979 F.2d 499, 503 (7" Cir. 1992). We find that Charter National has shown a reasonable
likelihood of success in its claim to have acquired a protectable right in “Charter National” through
its evidentiary submissions of advertising brochures, ads, and pictures of signs, as well as its
evidence of actual confusion. Later in the course of this case, Charter National will have to present
more substantial evidence of confusion, but at this point the evidence it has presented is sufficient
to convince this court that there is a reasonable likelihood of success in showing that its name has
acquired a secondary meaning in the minds of customers and, therefore, deserves protection.

In a trademark infringement case, damages are by “their very nature irreparable and not
susceptible of adequate measurement for remedy at law.” International Kennel Club of Chicago,
Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1092 (7" Cir. 1988). Charter National has shown a
reasonable likelihood of success on the merits because of customer confusion and frustration.
Furthermore, the fact that it is virtually impossible to calculate the financial impact of these damages
shows that there is no adequate remedy at law.

Balancing of the hardships and the public’s interest presents the closest question here.
Defendants operate over seventy locations in the entire Chicago metropolitan region and forcing

them to cover all of their signs on all banks is a hardship. However, they knew of this potential


‘preliminary injunction will not harm the public interest. Rust Environment & Infrastructure, Inc. v.

Teunissen, 131 F.3d 1210, 1213 (7th Cir. 1997).

“Trademark law aims to aid consumers in identifying the source of goods by allowing
producers the exclusive right to particular identifying words or symbols which they may attach to
their products as a designator of source.” Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 657
(7th Cir. 1995).

Charter National has shown a reasonable likelihood of success on the merits. In order to
show a reasonable likelihood of success on the merits in a trademark infringement claim, the plaintiff
must demonstrate: (1) the validity of its trademark and (2) the infringement of that mark. Echo
Travel, Inc. v. Travel Associates, Inc., 870 F.2d 1264, 1266 (7th Cir. 1989). The validity of a mark
is established by showing that a “word, term, name, symbol or device” is entitled to protection
because that mark specifically identifies and distinguished one company’s goods from those of its
competitors. Platinum, 149 F.3d at 726. Charter National is the senior user of the mark in the
Chicago metropolitan area. Although Charter One has registered its mark at the U.S. Patent and
Trademark Office, that trademark only allows it to use its mark if no other senior user, who has been
continuously using the mark, has priority. 15 U.S.C. § 1065. A trademark application is always
subject to previously established common law rights of another party. The Money Store _v.
Harriscorp Fin., 689 F.2d 666, 672 (7". Cir 1982). Therefore, if “Charter National Bank” is
protectable under common law trademark law, Charter National has a reasonable likelihood of
success on the merits.

Charter National contends that its mark is protectable because the term “charter” is more

than a generic term, such as bank. Charter One argues that the mark is not protectable because it


‘conflict before they changed the names of their banking operations from St. Paul to Charter One.

We have considered different geographical parameters for a temporary restraining order.
Eighty percent of Charter National’s deposit customers are clustered within three miles around its
branches. Therefore, we have entertained the option of structuring a TRO to include that geographic
area. In response, Charter National argued that it makes a profit only by virtue of the loans that it
makes and, since its loan customers live in a much broader geographic area than its deposit
customers, its damages will not by redressed unless we totally enjoin Charter One from any use of
the mark “charter” in the entire Chicago metropolitan area. In the event that we determine that a
preliminary injunction is justified, we might require that Charter One stop using the mark “charter”
in the entire Chicago metropolitan area. However, given the balancing of the hardships at this stage
in the litigation and the inconvenience to Charter One’s hundreds of thousands of customers in the
Chicago area, we will not order Charter One to stop using the mark “charter” in the entire
metropolitan area.

We have fashioned a remedy which balances the public interests and the hardships, but still
recognizes Charter National’s likelihood of succeeding on the ultimate merits. We will restrain
Charter One entities from operating any type of bank facility using the word “charter” on any outdoor
sign within the geographic area between Lake Cook Road, on the north, 1 290/1355/Ilinois 53, on
the east, North Avenue, on the south, and the Fox River, on the west. Furthermore, we will enjoin
Charter One from opening any new locations, in the above geographic area, which use the mark
“charter” in any way or is identified as “Charter One”. This solution balances the strength of Charter
National’s mark in a smaller geographic area against the hardship of Charter One changing all of the

signs on all of its facilities in the Chicago area on a temporary basis.


Minute Order Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge Sitting Judge if Other
or Magistrate Judge Wayne R. Andersen than Assigned Judge
CASE NUMBER 1C905 DATE 5/15/2001
CASE Charter Nat’l. Bank vs. Charter One Financial, Inc. et al
TITLE
[ln the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]
DOCKET ENTRY:
qd) ao Filed motion of { use listing in “Motion” box above.]
(2) oO Brief in support of motion due
(3) o Answer brief to motion due . Reply to answer brief due
(4) Qo Ruling/Hearing on. set for at
(5) Qo Status hearing[held/continued to] [set for/re-set for] on set for at
(6) Oo Pretrial conference(held/continued to] [set for/re-set for] on set for at
(7) o Trial[set for/re-set for] on at
(8) a [Bench/Jury trial] [Hearing] held/continued to at
@) im This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
CUFRCP4(m) OGeneral Rule21 COFRCP41(a)(1) OO FRCP41(a)(2).
(0) ff [Other docket entry] Enter MEMORANDUM, OPINION AND ORDER: Motion for a
temporary restraining [2-1] is granted in part and denied in part.
dal) @ [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required,

Notices mailed by judge’s staff.

Notified counsel by telephone.

VW | Docketing to mail notices.

Mail AO 450 form.

Copy to judge/magistrate judge. G vay 41 3880
A

ceunwom GIMAY 16 PH 2: 19 pease
TSA deputy’s
initials

Date/time received in
central Clerk’s Office tints weputy ififals
|

if



CONCLUSION

Charter National Bank & Trust’s motion for a temporary restraining order is granted in part
and denied in part. Charter One Financial, Inc., Charter One Bank, FSB and St. Paul Federal Bank
for Savings are enjoined from operating any type of bank facility using the word “charter” on any
outdoor signs within the geographic area between Lake Cook Road, on the north, I 290/135SAllinois
53, on the east, North Avenue, on the south, and the Fox River, on the west. Furthermore, Charter
One is enjoined from opening any new locations in that geographic area that use the mark “charter”
in any way or is identified as “Charter One”. Charter National’s request for a temporary restraining
order prohibiting Charter One from using the mark “charter” throughout the entire Chicago
metropolitan area is denied.

It is so ordered.

Je (Ce
7 Wayne R. Andersen
United States District Judge

Dated: 7 Kanl5s BQO


‘ IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
CHARTER NATIONAL BANK AND )
TRUST, )
)
Plaintiff, )
) No. 01 C 0905
v. )
) Honorable Wayne R. Andersen
CHARTER ONE FINANCIAL, INC., )
CHARTER ONE BANK, FSB and ST.) ey
PAUL FEDERAL BANK FOR ) paewerte
SAVINGS, ) YI
) MAY 14 2081
Defendants. )

MEMORANDUM, OPINION AND ORDER

This case is before the Court on the Motion for a Temporary Restraining Order brought by
plaintiff Charter National Bank and Trust. Charter National seeks to restrain Charter One Financial,
Inc., Charter One Bank, FSB and St. Paul Federal Bank for Savings from operating any location in
the Chicago metropolitan area using the mark “charter.” For the following reasons, Charter
National’s motion is granted in part and denied in part.

ALLEGED FACTS

Northwest Bankcorp acquired a bank in Hanover Park and renamed it Charter Bank and Trust
of Illinois on October 1, 1987. In 1993, two more locations were added, one in Schaumburg and one
in Hoffman Estates. Charter Bank and Trust of IHinois changed its name to Charter Bank and Trust,
N.A. and then to Charter National Bank and Trust (“Charter National”). Since 1987, the entity now
known as Charter National has continuously operated the Hanover Park facility and has displayed
a large sign out front with the words “Charter Bank”. Since 1993, the Hoffman Estates and

Schaumburg branches have displayed large signs with the words “Charter Bank”. 2 d


Charter One did not do business in the State of Illinois until it acquired St. Paul Federal Bank
for Savings in 1999. Until January of 2001 it operated St. Paul’s fifty-eight Chicago metropolitan
locations under the trade name and trademark “St. Paul”. In January of 2001, St. Paul announced
that it was changing its name to Charter One Bank. On February 6, 2001, counsel for Charter
National faxed a letter to Charter One informing Charter One of its contention that Charter National
was the senior common law user in Chicago and that the name change was already causing customer
confusion.

After Charter One did not stop converting branches from the mark “St. Paul” to “Charter
One”, Charter National filed the instant lawsuit. The issues have been extensively briefed and we
have conducted an evidentiary hearing. While this court has reviewed the motion for a temporary
restraining order, defendants have agreed to refrain from displaying the name “Charter One” in the
geographic area surrounding Charter National’s three branches.

DISCUSSION

The purpose of preliminary injunctive relief is “to minimize the hardship to the parties
pending the ultimate resolution of the lawsuit.” Platinum Home Mortgage Corp. v. Platinum
Financial Group Inc., 149 F.3d 722, 726 (7th Cir. 1998). The standards for a temporary restraining

order and the standards for a preliminary injunction are identical. Atkins v. Arson Pirie Scott & Co.

Inc., 1999 WL 1249342 at *1 (N.D. Ill. Dec. 13, 1999). Therefore, a TRO is warranted if the party
seeking the injunction can make a threshold showing that: (1) the case has a reasonable likelihood
of success on the merits; (2) no adequate remedy at law exists; (3) it will suffer irreparable harm if

the injunction is not granted; (4) the balance of hardships is in favor of the moving party; and (5) the