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Oriental Financial Group, Inc v. Cooperativa De Ahorro Y Credito Oriental

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Before Boudin, Selya and Dyk, *fn1 Circuit Judges.

The parties in this case are competing financial institutions operating in Puerto Rico. Plaintiffs-Appellants/Cross-Appellants, Oriental Financial Group, Inc., Oriental Financial Services Corp., and Oriental Bank and Trust*fn2 (collectively, “Oriental”), have for many years used the ORIENTAL mark in connection with the advertising, promotion, and offering of financial services in Puerto Rico. Oriental contends that beginning in or around 2009, Defendant-Appellee/Cross-Appellant, Cooperativa De Ahorro y Credito Oriental (“Cooperativa”), used a confusingly similar mark, COOP ORIENTAL, and a confusingly similar logo containing that mark in connection with its financial business and services, in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and Puerto Rico trademark law.

Finding a likelihood of confusion, the district court ordered Cooperativa to cease all use of its new 2009 logo (which used the COOP ORIENTAL mark with an orange trade dress), but allowed Cooperativa to revert back to using its pre-2009 logo (also containing the COOP ORIENTAL mark, but with a different trade dress). On appeal, Oriental contends that the district court’s injunction should have been broader to include any use of the COOP ORIENTAL mark and similar marks (even when divorced from the trade dress in the 2009 logo). Cooperativa counters that Oriental’s claim for injunctive relief against the COOP ORIENTAL mark and similar marks fails on the merits because there is no likelihood of confusion and the claim is barred by laches.

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