                      United States Court of Appeals
                              FOR THE EIGHTH CIRCUIT
                                      ___________

                                      No. 97-2278
                                      ___________
First National Bank, in Sioux Falls, a    *
national banking corporation,             *
                                          *
             Plaintiff - Appellant,       * Appeal from the United States
                                          * District Court for the
   v.                                     * District of South Dakota.
                                          *
First National Bank, South Dakota,        *
                                          *
             Defendant - Appellee.        *

                                      ___________

                             Submitted: February 11, 1998
                                Filed: August 20, 1998
                                    ___________

Before FAGG, JOHN R. GIBSON and MURPHY, Circuit Judges.
                            ___________


JOHN R. GIBSON, Circuit Judge.

       The First National Bank in Sioux Falls appeals from one portion of the district
court's order which granted relief against First National Bank, South Dakota under the
Lanham Act and common law of service mark enjoining FNB South Dakota from using
only the marks "First National" or "First National Bank" within a ten-mile radius of FNB
Sioux Falls Bank, but denying plaintiff's request for an injunction against FNB South
Dakota using its full legal name within the ten-mile radius. FNB Sioux Falls
argues that the district court1 abused its discretion in denying the permanent injunction,
and contends that in using its full name, First National Bank South Dakota would
infringe on FNB Sioux Falls' right to use its common law service marks "First National"
and "First National Bank" within the ten-mile radius. We affirm the judgment of the
district court.

       FNB Sioux Falls had operated in Sioux Falls, South Dakota since 1885. It
received its first charter as the Minnehaha National Bank of Sioux Falls but changed its
name to "The First National Bank and Trust Co." in 1929 and then to "The First National
Bank in Sioux Falls" in 1952. It has used the names "First National Bank in Sioux
Falls," "First National Bank" and "First National" continuously since 1952, except for
a period between 1976 to 1985 when it used the name "First Sioux Falls." Since 1929,
no other Sioux Falls banks have used the names "First National" or "First National
Bank." For many years, FNB Sioux Falls has used the name "First National Bank" on
the outside of its building, on checks and calendars, and in its advertising. It has
adopted a service mark that includes a logo with stylized flying F's followed by the
words "First National Bank, First in Service For over 100 Years," with the phrase "For
over 100 years" in script. A copy of FNB Sioux Falls' logo is attached as Appendix A.

       The FNB South Dakota is located in Yankton, South Dakota, approximately 90
miles southwest of Sioux Falls. It was chartered in 1963 and operated until 1994 under
the name "Valley State Bank." It is currently owned by First National of Nebraska, Inc.
In 1990 or 1991, Valley State Bank officials began discussing the possibility of
establishing a branch office in Sioux Falls, and a feasibility study was completed in
November 1993. Valley State Bank acquired an option to purchase 1.25 acres of land
in Sioux Falls approximately one mile from FNB Sioux Falls' branch bank.



      1
       The Honorable Lawrence L. Piersol, United States District Judge for the District
of South Dakota.

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      Valley State Bank applied to the Office of the Comptroller of Currency in April
of 1994, for conversion to a national bank with the title "First National Bank South
Dakota." It then exercised its land option and purchased the Sioux Falls property on June
16, 1994. The South Dakota Department of Commerce and Regulation Division of
Banking approved the real estate purchase, and the Office of the Comptroller authorized
FNB South Dakota to commence business as a national bank under its new name on July
19, 1994. On October 19, 1995, FNB South Dakota applied to the Office of the
Comptroller to open a branch bank in Sioux Falls to be known as the "First National
Bank South Dakota, Sioux Falls branch." FNB South Dakota's logo consists of a numeral
"1" inside a nearly-closed circle above the words "first national bank south dakota",
which are written in lower case letters. A copy of FNB South Dakota's logo is attached
as Appendix B.

      FNB Sioux Falls' officers made telephone calls to officers of the FNB South
Dakota, followed by correspondence, with the request that FNB South Dakota refrain
from using "First National Bank" or "First National" outside of Yankton. The parties
were unable to reach an agreement, and this litigation followed.

       After a bench trial, the district court held that FNB Sioux Falls, which had applied
for federal service mark registration in January, 1995, did not possess a federal
registration for the names "First National," "First National Bank," or "The First National
Bank in Sioux Falls." The court, however, found that FNB Sioux Falls had used the
names for a number of years, and that the names were descriptive rather than generic
terms. The court further found that the marks had attained secondary meaning to
consumers in the Sioux Falls market area and were associated in consumers' minds with
FNB Sioux Falls. Accordingly, the district court concluded that FNB Sioux Falls holds
common law service marks in "First National," "First National Bank," and "First National
Bank Sioux Falls" within a ten-mile radius of FNB Sioux Falls. The court also found that
FNB South Dakota's use of the marks "First National", "First National Bank", and "First
National Bank in Sioux Falls", within a ten-mile radius of FNB Sioux


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Falls would create a likelihood of confusion, deception or mistake among an appreciable
number of ordinary buyers as to the source or association between the two banks. The
court therefore concluded that FNB Sioux Falls had established an infringement of its
common law service mark and Lanham Act rights, and entered a permanent injunction
enjoining FNB South Dakota from using the marks "First National," "First National
Bank," and "First National Bank in Sioux Falls," within a ten-mile radius of FNB Sioux
Falls' main office.

       However, the district court went on to conclude that FNB Sioux Falls had not
shown by a preponderance of the evidence that FNB South Dakota's use of its full legal
name, "First National Bank South Dakota" within the ten-mile radius would create a
likelihood of confusion, deception or mistake among an appreciable number of ordinary
consumers as to the source of or association between the two banks, particularly if the
full name were used in conjunction with its "circle-1" logo. It concluded that, as to the
FNB South Dakota's full name, FNB Sioux Falls had not established an infringement of
its common law service mark and Lanham Act rights, or that FNB South Dakota is poised
to engage in unfair competition.

        This latter ruling is the only issue before us. FNB Sioux Falls argues that the
district court abused its discretion in declining to permanently enjoin FNB South Dakota's
use of its full name. FNB Sioux Falls contends that the court's holding that use of FNB
South Dakota's full name would not infringe FNB's Sioux Falls common law marks is not
supported by the record and is contrary to the court's findings. FNB South Dakota
responds that the district court did not clearly err in its decision.

       FNB Sioux Falls agrees with "substantially all of the district court's findings of
fact," and challenges only the district court's ultimate determination that FNB South
Dakota's full name would not create a likelihood of confusion. Although the district court
stated this determination under the heading "Conclusions of Law," we have previously
held that likelihood of confusion is a factual question which we review only


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for clear error. See Conagra, Inc. v. George A. Hormel & Co., 990 F.2d 368, 371 (8th
Cir. 1993). In Conagra, we rejected an argument that the district court's evaluation of
each factor is subject to the clearly erroneous standard of review but that the ultimate
determination of the likelihood of confusion is a question of law to be reviewed de novo.
Id. at 370 ( reviewing the development of authority in this circuit and contrasting it with
other circuits applying the de novo standard).2 We likewise reject FNB Sioux Falls'
argument that the district court's ultimate finding is inextricably bound up in its view of
the law, and as such is a mixed question of fact and law subject to de novo review.

       To successfully establish service mark infringement, FNB Sioux Falls bears the
burden of proving that FNB South Dakota's use of its full legal name would create a
likelihood of confusion, deception, or mistake among an appreciable number of ordinary
consumers as to the source of or association between the banks' services. See Duluth
News-Tribune v. Mesabi Pub. Co., 84 F.3d 1093, 1096 (8th Cir. 1996). In determining
whether a likelihood of confusion exists, the district court should consider the following
factors: the strength of the plaintiff's service or trademark; the competitive proximity of
the parties' marks; the alleged infringer's intent to confuse; the degree of care reasonably
expected of potential customers; the similarity between the parties' marks; and evidence
of actual confusion. See id. (citing Anheuser-Busch, Inc. v. Balducci Publications, 28
F.3d 769, 774 (8th Cir. 1994)). These factors, however, do not operate in a
mathematically precise formula. See id. Instead, the relative weight of the factors
depends on the facts of the individual case.




      2
        This case bears no similarity to Anheuser Busch, Inc. v. Balducci Publications,
Inc., 28 F.3d 769, 773 (8th Cir. 1994), where we held that the district court failed to
first consider the likelihood-of-confusion issue, conflating it with first amendment
issues. Because we could not separate the issues, we conducted a de novo review.


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        In this case, the district court held that FNB Sioux Falls' marks are strong, and no
one disputes that the banks would be in close proximity to one another. The court found
no direct evidence that FNB South Dakota intended to confuse customers as to the origin
of its services but found circumstantial evidence that FNB South Dakota at least intended
to target FNB Sioux Falls' customers with an advertisement which featured the word
"commitment," a word used in FNB Sioux Falls' familiar slogan. The court found that
consumers generally exercise greater care in selecting financial services than in choosing
other products, but the court credited expert testimony that consumers exposed to very
similar advertisements may nonetheless become confused as to the source of those
advertisements.

       The court also found that the banks' full legal names are very similar because both
contain the phrase "First National Bank." The district court, however, stated that the
graphic use of the banks' full legal names with their respective logos reduces the
similarity between the marks. Finally, the district court accepted testimony that an
advertisement by FNB South Dakota in the local newspaper had caused actual confusion
among consumers.

       The district court made these findings in the context of explaining its decision to
enjoin FNB South Dakota's use of the shortened names "First National" and "First
National Bank." The district court did not clearly err in its findings of fact either
concerning the various factors or its ultimate finding that FNB South Dakota's use of the
short names would create a likelihood of confusion. This, however, is not the issue
before us. The above findings do not compel a determination that FNB South Dakota's
use of its full legal name would also create a likelihood of confusion.

       FNB Sioux Falls assumes a difficult burden when it explicitly agrees with
substantially all of the district court's finding of fact except the ultimate finding of
likelihood of confusion with respect to FNB South Dakota's use of its full name. FNB
Sioux Falls's argument essentially is that the findings on the several specific factors


                                           -6-
enumerated in Anheuser-Busch and Duluth News-Tribune render its ultimate finding of
no likelihood of confusion inconsistent and clearly erroneous. FNB Sioux Falls' argument
fails to come to grips with the full import of the district court's findings. The court
carefully differentiated between FNB Sioux Falls's service marks of "First National,"
"First National Bank" and "The First National Bank in Sioux Falls", and the full legal
name of "First National Bank South Dakota." The court stated "the graphic use of these
full legal name marks with their respective logos reduces the similarity between the
marks." Further, the district court stated, in making the finding that FNB Sioux Falls now
attacks, that plaintiff had not shown by a preponderance of the evidence that the use of
the full legal name First National Bank South Dakota would create a likelihood of
confusion, "particularly if defendant uses its full legal name in conjunction with its 'circle-
1' logo in graphic presentation." The district court here distinguished the full legal names
and logos, which are not confusing, from the use by the two banks of the identical names
"First National" and "First National Bank," which would be confusing.

        Thus, rather than establishing an inconsistency such as FNB Sioux Falls argues,
the findings are based upon a precise differentiation. Indeed, the extent of the district
court's finding is that FNB Sioux Falls had shown, by a preponderance of the evidence,
that FNB South Dakota's use of the marks "First National" and "First National Bank"
would create a likelihood of confusion. In a case such as this, it is entirely appropriate,
indeed essential, that the district court, in making fact findings, look closely at the
specific issues involved. That is the approach taken in the district court's findings of fact.
With these careful distinctions drawn, we cannot conclude that FNB Sioux Falls has
demonstrated the finding that it had not shown that the use of the full legal name, "First
National Bank South Dakota," created a likelihood of confusion with FNB Sioux Falls
to be clearly erroneous.

       FNB Sioux Falls also asserts that the finding with respect to FNB South Dakota
using its full legal name is clearly erroneous because it is contrary to the weight of the



                                            -7-
evidence, although it does not develop this argument in detail. We entertain some
question as to whether an appellate court may weigh evidence, but in any event, the
Supreme Court in Anderson v. Bessemer City, 470 U.S. 564, 573-74 (1985), made
explicit that "If the district court's account of the evidence is plausible in light of the
record viewed in its entirety, the court of appeals may not reverse it even though
convinced that had it been sitting as the trier of fact, it would have weighed the evidence
differently."

       The district court held, and FNB Sioux Falls does not dispute, that consumers tend
to exercise a relatively high degree of care in selecting banking services. As a result,
customers are more likely to notice what, in other contexts, may be relatively minor
differences in names. We recognize that other courts have determined there to be
minimal or no likelihood of confusion even where the names of financial institutions share
the same dominant terms. See First Savings Bank, F.S.B. v. First Bank System, Inc., 101
F.3d 645, 653 (10th Cir. 1996) (no likelihood of confusion between "FirstBank" and
"First Bank System" service marks where bank logos were visually distinct); Sun Banks
of Fla., Inc. v. Sun Fed. Sav. & Loan, 651 F.2d 311, 319 (5th Cir. 1981) (no likelihood
of confusion between "Sun Federal Savings" and "SunBanks" service marks); First Bank
v. First Bank System, Inc., 909 F.Supp. 657, 661 (S.D.Iowa 1995) (confusion between
names "First Bank" and "First Bank Iowa" is reasonably manageable such that equities
weigh against permanent injunction), aff'd. 84 F.3d 1040 (8th Cir. 1996).

       FNB Sioux Falls, however, argues that the district court's finding of a likelihood
of confusion should have extended to FNB South Dakota's full name because the court
found that there was actual confusion resulting from newspaper advertisements in which
FNB South Dakota used its full name. Isolated evidence of some actual confusion
occurring initially upon the creation of a potentially confusing mark is not itself sufficient
to establish a likelihood of confusion. See Duluth News-Tribune, 84 F.3d at 1098.




                                            -8-
       The "likelihood of confusion" test is a fact-intensive inquiry upon which reasonable
minds may often disagree. Even if we assume that a different factfinder may have
reasonably determined that FNB South Dakota's use of its full name would create a
likelihood of confusion, and we do not intimate that we would do so, the Supreme Court
stated in Andersen v. City of Bessemer City, 470 U.S. 564, 574 (1985), "[w]here there
are two permissible views of the evidence, the factfinder's choice between them cannot
be clearly erroneous." This is so even when the district court's findings do not rest on
credibility determinations but are based on physical and documentary evidence or
inferences from other facts. Having reviewed the record, we are not left with "the
definite conviction that the [district] court made a mistake," First Bank v. First Bank
System, Inc., 84 F.3d 1040, 1046 (8th Cir. 1996), and we therefore conclude that the
district court did not clearly err.

      Accordingly, we affirm.

      A true copy.

             Attest:

                     CLERK, U.S. COURT OF APPEALS, EIGHTH CIRCUIT




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