                                                                                                                           Opinions of the United
2004 Decisions                                                                                                             States Court of Appeals
                                                                                                                              for the Third Circuit


9-9-2004

Citizens Fin Grp Inc v. Citizens Natl Bank
Precedential or Non-Precedential: Precedential

Docket No. 03-2868




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"Citizens Fin Grp Inc v. Citizens Natl Bank" (2004). 2004 Decisions. Paper 283.
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                         PRECEDENTIAL       District Judge: Honorable Donetta W.
                                                           Ambrose
IN THE UNITED STATES COURT OF                           ____________
            APPEALS
     FOR THE THIRD CIRCUIT                          Argued: April 21, 2004
          ____________
                                              Before: SCIRICA, Chief Judge,
      Nos. 03-2868 and 03-3175              ROSENN and GREENBERG, Circuit
           ____________                                  Judges

CITIZENS FINANCIAL GROUP, INC.                    (Filed: September 9, 2004)

                    v.                     Frederick W. Thieman (Argued)
                                           Thieman & Farrell
  CITIZENS NATIONAL BANK OF                436 Seventh Avenue
          EVANS CITY;                      2312 Koppers Building
     CITIZENS INC; CITIZENS                Pittsburgh, PA 15219
       NATIONAL BANK OF
   SOUTHERN PENNSYLVANIA                   David M. Kelly
                                           Andrea Anderson
      Citizens National Bank of Evans      Finnegan, Henderson, Farabow, Garrett &
        City and Citizens, Inc.,           Dunner
                                           1300 I Street, N.W .
      Appellants No. 03-2868               Washington, DC 20005
____________
                                           Ray F. Middleman
CITIZENS FINANCIAL GROUP, INC.             Malone, Larchuk & Middleman
                                           Northridge Office Plaza
        Appellant No. 03-3175              117 VIP Drive
                                           Northridge Office Plaza, Suite 310
                    v.                     Wexford, PA 15090

  CITIZENS NATIONAL BANK OF                       Counsel for Appellants in No. 03-
   EVANS CITY; CITIZENS INC;               2868
  CITIZENS NATIONAL BANK OF
   SOUTHERN PENNSYLVANIA                   Paul F. Ware, Jr. (Argued)
          ____________                     R. David Hosp
                                           Goodwin Procter
 Appeal from the United States District    53 State Street
                Court                      Exchange Place
For the Western District of Pennsylvania   Boston, MA 02109
        D.C. No.: 01-cv-01524
       Counsel for Appellant in No. 03-           CNBEC branches, and in addition some of
3175                                              the branches in Butler County were located
             ____________                         on the same streets. Upon learning of
                                                  CFG’s announcement of its plan to rename
       OPINION OF THE COURT                       the Mellon Bank branches in Pennsylvania
            ____________                          as Citizens Bank, CNBEC sent a cease and
                                                  desist letter to CFG requesting that CFG
                                                  not use “Citizens” as a name with respect
ROSENN, Circuit Judge.
                                                  to its Western Pennsylvania branches.
           This appeal presents a number of       CFG responded by filing this suit in the
questions arising out of a trademark              United States District Court for the
infringement dispute between two banking          Western District of Pennsylvania seeking
institutions. The dispute is an outgrowth         a declaratory judgment that CNBEC could
of aggressive and expansionist banking            not prevent it from using the name
f l o wi n g f rom the C ongressional             “Citizens.”      CNBEC answered the
liberalization in recent years of national        complaint by asserting affirmative
banking laws. Citizens National Bank of           defenses and a counterclaim alleging
Evans City (CNBEC) is a community bank            trademark infringement and unfair
founded in 1878 in Evans City,                    competition under § 43(a) of the Lanham
Pennsylvania, north of Pittsburgh, under          Act, 15 U.S.C. § 1125(a), and unjust
the name of Citizens Bank of Evansburgh.          enrichment.
In 1907, the bank became federally
                                                         CNBEC then filed a motion for a
chartered and adopted its current name.
                                                  preliminary injunction, which the District
The bank also has refered to itself as
                                                  Court denied following an evidentiary
“Citizens’” in its advertisem ents,
                                                  hearing. On appeal, this Court affirmed
promotional materials, and customer
                                                  the denial. Citizens Fin. Group, Inc. v.
communications. CNBEC now has sixteen
                                                  Citizens Nat’l Bank of Evans City, 30 Fed.
branches in the Northwestern region of
                                                  Appx. 24 (3d Cir. 2002). The parties then
Pennsylvania.
                                                  proceeded to a jury trial at which CNBEC
         The Citizens Financial Group, Inc.       asserted three counter-claims. CNBEC
(CFG) is a subsidiary holding company of          raised t w o claim s of trademark
the Royal Bank of Scotland. In July 2001,         infringement, first that CFG’s “Citizens
CFG purchased the retail banking                  Bank” mark infringed its mark of the word
operations of Mellon Bank and announced           “Citizens” standing alone, and second, that
that it would, and in December 2001 did,          CFG’s “Citizens Bank” mark infringed its
conve rt all Mellon branches in                   full “Citizens National Bank” mark.
Pennsylvania to “Citizens Bank” branches.         CNBEC also claimed that CFG’s conduct
CNBEC claimed that nine of these former           constituted unfair competition due to the
Mellon Bank branches were located near            confusing similarity of the marks and that


                                              2
CFG had been unjustly enriched by its                     CNBEC maintains 16 local
infringement.                                     branches in Northwestern Pennsylvania,
                                                  twelve in Butler County, three in Northern
        With regard to CNBEC’s
                                                  Allegheny County, and one in Armstrong
infringement claims, the jury found that
                                                  County. CNBEC acknowledges that the
CNBEC had tradem ark rights in
                                                  majority of its customers live in Butler
“Citizens,” that CFG’s use of the “Citizens
                                                  County, but asserts that its Allegheny
Bank” mark in CNBEC’s market was
                                                  County customers account for about 13%
likely to cause confusion with CNBEC’s
                                                  of its total accounts, 20% of its total
mark “Citizens,” but that CFG’s “Citizens
                                                  combined deposit/loan volume, and about
Bank” mark would not likely be confused
                                                  30% of its profits. CNBEC claims that as
with CNBEC’s “Citizens National Bank”
                                                  of August 1, 2001, it had 64,132 accounts
mark. The jury rejected CNBEC’s claim
                                                  in Butler County, 9,886 accounts
for damages regarding unfair competition
                                                  representing about $50 million in deposits
and unjust enrichment.
                                                  in Northern Allegheny County, 2,806
        The District Court thereupon              accounts in Beaver County, and 1,170
considered CNBEC’s motion for a                   accounts in Armstrong County. Prior to
permanent injunction. The Court refused           CFG’s entry into CNBEC’s marketplace,
to enjoin CFG’s use of its “Citizens Bank”        CNBEC had been the only “Citizens”
mark in CNBEC’s market. Instead, it               retail bank in the area.
molded the jury’s verdict of infringement
                                                          A. CNBEC Advertising
in favor of CFG on all of CNBEC’s claims
and sua sponte issued an injunction                      Over the years, CNBEC has spent
restraining CNBEC’s use of the “Citizens”         millions of dollars in advertising its
mark. The injunction requires CNBEC               services and diverse products under the
always to identify itself as “Citizens            marks “Citizens National Bank” and
National Bank” in the text of promotional         “Citizens.” It has advertised in Allegheny
material, advertisements and documents,           County in the North Pittsburgh edition of
despite the jury’s finding that CNBEC             the Post Gazette, the Tribune Review, and
maintained a protected interest in the            the North Hills News Record, as well as
“Citizens” mark standing alone. CNBEC             the Butler Eagle and some of the smaller
timely appealed, and CFG cross appealed.          newspapers in Butler and Armstrong
We hold that the District Court abused its        Counties. The number of advertisements
discretion by denying CNBEC’s motion              has varied depending upon its campaigns
for injunctive relief and issuing an              and targets at the time. From time to time,
injunction sua sponte against CNBEC.              CNBEC has also sponsored local
Therefore, we will affirm in part and             community events in its marketplace such
reverse in part.                                  as football programs, ballets, and other
                                                  sporting events and musical performances,
             I. Background
                                                  which have been a form of advertising.

                                              3
         CNBEC has also advertised                  “Citizens National Bank.” The record
campaigns on radio stations covering                contains more than seventy-five CNBEC
Allegheny and the surrounding counties              advertisements and promotional materials
and television station KDKA, which                  that refer to CNBEC as “Citizens”
covers Western Pennsylvania and the                 predating CFG’s acquisition of the Mellon
entire Greater Pittsburgh area. In addition,        banks. In another fifty instances,
it has placed flyers in customer statements,        “Citizens” appears as the first reference to
utilized billboards for outdoor advertising         the Bank. During 2001, the year CFG
in the Gibsonia, Slippery Rock and Butler           opened its doors in the CNBEC
areas, and for the past five years prior to         marketplace as “Citizens Bank,” CNBEC
the jury trial, it has maintained a wall            spent $366,000 for print advertising. In
painted on the Masonic Building in the              the year 2002, it spent $247,000 on print
City of Butler with its logo, the name              advertising.
“Citizens”and the tag line “The
                                                             B. Consumer Confusion
Uncommon Bank.” It also has placed
listings in numerous telephone directories                  In the town of Wexford in
circulated throughout the Pittsburgh area           Allegheny County, and in Butler,
and has issued numerous press releases              Zelienople, and Saxonburg in Butler
each year in its claimed market. CNBEC              County, CFG’s branches are located on the
has issued hundreds of thousands of its             same street as CNBEC’s branches. Both
checks and debit cards, carrying its mark,          banks frequently refer to themselves
to its customers and merchants.                     simply as “Citizens. CFG’s full-page
                                                    newspaper announcement in the Pittsburgh
        CNBEC witnesses testified that at
                                                    Post-Gazette of its acquisition of the
least since the 1950s, employees and
                                                    Mellon banks referred to itself as either
customers have referred to it as “Citizens.”
                                                    “Citizens” or “Citizens Bank” five times.
Competing banks in that market as well as
                                                    Another contained the headline “Welcome
the media also refer to CNBEC as
                                                    to Citizens,” and others referred to itself in
“Citizens.”
                                                    the text as simply “Citizens” with
        Since at least 1995, the bank policy        “Citizens Bank” and its logo at the bottom
with respect to the use of its name has             of the page.
been that the first time the bank’s name
                                                            Similar to CNBEC, CFG also
was used, the entire bank name, Citizens
                                                    introduced many financial products with
National Ba nk, s hould be used.
                                                    “Citizens” and with “Citizens Bank” and
Subsequent uses can be either “Citizens”
                                                    logo at the bottom of the ad. Examples are
or “Citizens National Bank.”             For
                                                    the introduction of banking products and
example, an advertisement offered in
                                                    services available for law firms, Citizens
evidence for CNBEC’s 18-month CD
                                                    SBA program, and Citizens business
carries at its top only “Citizens” but at the
                                                    owners, com merc ial banking and
bottom in much smaller print appears

                                                4
international services “by one of the              logos are remarka bly “similar in
largest banks in the world,” the Citizens          appearance.” Dr. Morrin opined that the
Circle Money Market Account, Citizens              word “national” in CNBEC’s name is not
Phone Bank, Citizens Fixed-Rate                    very helpful in enabling consumers to
Annuities, Citizens Circle Gold Checking           differentiate between the two banks
Account, and Citizens Business Premium             because “national” is commonly used in
Money Market Account.                              bank names, and it is an abstract word. It
                                                   is hard to visualize a concrete image of an
        CNBEC produced testimony of
                                                   abstract word, she testified, and “humans
CFG customers mistakenly doing business
                                                   have a hard time storing and retrieving
with CNBEC branches, attempting to cash
                                                   abstract words in their memory.”
CFG checks, depositing money and
making loan payments on CFG loans.                         Based on a survey of consumers in
CFG customers also used CNBEC’s ATM                the Pittsburgh area, Dr. Mital testified that
machines believing they were CFG’s and             an overwhelming majority shortened the
called CNBEC branches with respect to              bank’s name and referred to Citizens Bank
CFG accounts and promotions. CNBEC                 as “Citizens.” He also conducted a survey
employees alleged to have recorded more            of adult banking consumers in the four
than 2000 instances of confusion during            county area of Allegheny, Butler, Beaver,
the current litigation.                            and Armstrong. According to that survey
                                                   of 300 people, respondents supplied 1057
         CNBEC also produced at trial as
                                                   bank names. Of the 1057 names, 71% of
expert witnesses, Dr. Maureen Morrin of
                                                   those names were shortened. With respect
Rutgers University and Dr. Vihas Mital of
                                                   to Citizens Bank, 76% “shortened the
the University of Pittsburgh. Dr. Morrin
                                                   name to just ‘Citizen’ or ‘Citizens.’”
testified that CFG’s mark is likely to cause
consumer confusion because Citizens                        CFG admitted that CNBEC
National Bank and Citizens Bank are                customers tried to make deposits into CFG
essentially identical in consumers’ minds          accounts, make payment on CNBEC loans,
due to consumers’ tendency to shorten              cash CNBEC checks, or use ATMs at CFG
brand names in speech and memory. To               branches, all under the belief that they
consumers, CFG’s and CNBEC’s marks                 were banking with CNBEC. However,
are both “Citizens.” Moreover, Dr. Morrin          CFG claimed that the instances of
pointed out that both banks in their               confusion were minimal and decreased
promotional materials, print ads and web           after the conversion of Mellon branches to
sites commonly refer to themselves as just         Citizens Bank branches was completed.
“Citizens.”
                                                          CFG offered into evidence its
       Dr. Morrin also noted that another          trademark registration of the name
contributing factor to the likelihood of           “Citizens Bank” and its service mark in the
confusion is that the branch names and the         United States Patent and Trademark Office


                                               5
dated August 28, 2001, as well as federal          C. Jury Instructions, the Verdict and the
trademark registrations for various service       Injunction
marks such as Citizens Select Gold,
                                                         After instructing the jury generally
Citizens Circle and Citizens Nouvelle
                                                  on the law with respect to the burden of
Credit Program. All of these trademarks
                                                  proof, the Court informed the jury that it
and service marks were registered with the
                                                  would be the Court’s responsibility to
United States Patent Office between
                                                  determine whether CFG would prevail on
March 11, 1997 and March 18, 2003.
                                                  its claim seeking the right to use its
         CFG leveled its attack on                registered mark “Citizens Bank” in the
CNBEC’s claim of seniority to the use of          disputed areas of Pennsylvania. The Court
“Citizens” by eliciting evidence through          explained that the jury’s role would be to
cross examination of inconsistencies in the       determine whether CNBEC would obtain
testimony of CNBEC’s witnesses,                   judgment on its claims of trademark
exaggerations in its geographic claims as         infringement, unfair competition, and
to its market area, and the weakness of           unjust enrichment.
“Citizens” as a mark. CNBEC’s president,
                                                          The Court provided the jury with a
Margaret Wier, admitted that CNBEC had
                                                  general background in trademark law,
no trademark in the words “Citizens Bank”
                                                  noting that the two major objectives in the
and had not used those words to represent
                                                  law regarding trademarks are to protect
her institution. CFG also offered in
                                                  customers from becoming confused or
evidence a communication from an
                                                  misled as to the source from which
assist a n t in CN BE C’s m arketin g
                                                  products or services originate, and to
department, Sue Kushonardit, to CNBEC’s
                                                  protect the owner’s value and business
branch managers and commercial loan
                                                  goodwill associated with his or her
managers, advising them that “CFG’s
                                                  trademark. The Court explained that even
corporate colors are green and the logo is
                                                  though CFG obtained federal registration
uniquely different from our own.”
                                                  for its marks, CNBEC can still prevent
        Counsel for CFG developed                 CFG from using its registered marks in its
through cross examination of CNBEC’s              market area by demonstrating that CNBEC
president that its principal advertising          has a protected interest in the mark and
agency, Larson O’Brien Acumens, offered           that a likelihood of confusion would result
some suggestions to its vice-president,           if CFG also used the mark in the same
Betsy Rab, in February 2002, that would           market area. On the other hand, the Court
add to the confusion of the public with           noted that if there is no likelihood of
respect to the two banks, thereby                 confusion “between CFG’s Citizens Bank
strengthening CNBEC’s legal case.                 mark and CNBEC’s marks, then both
CNBEC’s president conceded that these             parties can use their respective marks in all
suggestions amounted to dirty tricks but          areas.”
CNBEC “did not implement any” of them.

                                              6
        The Court outlined for the jury the                  The Court concluded its jury
factors to be considered in determining              instruction with an explanation of the
whether there was a likelihood of                    damages sought by CNBEC and the
confusion and the weight to be given to              elements that must be proven for such
each. The Court explained that if CNBEC              relief. The Court then submitted to the
has established the right to the word                jury a verdict slip which contained fifteen
“Citizens” standing alone as a trademark,            questions. The first six questions and the
the jury must place the mark into one of             responses of the jury are pertinent to our
four groups in the spectrum of                       review.
distinctiveness. These four groups listed
                                                     QUESTION #1: Do you find that CNBEC
in order from the strongest to weakest are,
                                                     has proven by a preponderance of the
(1) fanciful and arbitrary, (2) suggestive,
                                                     evidence that CNBEC has used “Citizens”
(3) descriptive, and (4) generic. The Court
                                                     standing alone as a trademark?
commented that “fanciful or arbitrary and
suggestive marks are considered inherently           JURY: Yes.
distinctive and are entitled to immediate
                                                     QUESTION #2: Do you find by a
protection.” See also Checkpoint Sys.,
                                                     preponderance of the evidence that the
I n c . v . C h e c k P o i n t S o f t w a re
                                                     mark “Citizens” standing alone is ... (A)
Technologies, Inc., 269 F.3d 270, 282 (3d
                                                     generic, (B) merely descriptive, (C)
Cir. 2001) (explaining the four levels of
                                                     suggestive or arbitrary or fanciful?
trademark distinctiveness). 1
                                                     JURY:(C)
                                                     [The Jury was directed to skip to Question
  1
     The Court also instructed the jury on           #4]
the determination of whether CNBEC’s
                                                     QUESTION #4: Do you find by a
“Citizens” mark had acquired a
                                                     preponderance of the evidence that a
secondary meaning, whereby a
                                                     likelihood of confusion exists between
significant portion of the public
                                                     CFG’s Marks and CNBEC’s “Citizens”
associates banking services under the
                                                     standing-alone mark?
name “Citizens” as coming from a single
source. However, because the jury found              JURY: Yes.
the mark “Citizens” to be either
                                                     QUESTION #5: Do you find by a
suggestive or arbitrary/fanciful on the
                                                     preponderance of the evidence that a
distinctive scale, it was not required to
                                                     likelihood of confusion exists between
address secondary meaning in order to
find that CNBEC had a protected interest
in the “Citizens” mark and that there was
a likelihood of confusion with CFG’s                 descriptive mark may be entitled to
marks. See Checkpoint Sys., 269 F.3d at              strong protection if it has developed a
283 n.10 (describing how even a                      secondary meaning).

                                                 7
CFG’s Marks and CNBEC’s “Citizens                  the Court concluded that an injunction
National Bank” mark?                               would increase confusion rather than
                                                   prevent it. The Court reasoned that if CFG
JURY: No.
                                                   were required to change its name in
QUESTION #6: Do you find by a                      CNBEC’s market area as a result of an
preponderance of the evidence that                 injunction, it would still be required to
CNBEC has proven that is has been                  indicate to consumers that it was owned by
injured as a proximate result of CFG’s             or otherwise affiliated with Citizens Bank.
infringement?                                      Also contributing heavily to the Court’s
                                                   decision was a determination that there
JURY: No.
                                                   was evidence of “unclean hands” on the
         After answering “No” to Question          part of CNBEC in this litigation, and that
#6, the verdict slip informed that jury that       such evidence “is significant.” The Court
it had found a verdict in favor of CFG and         concluded that this factor weighed heavily
that its task was complete.                        against the granting of a full injunction. It
                                                   also believed that granting an injunction
        Several days later, the Court
                                                   against CFG would be difficult, if not
considered CNBEC’s application for a
                                                   impossible, to enforce because it had its
permanent injunction. Although labeled a
                                                   own trademark rights in areas other than
hearing, there was no jury, no evidence
                                                   CNBEC’s market area. The Court asserted
presented, or oral argument. The Court
                                                   that the use of broad ranged media for the
concluded on the briefs submitted by
                                                   purposes of advertisements and the
counsel for the parties that an injunction
                                                   increasing use of internet banking added to
against CFG should not issue. The Court
                                                   the difficulty. Instead of granting an
arrived at this result by balancing the
                                                   injunction against CFG, the Court sua
equities and considering the factors
                                                   sponte concluded that the principles of
enumerated in §35 of the Restatement
                                                   equity and the record in this case
(Third) of Unfair Competition (1995). The
                                                   compelled it to impose an injunction
Court determined that CNBEC had not
                                                   requiring CNBEC to use the term
proven bad faith or that CFG had
                                                   “National” as part of its name when it first
deliberately infringed on CNBEC’s marks.
                                                   refers to itself in any document,
It concluded that a full injunction directed
                                                   advertising, or promotion, regardless of the
to CFG would have devastating effects on
                                                   type or medium used.             The Court
its business and its customers, not only in
                                                   thereupon molded the verdict entered by
CNBEC’s market area but throughout
                                                   the jury and entered a verdict in favor of
Pennsylvania, a consequence even beyond
                                                   CFG on its declaratory judgment claim and
the scope sought by CNBEC. However, it
                                                   against CNBEC on all of its counterclaims.
did not offer a descriptive explanation for
this awesome prediction.                                    II. Evidentiary Rulings
        With respect to the public interest,              The four issues raised by CNBEC

                                               8
on appeal are: (1) the refusal of the               was conducted outside of CNBEC’s
District Court to enjoin CFG’s use of its           market. Reitter interviewed people at two
“Citizens Bank” mark after a jury                   malls in Allegheny County, Ross Park
determined that it infringed CNBEC’s                Mall and Robinson Towne Center. The
“Citizens” mark; (2) the District Court’s           Court agreed with CFG and excluded the
exclusion of CNBEC’s proffered expert               testimony. CNBEC now appeals this
testimony regarding a likelihood of                 evidentiary ruling. The District Court’s
consumer confusion between the parties’             decision to exclude proposed expert
marks; (3) the District Court’s exclusion of        testimony under Daubert v. Merrell Dow
e v i d e n c e of purported con s um er            Pharms., Inc., 509 U.S. 579 (1993), is
confusion; and (4) the Court’s admission            reviewed for an abuse of discretion.
of evidence of third-party use of the word          Montgomery County v. Microvote Corp.,
“Citizens” in trademarks outside of the             320 F.3d 440, 445 (3d Cir. 2003).
relevant marketplace and the Court’s
                                                            The District Court was concerned
subsequent jury instruction that these
                                                    about the propriety and trustworthiness of
third-party marks were relevant to a
                                                    Reitter’s survey. A “universe” is “that
determination of the commercial strength
                                                    segment of the population whose
of CNBEC’s “Citizens” mark.
                                                    perceptions and state of mind are relevant
        In its conditional cross-appeal to be       to the issues in the case.” McCarthy on
considered only if this Court reverses any          Trademarks and Unfair Competition §
of the District Court’s rulings, CFG                32:159 (4th ed. 2003). “A survey of the
contends that the District Court erred in           wrong ‘universe’ will be of little probative
admitting generalized hearsay testimony             value in litigation.” Id. The Court noted
concerning unspecified instances of                 that the proponent of the survey bears the
alleged confusion and in formulating its            burden of proving that the universe is
jury instruction concerning the definition          proper. Id.; see also 3A Callmann on
of “use” of the term “Citizens” for                 Unfair Competition, Trademarks and
purposes of acquiring trademark rights.             Monopolies § 21:67) (4th ed. 2001).
        We turn first to CNBEC’s                            It is not disputed that the consumer
arguments regarding the District Court’s            confusion at issue here is known as
evidentiary rulings.                                “reverse confusion.” “Reverse confusion
                                                    occurs when a larger, more powerful
  A. Exclusion of CNBEC’s Proffered
                                                    company [here, CFG] uses the trademark
          Expert Testimony
                                                    of a smaller, less powerful senior owner
       CFG filed a pre-trial motion to              [here, CNBEC] and thereby causes likely
preclude proposed expert testimony of               confusion as to the source of the senior
Robert Reitter on behalf of CNBEC on the            user’s goods or services.”             Fisons
ground that his survey relied on an                 Horticulture, Inc. v. Vigoro Industries,
“improper universe” because the survey              Inc., 30 F.3d 466, 474 (3d Cir. 1994). The

                                                9
District Court observed that “in reverse            allow Reitter to conduct the survey there.
confusion cases . . . the appropriate               Reitter also acknowledged that he could
universe is the ‘senior user’s [i.e.                have conducted the survey somewhere else
CNBEC’s] customer base.” Citizens Fin.              in Butler County, but it would have been
Group, Inc. v. Citizens Nat’l Bank of               more difficult.        How ever, “[t]he
Evans City, No. 01-1524, slip op. at 7              geographical area surveyed cannot be
(W.D. Pa. Apr. 23, 2003) (citing McCarthy           based on mere sampling convenience
§ 32:159).                                          rather than upon scientific or sampling
                                                    grounds.” McCarthy § 32:161.
         The Court then considered
evidence showing that CNBEC operated                       The Court further disagreed with
sixteen branches in Butler County, no               CNBEC’s argument that its “universe”
branches in Beaver County, one branch in            should include all of Allegheny County
Armstrong County, and three branches in             because it had a marketing presence
northern Allegheny County near the Butler           beyond Butler County in the Greater
County line. The District Court stated              Pittsburgh area. Specifically, the Court
“[f]or the past 108 years, CNBEC and its            noted that “[t]he scope, media type,
predecessors in interest have offered retail        volume, and frequency of [CNBEC’s]
banking services in this area and not               advertising and promotional efforts
beyond. Thus, in this case there can be no          regularly focus[ed] on Butler county, not
doubt that CNBEC’s customer ‘base’ is               Allegheny county,” and that “the evidence
within Butler county and extreme northern           indicates that CNBEC’s advertising and
Allegheny county rather than Allegheny              marketing efforts outside of Butler County
county as a whole.” Id. The Court noted             are sporadic.” Citizens Fin. Group, No.
that “[t]he closest CNBEC branches are 7            01-1524, slip op. at 9.The Court
and 17 miles, respectively, away from the           determined that any customers that
malls,” and the remaining branches were             CNBEC may obtain outside of their main
“further away.” Id. at 8.                           customer base of Butler County and
                                                    Northern Allegheny county would be “spill
        The Court disagreed with
                                                    over” which would not be a part of
CNBEC’s argument that the universe at
                                                    CNBEC’s customer base. Id. The Court
issue consisted of potential customers of
                                                    also rejected some of the methodology
both parties because the universe in a
                                                    used by Reitter in his survey questions as
reverse confusion case should be limited to
                                                    being vague, imprecise, overly inclusive,
the senior user’s customer base. See
                                                    or overly exclusive. Id. at 9-10.
McCarthy § 32:159; 3A Callmann § 21:67.
The Court noted that Reitter testified, and               Exercising its role as the
CNBEC acknowledged at the hearing, that             “gatekeeper” regarding the proffered
he and CNBEC would have preferred to                expert witness testimony, the Court
conduct the survey at Clearview M all in            concluded that Reitter’s report was too
Butler County but that mall refused to              fundamentally flawed to be admissible. Id.

                                               10
at 10. The Court therefore excluded the              of which relied on a single court decision,
proffered testimony under Daubert and                Sterling Drug, Inc. v. Bayer AG, 14 F.3d
F e d e r a l R ule of Evidence 702.                 733 (2d Cir. 1994), but that Sterling did
Alternatively, the Court excluded the                not support the Court’s exclusion.
testimony under Federal Rule of Evidence
                                                            CNBEC also takes issue with the
403, concluding that the danger of unfair
                                                     Court’s factual findings, contending that
prejudice far outweighed the minimum
                                                     shoppers at both malls have access to its
probative value of Reitter’s testimony. Id.
                                                     banking services, and that Reitter’s
at 11. See, e.g., Trouble v. The Wet Seal,
                                                     methodology and use of a “screener”
Inc., 179 F. Supp. 2d 291, 306-308
                                                     question was proper. Finally, CNBEC
(S.D.N.Y. 2001). The Court explained
                                                     argues that the Court’s “critique” of
that “[i]f the universe is skewed, then the
                                                     Reitter’s methodology should affect only
conclusion will similarly be skewed. If an
                                                     its weight but not its admissibility. See
expert, a person with special knowledge
                                                     Southland Sod Farms v. Stover Seed Co.,
and expertise, testifies as to the skewed
                                                     108 F.3d 1134, 1143 (9th Cir. 1997),
results, a jury is likely to give special
                                                     United States v. 88 Cases, etc., 187 F.2d
weight to the skewed conclusion.” Id.
                                                     967, 974 (3d Cir. 1951); 5 McCarthy §
        CNBEC argues that Reitter’s                  32:162 (selection of an inappropriate
survey constitutes highly probative                  universe generally affects the weight of
evidence of likelihood of confusion and              survey and not its admissibility).
that the Court erred in excluding the
                                                             In Sterling, 14 F.3d 733, a United
evidence from consideration by the jury.
                                                     States drug company sued Bayer AG, a
According to CNBEC, 152 of the 213
                                                     German drug company, for infringement
respondents, or 71%, exhibited “reverse
                                                     of the trademark “Bayer” in Sterling’s
confusion” either by identifying a CFG
                                                     market. Both companies held rights in the
location in response to the CNBEC
                                                     trademark for historical reasons. Id. at
advertisement or stating that the bank in
                                                     737. It was undisputed that Sterling was a
the CNBEC advertisement was affiliated
                                                     senior user of the trademark in its market.
with Mellon Bank.
                                                     Id. at 738. The Sterling court rejected
        CNBEC argues also that the Court             Bayer AG, the junior user’s, argument that
misinterpreted case law regarding the                a consumer survey regarding likelihood of
composition of an appropriate survey                 confusion should include Bayer AG’s
universe in a reverse confusion case.                customer base in the United States. Id. at
Specifically, it takes issue with the Court’s        741. The Court held that under the theory
conclusion that in a reverse confusion               of reverse confusion, as opposed to the
case, the universe is limited to the senior          traditional theory of confusion, the
user’s “customer base.” CNBEC argues                 universe was limited to the senior user’s
that the Court’s conclusion was based on             customer base. Id.
two treatises, McCarthy and Callman, both

                                                11
         Sterling’s holding was cited with           for a jury. The courts have held generally
approval by the two leading treatises and            that mere technical unreliability goes to the
was the position adopted by the District             weight accorded a survey, not its
Court here, that is, the proper universe             admissibility. See, e.g., Southland Sod
under CNBEC’s theory of reverse                      Farms, 108 F.3d at 1143. The Court in
confusion was limited to CNBEC’s                     this case concluded that Reitter’s survey
customer base, not to CFG’s customer                 did not suffer from mere technical flaws,
base. CNBEC interprets Sterling to mean              but from fatal flaws. Thus, the Court
that the universe should include consumers           appropriately fulfilled its duty as a
whose perceptions are at issue and have              gatekeeper in excluding this evidence.
access to the marks of both parties.
                                                             Finally, CNBEC has failed to show
However, in our view, Sterling does not
                                                     that the Court committed plain error in its
stand for such a proposition. The Sterling
                                                     findings of facts as to what constituted its
court stated that “[w]here, as here, the
                                                     customer base. The Court cited CNBEC’s
relevant issue is whether consumers
                                                     own documentary evidence to make the
mistakenly believe that the senior user’s
                                                     determination that it had business
products actually originate with the junior
                                                     primarily in Butler County and in the
user, it is appropriate to survey the senior
                                                     northern tip of Allegheny County.
user’s customers.” Id. at 741. Although
                                                     CNBEC has also failed to show that the
Sterling dealt with a difference between
                                                     Court committed plain error regarding
the junior and senior users’ customers
                                                     whether its shoppers at the two malls were
based on products, as opposed to different
                                                     within the universe of CNBEC’s customer
geographic regions, the rule is the same.
                                                     base and whether Reitter’s “screener”
The court should limit survey evidence in
                                                     question was proper. Accordingly, we
reverse confusion cases to the customers
                                                     hold that CNBEC has failed to show an
of the senior user. We do not believe that
                                                     abuse of discretion by the District Court
the District Court abused its discretion in
                                                     and affirm its ruling to exclude the
determining that the consumers surveyed
                                                     proffered expert testimony.
in this case were located outside of
CNBEC’s customer base.                          B.         Exclusion of Certain Written
                                                     Evidence Purporting to Show Instances of
        CNBEC’s argument that any
                                                     “Actual Confusion”
problems of Reitter’s survey should have
affected only its evidentiary weight but not
its admissibility is also unpersuasive. The
                                                             CNBEC also attacks the District
District Court excluded the survey because
                                                     Court’s establishment of guidelines to
Reitter’s methodology was fundamentally
                                                     insure that CNBEC’s “confusion log”
flawed and because the danger of undue
                                                     entries prepared by CNBEC’s employees
prejudice far outweighed the limited
                                                     satisfied the Federal Rules of Evidence
probative value of the survey, especially
                                                     before being admitted. CFG filed a

                                               12
pretrial motion to exclude CNBEC’s                           In general, “actual confusion”
“confusion log” entries as inadmissible              evidence collected by employees of a party
hearsay.    CNBEC conceded that log                  in a trademark action must be viewed with
entries were hearsay, but argued that they           skepticism because it tends to be biased or
fell within the present sense impression             self-serving. See Checkpoint Sys., 269
exception under Fed. R. Evid. 803(1). The            F.3d at 298 (“the District Court properly
Court granted in part and denied in part             took into account the potential bias of the
CFG’s motion and established guidelines              Checkpoint System’s employees who
for the admissibility of CNBEC’s log                 testified [regarding actual confusion].”); A
entries under the “present sense”                    & H Sportswear, Inc. v. Victoria’s Secret
exception.                                           Stores, Inc., 237 F.3d 198, 227 (3d Cir.
                                                     2000) (“The District Court, while not
         CNBEC does not dispute the
                                                     explicitly discrediting this evidence,
Court’s disposition of its argument
                                                     viewed it with great skepticism, given the
regarding the exceptions to the hearsay
                                                     interested sources and the inability to
rule.      Rather, CNBEC specifically
                                                     cross-examine the supposedly confused
challenges the Court’s two guideline
                                                     individuals.”). It was, therefore, proper for
requirements: requiring log entries to (1)
                                                     the District Court here to establish
“specifically mention Mellon or CFG” and
                                                     guidelines to ensure that the evidence met
(2) “describe the specific evidence of the
                                                     the standards of the Federal Rules of
direct link to Mellon or CFG in either the
                                                     Evidence.
form of (a) ‘documentary evidence,’ such
as specifically referring to a deposit slip,                 Witnesses for both CFG and
or (b) ‘a clear and specific statement by the        CNBEC acknowledged that customer
customer.’” Citizens Fin. Group, No. 01-             confusion between banks frequently
1524, slip. op. at 14. The guidelines also           occurred, regardless of bank names.
required exclusion of log entries that               “Ownership of a trademark does not
reflected “the thought process, conclusion,          guarantee total absence of confusion in the
analysis or interpretation” of the CNBEC             marketplace. Selection of a mark with a
employees who recorded the entries. Id. at           common surname naturally entails a risk of
15. CNBEC asserts that the Court “[cited]            uncertainty and the law will not assure
no legal support and [articulated] no                absolute protection.” Scott Paper Co. v.
rationale for its heightened evidentiary             Scott’s Liquid Gold, Inc., 589 F.2d 1225,
requirements” and that the Court’s                   1231 (3d Cir. 1978). The Court was
requirements were inconsistent with the              familiar with the evidence gathered during
standards of admissibility under Fed. R.             discovery and was in the best position to
Evid. 803(1). We review the District                 determine the safeguards for relevance and
Court’s guidelines for abuse of discretion.          reliability in this case. The Court did not
United States v. Saada, 212 F.3d 210, 220            abuse its discretion in requiring CNBEC’s
(3d Cir. 2000).                                      written evidence to specifically refer to


                                                13
     CFG or Mellon to ensure that the jury
     received only relevant evidence. Saada,
                                                                        CFG introduced evidence showing
     212 F.3d at 220.
                                                                 that “Citizens” was commonly used by
              Likewise, the Court did not abuse                  banks both in Pennsylvania and throughout
     its discretion in requiring CNBEC’s                         the United States: 8 banks, in addition to
     evidence to exclude entries that reflected                  CFG, use “Citizens” in Pennsylvania;
     the thought process, conclusion, or                         banks with “Citizens” in their name
     interpretation of the CNBEC employees                       coexist in six zip codes in Pennsylvania;
     who recorded the entries. It was proper for                 more than 350 FDIC-insured banks use
     the Court to make such requirement under                    “Citizens” in their trade names throughout
     Fed. R. Evid. 803(1). See United States v.                  the United States and they operate more
     Guevara, 277 F.3d 111, 127 (2d Cir. 2001)                   than 2,400 separate branches; “Citizens” is
     (upholding determination that hearsay                       the ninth most commonly used bank name;
     statements did not qualify as “present                      and approximately 4% of FDIC-insured
     sense impression” under Rule 803(1)                         banks have Citizens in their names.
     because they “were conclusions based                        CNBEC appeals from the District Court’s
     upon information [the recorder] had                         denial of its motion in limine to exclude
     processed rather than contemporaneous or                    evidence of widespread third-party use of
     spontaneous statements that were                            Citizens-formative trademarks outside its
     inherently trustworthy”) reh’g denied, 298                  market area.
     F.3d 182 (2 nd Cir. 2002); Vitek Sys., Inc. v.
                                                                         In this case, the jury found that
     Abbott Labs., 675 F.2d 190, 194 (8th Cir.
                                                                 CNBEC had used the mark “Citizens,” that
     1 9 8 2 ) ( c o n c lu d i n g t h a t h e a r s a y
                                                                 the mark was very distinctive (either
     memorandum did not qualify as present
                                                                 “suggestive,” “arbitrary,” or “fanciful),
     sense impression because company sought
                                                                 and that there was a likelihood of
     to elicit its employee’s evaluation of the
                                                                 confusion between CFG’s marks and
     customer’s thought process). Nonetheless,
                                                                 CNBEC’s “Citizens” mark. Thus, the
     the District Court’s guidelines permitted
                                                                 jury found infringement by CFG, and
     written hearsay evidence that reflected “an
                                                                 CNBEC prevailed on this claim. Yet,
     explanation or description of the event
                                                                 CNBEC argues that the Court erred in
     rather than a narration.” The guidelines
                                                                 allowing evidence of widespread third
     conformed to the requirements of Rule
                                                                 party use because it “is not relevant to
     803(1). We, therefore, conclude that the
                                                                 determining the strength of CNBEC’s
     Court did not abuse its discretion and did
                                                                 mark within its marketplace.” We need
     not err in setting up the guideline
                                                                 not tarry on this issue. First, as a general
     requirements.
                                                                 rule, widespread use of even a distinctive
C.          The Discussion of Evidence of                        mark may weaken the mark. See, e.g.,
     Widespread Third-Party Use of the Word                      Petro Stopping Ctrs, L.P. v. James River
     “Citizens” by Other Banking Institutions                    Petroleum, Inc., 130 F.3d 88, 93-94 (4th

                                                            14
Cir. 1997) (explaining how evidence of                       the case that makes the
broad third party use of a suggestive mark                   jury’s answers to special
may be relevant to show the weakness of                      interrogatories consistent,
the mark). Thus, we believe this evidence                    they must be resolved that
was likely relevant.         Further, any                    way. For a search for one
conceivable error was harmless because                       possible view of the case
the jury found in favor of CNBEC on this                     which will make the jury’s
issue of infringement and the strength of                    findings inconsistent results
its mark. Accordingly, we will not reverse                   in a collision with the
the admission of this testimony.                             Seventh Amendment.
         III. Molding the Verdict
        Announcing its decision to deny                      Our circuit has interpreted Atlantic
injunctive relief to CNBEC, and instead to            & Gulf Stevedores to mean that “a verdict
enjoin CNBEC, the District Court                      must be molded consistently with a jury’s
explained that it was “molding the verdict            answers to special interrogatories when
entered by the jury and entering a verdict            there is any view of the case which
in favor of CFG and against CNBEC on                  reconciles the various answers.” McAdam
the declaratory judgement claim and on all            v. Dean Witter Reynolds, Inc., 896 F.2d
counterclaims filed by CNBEC against                  750, 763 (3d Cir. 1990) (quoting Bradford-
CFG.” This “molding” is troublesome,                  White Corp. v. Ernst & Whinney, 872 F.2d
given that the jury found that CNBEC had              1153, 1159 (3d Cir. 1989), cert. denied,
a protected interest in the mark “Citizens,”          493 U.S. 993 (1989) (emphasis added).
and that there was a likelihood of                    Thus, trial courts must proceed “under a
confusion between the marks, constituting             constitutional mandate to search for a view
CFG’s infringement on CNBEC’s mark.                   of the case that makes the jury’s answers
The District Court had informed the jury              consistent.” McAdam, 896 F.2d at 764
during its instructions that “if you find that        (quoting United States v. 0.78 Acres of
there is a likelihood of confusion caused             Land, More or Less, 81 F.R.D. 618, 621
by CFG’s use of the mark Citizens Bank,               (E.D.Pa. 1979) aff’d without opinion, 609
then CNBEC will be able to prevent CFG                F.2d 504 (3d Cir. 1979).
from using the mark Citizens Bank in
                                                              In our view, the District Court’s
those areas where CNBEC has established
                                                      “molding” in this case has produced a
a significant market presence.”
                                                      collision with the Seventh Amendment.
        The Supreme Court observed in                 T h e D is t r ic t C o u r t su b m i t t e d
Atlantic & Gulf Stevedores, Inc. v.                   interrogatories to the jury under Fed. R.
Ellerman Lines, Ltd., 369 U.S. 355, 364               Civ. P. 49(b) to decide those issues of fact
(1962):                                               necessary for a verdict. In response to the
                                                      Court’s first interrogatory, the jury found
        Where there is a view of

                                                 15
in the affirmative that CNBEC had proven                    The problem which triggered the
that it had used “Citizens” standing alone          molding of the verdict originated with the
as a trademark. In response to the second           Court’s framing of the sixth interrogatory.
interrogatory, it found that the mark               The Court presided over the lengthy and
“Citizens” standing alone was suggestive,           complex trial before the jury patiently and
arbitrary or fanciful. Skipping to the              competently.        In framing the sixth
fourth interrogatory, the jury also found in        interrogatory, however, the District Court
the affirmative that a likelihood of                erroneously formulated the question in
confusion existed between CFG’s mark                terms of “injury,” rather than in terms of
and CNBEC’s “Citizens” standing-alone               monetary damages or unjust enrichment.
mark. Taken together, these responses               “Injury” is a much broader concept than
constituted a finding that CFG had                  the issues of money damages or unjust
infringed on CNBEC’s trademark.                     enrichment which were properly before the
However, in the sixth interrogatory, the            jury in this case. An injury is “any wrong
jury found that CNBEC had not been                  or damage done to another, either to his
“injured” by the infringement, meaning              person, rights, reputation, or property.”
that no money damages would be awarded.             Black’s Law Dictionary (5th ed. 1979).
                                                    Restatement (Second) of Torts § 7 (1965)
                                                    defines injury as “the invasion of any
        The critical question in “molding”
                                                    legally protected interest of another.” The
cases such as this is “whether the jury’s
                                                    jury, however, was not asked to decide the
answers in the verdict are necessarily
                                                    legal rights of the parties; its function was
inconsistent with each other.” Loughman
                                                    to find facts regarding infringement and
v. Consol-Penn. Coal Co., 6 F.3d 88, 104
                                                    arrive at a verdict regarding CNBEC’s
(3d Cir. 1993). Upon review, we hold that
                                                    claims for monetary relief. The District
the jury’s findings in this case were not
                                                    Court instructed the jury that if it found for
inconsistent, and no molding was
                                                    CNBEC on unfair competition and its
necessary to harmonize them.         It is
                                                    trademark infringement claims, it must
completely feasible under trademark law
                                                    determine whether “CFG be required to
that a trademark owner may infringe on
                                                    pay CNBEC the monetary damages that
another’s mark, and yet the senior user
                                                    CNBEC sustained as a consequence of
may not suffer any economic damages.
                                                    CFG’s wrongful acts.” The Court defined
The “molding” in this case only became
                                                    actual damages as meaning “the amount of
necessary when the District Court decided
                                                    money that will reasonably and fairly
that despite the jury’s finding of
                                                    compensate CNBEC for an injury you find
infringement by CFG over CNBEC’s
                                                    was caused by CFG’s use of the mark
senior rights, it would still grant
                                                    ‘Citizen’s Bank.’” Pursuant to its jury
declaratory judgment in favor of CFG,
                                                    instructions, the Court should have molded
thereby allowing CFG to use its registered
                                                    the jury verdict, as it may now be required,
trademark in CNBEC’s market area.
                                                    to reflect the sixth interrogatory to the jury

                                               16
as though it were framed in terms of               turn to the District Court’s ruling on
money damages and unjust enrichment                CNBEC’s motion for a permanent
rather than “injury.”                              injunction.
        We have clearly held that                          Several days after the jury returned
“trademark infringement amounts to                 its verdict, the District Court turned to
irreparable injury as a matter of law.”            CNBEC 's motion for a permanent
Gucci Am., Inc. v. Daffy’s, Inc., 354 F.3d         injunction to enjoin CFG from offering or
228, 237 (3d Cir. 2003) (quoting S & R             advertising retail banking services under
Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d          the mark "Citizens Bank" in CNBEC's
371, 378 (3d Cir. 1992)). Therefore, the           claimed market area. The judge apparently
jury’s finding of “no injury” must be              had received memoranda on the issue, but
limited to the context of economic                 took no new testimony, evidence or oral
damages. The jury verdict may not be               argument. Without citing any authority
used to supplant the principle that CFG’s          except the factors set forth in Restatement
infringement constitutes a legal injury to         (Third) of Unfair Competition § 35, the
CNBEC as a matter of law. The District             judge delivered an oral opinion denying
Court’s molding of the jury’s verdict to           CNBEC’s motion. Based on the jury
encompass a lack of injury beyond the              verdict finding no likelihood of confusion
money damages was in error. It was this            between CFG’s marks and CNBEC’s full
error that led the Court to enter judgment         mark of “Citizens National Bank,” the
for CFG on its complaint for declaratory           Court, sua sponte imposed an injunction
judgment.      Accordingly, the District           on CNBEC requiring it to use the term
Court’s molding of the verdict and the             “National” as part of its name “when it
entry of declaratory judgment for CFG will         first refers to itself in any document,
be reversed. Upon remand, the District             advertising or promotion regardless of type
Court is instructed to vacate the judgment         or medium used.”
and to enter judgment in accordance with
                                                           On appeal, CNBEC argues that the
the jury’s finding of infringement by CFG,
                                                   District Court erred by enjoining it from
consistent with this opinion.
                                                   using its shortened “Citizens” mark, and
           IV. The Injunction                      failing to grant its application for a
                                                   permanent injunction against CFG.
        Although we have stated that
                                                   Further, CNBEC argues that this Court had
trademark infringement is an “irreparable
                                                   never endorsed the “Restatement Factors”
injury as a matter of law,” id., we have
                                                   that the District Court relied on to reach its
also held that “the irreparable injury we
                                                   decision.
referred to was not intended to swallow the
remaining prongs of the permanent                         The Restatement (Third) of Unfair
injunction inquiry.” Gucci, 354 F.3d at            Competition § 35(2), upon which the
237. With that admonition in mind, we              District Court relied, states:


                                              17
         The appropriateness and scope of              evaluate the “balance of harm” before the
injunctive relief depend upon a                        ultimate determination of infringement.
comparative appraisal of all the factors of            AM Gen. Corp. v. Daimler Chrysler Corp.,
the case, including the following primary              311 F.3d 796, 804 (7th Cir. 2002); Lermer
factors:                                               & Germany GmbH v. Lermer Corp., 94
                                                       F.3d 1575, 1577 (Fed. Cir. 1996).
        (a) the nature of the interest to be
protected;                                                     We review a District Court’s
                                                       decision to grant or deny a permanent
      (b) the nature and extent of the
                                                       injunction under an abuse of discretion
wrongful conduct;
                                                       standard. A.C.L.U. of N.J. v. Black Horse
        (c) the relative adequacy to the               Pike Reg’l Bd. of Educ., 84 F.3d 1471,
plaintiff of an injunction and of other                1476 (3d Cir. 1996). “An abuse of
remedies;                                              discretion exists where the District Court’s
                                                       decision rests upon a clearly erroneous
         (d) the relative harm likely to result
                                                       finding of fact, an errant conclusion of
to the legitimate interests of the defendant
                                                       law, or an improper application of law to
if an injunction is granted and to the
                                                       fact.” Id. (quoting Int’l Union U.A.W. v.
legitimate interests of the plaintiff if the
                                                       Mack Trucks, Inc. 820 F.2d 91, 94 (3d Cir.
injunction is denied;
                                                       1987)). “[W]e will not interfere with the
        (e) the interests of third persons             district court's exercise of discretion
and the public;                                        ‘unless there is a definite and firm
                                                       conviction that the court . . . committed a
        (f) any unreasonable delay by the
                                                       clear error of judgment in the conclusion it
plaintiff in bringing suit or otherwise
                                                       reached upon a weighing of the relevant
asserting his rights;
                                                       factors.’” Morgan v. Perry, 142 F.3d 670,
         (g) any related misconduct on the             683 (3d Cir. 1998) (citation omitted).
part of the plaintiff; and
                                                               We are hesitant to endorse any
       (h) the practicality of framing and             finite set of factors for consideration in
enforcing an injunction.                               determining the equities of injunctive
                                                       relief. In fact, the District Court prefaced
                                                       its consideration of these factors with the
        CNBEC          a r g ues that th e             statement that “equity is the key
Restatement Factors have not been                      consideration in determining a proper
adopted by the courts because they are ill-            remedy once a likelihood of confusion
suited for the task of crafting permanent              exists.” Even the Restatement (Third) of
injunctive relief. The factors, it asserts,            Unfair Competition § 35(2) explains that
are better suited in considering preliminary           weighing injunctive relief requires “a
injunctions, which are extraordinary                   comparative appraisal of all the factors of
remedies requiring courts to carefully                 the case.” In order to determine whether

                                                  18
the District Court abused its discretion in          jury, not the nature of the mark owner’s
this matter, however, we must review the             interest to be protected. The District Court
Restatement Factors that were considered.            should have focused instead on the actual
                                                     interests to be protected, i.e. the public
         The first factor, the nature of the
                                                     interest in avoiding confusion and
interest to be protected, weighed in favor
                                                     CNBEC’s interest in maintaining control
of denying the injunction according to the
                                                     over its mark and avoiding injury to
District Court. The Court explained that
                                                     reputation and goodwill. We see nothing
even though the jury found “Citizens”
                                                     in this factor which favors the infringer.
standing alone to be CNBEC’s lawful
trademark, 12 U.S.C. § 22 requires that                     As to the second factor, the nature
CNBEC “include in its name the word                  and extent of the wrongful conduct, the
‘national’ when identifying itself.”                 Court was not persuaded that CFG acted in
However, this federal statute relating to the        bad faith or that it deliberately infringed on
organization’s Certificate of National               CNBEC’s mark. CFG may not have acted
Banking Association only requires that               in bad faith, but it deliberately advertised
persons uniting to form such associations            in the marketplace where CNBEC had
“shall . . . make an organization certificate        engaged in banking for over one hundred
which shall specifically state: first, the           years without any trademark infringement.
name assumed by such association; which              CFG did not enter CNBEC’s marketplace
shall include the word ‘National.’” 12               inadvertently; its conduct was deliberately
U.S.C. § 22. Nothing in this statutory               conceived, planned and implemented by a
language inhibits a national bank from               large and aggressiv e fina ncial
using a diminutive of its name for                   organization. Thus, although we accept
advertising purposes, especially when it is          the District Court’s determination that
so known by its customers or the                     CFG did not act in bad faith, we see
community it serves.         Moreover, the           nothing in this factor that weighs against
statute expressly requires that the name             an injunction.
“National” be used in the organization
                                                             Regarding the third factor, the
certificate; it does not address other
                                                     relative adequacy to CNBEC of an
situations in which the name may be used,
                                                     injunction, the Court again relied on its
and certainly not in advertising media. We
                                                     overly broad interpretation of the federal
see no basis in the statute to support the
                                                     statute requiring the inclusion of the word
District Court’s assertion.
                                                     “National” in CNBEC’s name. The Court
        The Court also explained under the           concluded that CNBEC “can protect the
first factor that hundreds of banks                  values of its trademark” without a
throughout the United States use                     permanent injunction prohibiting CFG
“Citizens” in their name. Yet, this inquiry          from using its mark. For the reasons we
is appropriate for determining the strength          set forth in our discussion of the first
of the mark, which was determined by the             factor, this conclusion of law, although the

                                                19
District Court stated it as a finding, is            Such a limited injunction could in no way
without any legal or factual basis. Even             “potentially prevent” CFG from using its
though CNBEC may be able to avoid some               name throughout Pennsylvania. With a
confusion by using the word “National” in            giant institution operating hundreds of
its name, the equities do not necessarily            branches throughout the east coast of the
support forcing CNBEC to take such                   United States, it is an enormous stretch of
measures given that it is the senior user of         imagination to conclude that an injunction
the “Citizens” mark and the victim of                l i m i t e d t o s e v e r a l c o u n t i e s in
trademark infringement.                              Pennsylvania would have “devastating
                                                     effects on CFG’s business and customers.”
         In the fourth factor, a balancing of
                                                     The record does not support this broad
the relative harm to the legitimate interests
                                                     statement.
of the parties if the injunction is denied,
the Court concluded that “[a] full                           Furthermore, in considering this
injunction would have devastating effects            factor, the District Court ignored the jury’s
on CFG’s business and its customers” and             finding that CFG’s use of the “Citizens
that “it would potentially prevent CFG               Bank” mark in the CNBEC market area
from using its name not just in CNBEC’s              created a likelihood of public confusion
market area, but throughout Pennsylvania             that could harm CNBEC’s interest in its
. . . .” There is nothing in the record to           mark.      The Court simply stated in
support these conclusions. First, CNBEC              conclusory fashion that CNBEC “has
seeks to enjoin CFG, at most, from                   failed to demonstrate damage to its
offering or advertising retail banking               reputation and goodwill” as a result of
services under the mark “Citizens Bank”              CFG’s infringement.          This statement
only in Allegheny, Armstrong, Beaver and             disregards the record that undisputably
Butler counties, and not the rest of                 shows CNBEC has operated as a bank, at
Pennsylvania. The District Court also                least in Butler County, for over one
noted that CNBEC did not prove it had                hundred years and has built substantial
penetrated the market in Armstrong and               community goodwill that it seeks to
Beaver counties and in the Greater                   protect in the future. As we noted in
Pittsburgh area.                                     Commerce Nat’l Ins. Servs., Inc. v.
                                                     Commerce Ins. Agency, Inc., a similar
        Thus, an injunction could be easily
                                                     case involving reverse confusion, “[w]e
tailored to CNBEC’s proven market area,
                                                     think it a reasonable inference that during
a modest part of Western Pennsylvania.2


                                                     persons eighteen years and older; Beaver
  2
    According to the United States                   County, 140,350; Butler County,
Federal Census of 2000, of which we                  131,235; and all of Allegheny County,
take judicial notice, all of Armstrong               including the Greater Pittsburgh Area,
County had only a population of 55,818               1,000,490.

                                                20
those thirteen years, [the senior user] was            Jaycees v. Phila. Jaycees, “avoidance of
able to build up substantial goodwill for its          confusion should always be a major
general insurance services under [its]                 concern of a court in a trademark case,”
mark.” 214 F.3d 432, 443 (3d Cir. 2000)                and “actual confusion need not be shown.
(footnote omitted). In this case, too, we              Rather, only the likelihood of confusion is
believe that after the use of CNBEC’s                  required.” 639 F.2d 134, 142 (3d Cir.
trademark name in a limited rural area of              1981). We further stated in that case,
Western Pennsylvania over many years, its              “[p]rotection of infringers is not a purpose
expansion in that area during this period,             of the Lanham Act. On the contrary, the
and the record of its consistent and broad             Act’s objective is the protection of the
advertisement of its business and name                 trademark and the public.” Id. We
over those many years, one can reasonably              recognize the District Court’s legitimate
infer that infringement against CNBEC’s                concern that a strict injunction against
trademark will adversely affect its                    CFG could cause further public confusion
reputation and goodwill. Balancing the                 for CFG’s customers, particularly
relative harm to the legitimate interests of           considering CFG’s national scope and the
the parties clearly favors CNBEC and not               proliferation of internet banking.
the infringer.                                         However, potential public confusion
                                                       should not be considered to the exclusion
        As to the fifth factor, the interest of
                                                       of trademark protection. Rather, we
third parties and the public, the District
                                                       believe that in this case this factor should
Court was of the opinion that a permanent
                                                       be read as a mandate to craft injunctive
injunction, as requested, would increase
                                                       relief that will minimize confusion, rather
confusion rather than prevent it. It reached
                                                       than abandoning injunctive relief all
this conclusion on the supposition that an
                                                       together.
injunction would require CFG to change
its name, but CFG still would be required                       As to the sixth factor, delay in suing
to indicate to consumers “that it was                  the infringer, the Court found no delay on
owned by or otherwise affiliated with                  the part of CNBEC in bringing its claims.
Citizens Bank.” A tailored permanent                   Thus, the Court did not consider this factor
injunction, however, need not affect the               important.      Because CNBEC did act
name for CFG’s hundreds of branches                    promptly to protect its rights, we believe
outside of the limited area constituting               that if this factor is to be given any weight,
CNBEC’s market area. A permanent                       it would favor CNBEC’s application for
injunction need not require that CFG                   injunction.
operate any branches in CNBEC’s
                                                              The Court considered that the
marketplace, nor would it bar CFG from
                                                       seventh factor, misconduct on the part of
operating an independent affiliate under a
                                                       CNBEC, weighed heavily against the grant
different name in the enjoined areas.
                                                       of an injunction.     CFG alleges that
        As we stated in United States                  CNBEC dropped the word “National” in

                                                  21
its advertisements following CFG’s                         p l a i n ti f f a g a i n s t t h e
entrance in the market in order to increase                transgression which, it is
confusion and advance its litigation                       c o n t e n d e d , s e rves to
strategy. The Court concluded that there                   foreclose that right.
was evidence in e-mails and memos from
CNBEC’s marketing team and other
employees “that indicated that CNBEC                Id.
took affirmative actions aimed at
                                                           In a trademark infringement action,
increasing confusion to further their own
                                                    “the court must show solicitude for the
efforts in this case.” These efforts, the
                                                    public in evaluating an unclean hands
Court found, all occurred after CFG
                                                    defense.”       Donoghue v. IBC/USA
announced its intention to enter the
                                                    (Publications), Inc., 886 F. Supp. 947, 954
market. The Court believed this “clear
                                                    (D. Mass. 1995). Because a central
evidence of unclean hands is significant.”
                                                    concern in an unfair competition case is
         Although there is some evidence of         protection of the public from confusion,
at least consideration of a plan by CNBEC           courts require clear, convincing evidence
to enhance their litigation position, the           of “egregious” misconduct before
District Court took a severe view of the            invoking the doctrine of unclean hands.
evidence and allowed this evidence to               Ciba-Geigy Corp. v. Bolar Pharm. Co.,
overshadow the merits of the plaintiff’s            Inc., 747 F.2d 844, 855 (3d Cir. 1984).
claim and the public’s interests. See               Furthermore, “the extent of actual harm
Republic Molding Corp. v. B.W. Photo                caused by the conduct in question, either to
Utilities, 319 F.2d 347, 350 (9th Cir. 1963)        the defendant or to the public interest, is a
(“Unclean hands, then, does not stand as a          highly relevant consideration.” Republic
defense that may be properly considered             Molding Corp., 319 F.2d at 349-350.
independent of the merits of the plaintiff's
                                                           There is very little evidence in this
claim . . . .”).
                                                    case that the thoughts or suggestions of
        In the interests of right and               CNBEC’s advertising agencies or its
        justice the courts should                   marketing team were ever implemented or
        not automatically condone                   carried into effect. Whether CNBEC
        the defendant’s infractions                 executives disapproved or rejected those
        because the plaintiff is also               ideas or suggestions is not clear in this
        b lam ew or th y, ther e by                 record, but it is clear that any actual
        having two wrongs                           implementation of this strategy was minor.
        unremedied and increasing                   The District Court, in its oral opinion,
        the injury to the public.                   referred to evidence of e-mails from
        Rather the court must                       CNBEC’s marketing teams and its ad
        weigh the substance of the                  agencies “regarding a change in the ads to
        right asserted by the                       make its ads seem more like those of

                                               22
CFG.” The Court, however, did not point               evidence that CNBEC employees
to any advertisements that CNBEC used to              discussed amendments to a limited number
implement these changes.                              of advertisements in order to enhance its
                                                      litigation position, the evidence does not
         CFG argues that CNBEC amended
                                                      support “egregious” conduct on the part of
its policy of referring to itself in the first
                                                      CNBEC to create consumer confusion.
instance as “Citizens National Bank,” and
                                                      This evidence may also be explained as
began using “Citizens” alone more
                                                      CNBEC’s attempt to hold its ground by
frequently to highlight the similarity with
                                                      utilizing its “Citizens” mark, rather than
CFG’s marks. CFG points to one ad that
                                                      conceding the name to CFG. Any effort
was run originally in 2000, and again in
                                                      by CNBEC to assert the name “Citizens,”
2002, where the 2002 version shortened its
                                                      which CNB EC spent many years
name in the text of the add from “Citizens
                                                      cultivating as a recognizable trademark,
National Bank” to “Citizens.” CNBEC
                                                      does not automatically require a finding of
counters this claim, explaining that its
                                                      unclean hands.          Furthermore, the
internal communication guidelines from
                                                      speculative evidence presented by CFG
1995, prior to CFG’s entrance, state clearly
                                                      does not include any actual instances of
that the bank will refer to itself as either
                                                      consumer confusion based on CNBEC’s
“Citizens National Bank” or “Citizens” in
                                                      actions. We do not believe that the
all c o m mu nications.          Theref ore ,
                                                      isolated documents produced by CFG and
particu larly w h e n C N B E C ’s ads
                                                      relied on by the District Court constitute
prominently display the CNBEC logo with
                                                      clear, convincing and u nequ ivocal
“Citizens National Bank” in large print in
                                                      evidence that would reasonably support a
the layout as a first reference, the bank
                                                      finding of unclean hands. Kearney &
may refer to itself with either its full or
                                                      Trecker Corp. v. Cincinnati Milacron, Inc.,
shortened name in the text of an ad and
                                                      562 F.2d 365, 371 (6th Cir. 1977). We
still be within its guidelines.
                                                      hold that the District Court’s heavy
       CFG also argues that CNBEC                     reliance on the doctrine of unclean hands
created a welcome letter for new                      to justify its denial of injunctive relief
customers stating “[y]ou may have already             improperly weighted that evidence to the
noticed that Citizens is not your ordinary            exclusion of the merits of CNBEC’s claim
bank,” in an attempt to create confusion              and the public interest, and constituted an
with CFG’s tagline of “not your typical               abuse of discretion.
bank.” However, CNBEC explained that
                                                             The District Court also concluded
this sentence referred to a marketing
                                                      that the last factor, the practicality of
phrase “Beyond the Ordinary,” which
                                                      framing and enforcing an injunction,
CNBEC had used well before CFG entered
                                                      weighs in favor of denying a permanent
the market.
                                                      injunction. It observed that CFG “is a
        We believe that although there is             large bank with many branches and


                                                 23
consumers spanning a large geographical              mark in “Citizens” standing alone and the
area over many states” and that injunctive           likelihood of confusion between that mark
relief “would be difficult, if not impossible        and CFG’s. Thus, these factors, even
to enforce.” At the utmost, CNBEC seeks              when combined with the Court’s reliance
injunctive relief in only four counties. An          on the other factors to which it deferred, is
injunction limited to the area of CNBEC’s            not a sufficient ground to support the
market penetration would not require                 Court’s denial of injunctive relief.
enforcement in the rest of Pennsylvania or
                                                             Accordingly, we conclude that
the United States. The numerous branches
                                                     CNBEC is entitled to enjoin CFG from the
and geographical dispersion of the
                                                     use of the mark “Citizens” in CNBEC’s
infringer’s network does not provide it
                                                     marketplace. “The law of trademark
with a blanket insulating it from action
                                                     protects trademark owners in the exclusive
against its infringement. No infringer is
                                                     use of their marks when use by another
immune from challenge because of its size.
                                                     would be likely to cause confusion.”
Neither the principles of equity nor the
                                                     Interpace Corp. v. Lapp, Inc., 721 F.2d
federal Constitution favor the rights of the
                                                     460, 462 (3d Cir. 1983).         Although
powerful over the rights of the weak
                                                     CNBEC’s mark is unregistered, the jury
merely because of size.
                                                     found that CFG had a protected interest in
        Referring to consumer protection             the mark, and that CFG infringed on
as the “foremost purpose of trademark                CNBEC’s use creating a likelihood of
law,” the Court again referred to CNBEC’s            consumer confusion. The concurrent use
alleged unclean hands as the cause of the            of a trademark where a likelihood of
consumer confusion.        As we stated              confusion exists damages the public
previously, we see no evidence to support            interest. Jiffy Lube, 968 F.2d at 379. A
this assertion. The Court was further                finding of infringement or the likelihood
influenced by its interpretation of 12               of confusion with the concurrent use of the
U.S.C. § 22 requiring CNBEC to use                   infringed trademark implicitly signifies a
“National” in its name, plus the jury’s              loss of expectation and goodwill as well.
finding of no likelihood of confusion                The infringement amounts to borrowing
between defendant’s marks and the                    the senior user’s reputation and goodwill,
“Citizens National Bank” mark. We have               which is an injury in and of itself, even
already addressed our disagreement with              without evidence of actual loss of
the District Court’s interpretation of 12            goodwill. See Opticians Ass’n of Am. v.
U.S.C. § 22, and there is no need to repeat          Indep. Opticians of Am., 920 F.2d 187,
it here. Reliance on the jury’s finding of           195 (3d Cir. 1990) (citing Ambassador E.,
an absence of confusion between CFG’s                Inc. v. Orsatti, Inc., 257 F.2d 79, 82 (3d
marks and the “Citizens National Bank”               Cir. 1958)).
does not respond to the jury’s finding of
                                                            When we consider CNBEC’s
infringement with respect to CNBEC’s
                                                     reverse confusion harm in light of the

                                                24
foregoing, the engagement of the parties in         of advertising.     Under these factors,
the same line of business, CFG’s                    CNBEC maintains an injunction should
awareness of the senior’s use of the mark,          encompass the entire four-county area,
and the jury’s verdict, there can be no             including the Pittsburgh metropolitan
doubt of a strong likelihood of reverse             region. CNBEC asserts that this relief is
confusion in this case despite CNBEC’s              necessary to protect the public interest and
use of the term “National.” CFG’s ability           its rights.
to promote its mark, in light of its
                                                            CFG, on the contrary, points out
enormous resources and many branches, is
                                                    that CNBEC’s branches are located in and
significantly greater than CNBEC’s.
                                                    immediately adjacent to Butler County.
“Without the recognition of reverse
                                                    Almost all of its customer accounts are in
confusion, smaller senior users would have
                                                    Butler and Northern Allegheny counties.
little protection against larger, more
                                                    Dr. Crane, a Harvard business professor
powerful companies who want to use
                                                    testifying on behalf of CFG as an expert
i d e n t ic a l o r confusingly simila r
                                                    witness, explained that CNBEC’s market
trademarks.” Fisons Horticulture, 30 F.3d
                                                    should be limited to its core locations in
at 475. Section 43(a) of the Lanham Act
                                                    Butler and Northern Allegheny Counties
has been interpreted by this and other
                                                    because “75% of customers open a
circuits to protect against s uch
                                                    checking account within four miles of
infringements by large entities, and we
                                                    where they live or work.”
will uphold that principle here.         Id.
Accordingly, the District Court’s refusal to                Looking at CNBEC’s share of
enjoin CFG’s infringement constituted an            market deposits, Dr. Crane found that
abuse of discretion, and we will reverse.           CNBEC accounts for about 13% of
                                                    deposits in Butler County, 2% in
         The more difficult problem arises
                                                    Armstrong county, less than 1% in
in the framing of the injunction. CNBEC
                                                    Allegheny County, and less than 1% in
asserts that an injunction should embrace
                                                    Beaver County. On cross-examination,
all of Allegheny, Armstrong, Beaver and
                                                    Dr. Crane also acknowledged that if an
Butler counties. It claims that the District
                                                    injunction issued against CFG because of
Court’s advisory ruling that CNBEC’s
                                                    the likelihood of confusion caused by the
trademark rights extend only as far as the
                                                    use of its name, federal regulations would
location of its physical branches is legally
                                                    not bar CFG from using a different name
erroneous. It argues that in determining
                                                    on its branches in the enjoined territory.
injunctive relief under Natural Footwear,
Ltd. v. Hart, Schaffner & Marx 760 F.2d                    CNBEC had approximately 9,886
1383, 1398-99 (3d Cir. 1985), the extent            accounts in northern Allegheny County as
should be governed by (1) the senior user’s         of August 1, 2001. Those accounts
value of the sales, (2) growth trends, (3)          represented approximately $50 million in
market shares, and (4) amount and scope             deposits and approximately $90 million in


                                               25
loans. Don Shoney, CEO and Chief                    we are hesitant to enunciate the ultimate
Operating Officer of CNBEC, testified that          contours of the injunction. As we noted
the branch in Northtowne Square in                  above, the District Court identified valid
Northern Allegheny County was CNBEC’s               concerns regarding potential confusion
southernmost facility. He also testified            among CFG’s customers in the region, as
that the banks consumer market centered             well as confusion that may arise from
around its branches but that a much                 required disclosure of the name “Citizens
broader market existed for its business             Bank” for customers using ATMs outside
accounts and for its non-traditional                of the region or internet banking. Upon
products such as life insurance, trust              remand, we will instruct the District Court
services and brokerages, where there is no          to explore these issues and develop the
need to be linked to a physical location.           specific limitations in the injunction that
                                                    will mitigate these potential sources of
        Although CNBEC lays claim to a
                                                    confusion.
four-county market largely because its
advertising in print and broadcast media                        V. Cross-Appeal
reaches this area, we do not agree that its
                                                           CFG filed a conditional cross-
market extends this far. This Court stated
                                                    appeal in the event that this Court should
in Natural Footwear that “the senior user
                                                    reverse the District Court’s injunction. We
of a common law mark may not be able to
                                                    now address that appeal.
obtain relief against the junior user in an
area where it has no established trade, and                             A.
hence no reputation and good will.” 760
                                                            CFG challenges the District Court’s
F.2d at 1394. On the other hand, as we
                                                    evidentiary ruling allowing testimony from
pointed out in Scott Paper Co., 589 F.3d at
                                                    CNBEC tellers regarding their experiences
1231, the grant of a monopoly to CFG by
                                                    with customers confused between the two
virtue of the federal registration under the
                                                    banks. CFG claims this testimony was
Lanham Act should not be liberally
                                                    inadmissible hearsay. “To the extent the
construed. The rights granted to the
                                                    district court's admission of evidence was
registered user should not be extended.
                                                    based on an interpretation of the Federal
We believe the District Court correctly
                                                    Rules of Evidence, our standard of review
found CNBEC’s market penetration
                                                    is plenary. But we review the Court's
included Butler County and the Northern
                                                    decision to admit the evidence if premised
part of Allegheny County. We do not at
                                                    on a permissible view of the law for an
this time express any opinion as to the
                                                    abuse of discretion.” United States v.
market penetration in Armstrong and
                                                    Pelullo, 964 F.2d 193, 199 (3d Cir. 1992).
Beaver counties, and we leave that
determination for the District Court upon                 CFG points to no specific instances
remand.        As an appellate court one            of a teller testifying to out-of-court
step removed from the facts of this case,           statements asserted for their truth. Even


                                               26
by CFG’s description, the tellers described         that had the instruction required a temporal
their personal experiences with customers           finding, the jury would not have found that
at the bank, which is not inconsistent with         CNBEC obtained trademark rights in
Fed. R. Evid. 801(c). Furthermore, “the             “Citizens.”
plaintiffs' own testimony about the actual
                                                            CFG’s argument relies upon a
behavior of their customers is not
                                                    single passage from the instructions that
hearsay.” Calahan v. A.E.V., Inc., 182
                                                    does not include a temporal instruction
F.3d 237, 253 (3d Cir. 1999). In this case,
                                                    regarding CNBEC’s use of “Citizens.”
the tellers described what they saw and the
                                                    However, the scope of review for a jury
action they took with respect to customers
                                                    instruction is whether, when taken as a
who appeared to be confused with respect
                                                    whole, they properly apprise the jury of the
to CFG and CNBEC. This is not hearsay.
                                                    issues and the applicable law. Khorozian,
Further, Fed. R. Evid. 803(3) allows
                                                    333 F.3d at 508 (explaining that courts
statements, otherwise excluded as hearsay,
                                                    review “the totality of the instructions and
to be received to show the declarant’s
                                                    not a particular sentence or paragraph in
then-existing state of mind. Id. at 251. To
                                                    isolation.”); Everett v. Beard, 290 F.3d
the extent that any of the customers’
                                                    500, 512 (3d Cir. 2002); Tigg Corp. v.
statements may be deemed hearsay, we
                                                    Dow Corning Corp., 962 F.2d 1123 (3d
believe Rule 803(3) would apply. Thus,
                                                    Cir. 1992).
the District Court did not abuse its
discretion by admitting this testimony.                     Upon review of the instructions, it
                                                    is clear that the District Court instructed
                    B.
                                                    the jury specifically that in order to be a
        CFG also complains that the                 senior user of a mark, CNBEC’s rights
District Court erred in its jury instruction        should be evaluated prior to CFG’s entry
concerning the determination of CNBEC’s             into the disputed market area in July, 2001.
rights in the mark “Citizens” standing              In describing secondary meaning, the
alone. CFG asserts that the District                Court explained that the jury must consider
Court’s instruction did not require a               consumer perception of the mark “prior to
finding that CNBEC had consistently used            CFG’s entry.” This Court presumes that
“Citizens” as a trademark over time prior           the jury followed the Court’s instructions.
to CFG’s entry in the market. The legal             United States v. Givan, 320 F.3d 452, 462
accuracy of jury instructions are reviewed          (3d Cir. 2003), United States v. Syme, 276
de novo. See United States v. Khorozian,            F.2d 131, 155 (3d Cir. 2002). Thus, we
333 F.3d 498, 507-08 (3d Cir. 2003).                presume that the jury considered
                                                    CNBEC’s use of “Citizens” prior to CFG’s
        CFG argues that the undisputed
                                                    entrance to the market in determining that
evidence shows that CNBEC started using
                                                    CNBEC had a protected interest in the
the mark standing alone consistently only
                                                    trademark.
after CFG entered the market. CFG argues


                                               27
        The District Court’s evidentiary              specific contours of CNBEC’s market area
ruling and the challenged jury instruction            in the other three disputed counties.
raised in CFG’s cross-appeal will be
                                                              The District Court is directed to
affirmed.
                                                      strike from its opinion its statement that
              VI. Conclusion                          “future actions by CNBEC based upon
                                                      additional evidence of consumer confusion
         In accordance with the foregoing,
                                                      occurring after November 1, 2002, would
the evidentiary rulings and jury
                                                      be frivolous and unwarranted.”
instructions of the District Court during
the jury trial and the order denying the                     Sixty percent of the costs will be
motion for a new trial are affirmed.                  taxed against CFG.
However, the judgment of the District
Court entered in favor of Citizens
Financial Group’s (CFG’s) complaint for
a declaratory judgment will be vacated.
The case will be remanded to the District
Court to mold the verdict to reflect that
Citizens National Bank of Evans City
(CNBEC) has not proven that it has
suffered money damages as a proximate
result of CFG’s infringement, but also with
directions to enter judgment in favor of
CNBEC on the declaratory judgment
claim, stating that CFG is not entitled to a
declaratory judgment allowing its use of
“Citizens” in CNBEC’s market area.
        The District Court’s denial of
CNBEC’s motion for injunctive relief, and
the subsequent injunction issued against
CNBEC requiring its use of the term
“National” as part of its name when it first
refers to itself in any document or
advertising, will be vacated. On remand to
the District Court, it is directed to enter an
order permanently enjoining CFG from
offering or advertising retail banking
services under the mark “Citizens Bank”
in Butler County and to conduct an
evidentiary hearing to determine the


                                                 28
