TO:
`
`
`REPORT ON THE
`
`
`FILING OR DETERMINATION OF AN
`Commissioer of Patents and Trademarks
`ACTION REGARDING A PATENT OR
`
`Arlington, VA 22202
`TRADEMARK
`
`
`In Compliance with 35 § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`f M
`1
`filed in the U.S. District Court
`O
`ary and
`on the following
`El Patents or
`12! Trademarks:
`
`A0 120 (Rev. 2/97)
`
`DOCKET NO.
`
`DATE FILED
`
`
`
`DEFEANT
`
`,
`O
`U _I —
`I
`
`PLAINTIFF
`
`
`Chesapeake Bank of Maryland
`
`Chesapeake Financial Shares, Inc., et
`
`
`
`HOLDER OF PATENT on TRADEMARK
`
`I
`
`c ‘
`
`
`
`TR§3E'§A"fATR%'LO
`‘(33'°,;‘T‘T5F853'E’,§AT/'f,.[“'|I
`
`
`
`
`QlllllllllllllllllllllllllllllllllllmfiI ”
`
`1 1-20-2002
`us. Patent & TMOfc/TM Mail Ficpt Dt‘ #11
`u
`
`:
`
`
`
`In the above-entitled case, the following patent(s) ha
`
`been included:
`
`B Cross Bill
`
`CI Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`DECISION/JUDGEMENT
`
`\_
`
`Copy 1——Upon initiation of action, _mail this‘ copy to Commissioner Cpy 3—Upon termination of action, mail this copy to Commissioner
`Copy 2—Upon filing documeht«addirg‘;’b'atent(s), mail this copy to Commissioner Copy 4——-Case file copy
`
`
`
`

`
`
`
`COVER SHEET
`’
`. JS 44MD(Rev.3/99)
`The JS-44 civil cover sheet and the information contained hereiniieitherreplacenor supplement the filing and service ofpleadings or other apers asrequired
`by law, except as rovided by local rules of court: ‘This form, approved 1; ‘the Judici Conference ofthe United States in September 19 4, is required for
`the use of tile Cler of Court for the purpose of initiating the civi docket s eet. «(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`1. (a) PLAINTIFFS
`DEFENDANTS
`Chesapeake Bank of Mary1aiid.?.'.’ 2.”:
`Chesapeake Financial Shares, Inc., Chesapeake
`
`Bank, Inc., Private Business, Inc.
`'
`
`3315130”
`‘
`County of Residence of Fit: Listed Defendant Lancaster» VA
`(b) Coimty of Residence of First Listed Plaintiff
`(EXCEPT IN U.S. PLAINTIFF CASES)
`(IN U.S. PLAINTIFF CASES ONLY)
`'
`‘
`INLAND CONDEMNATION CASES, USE THE LOCATION OF THE
`LANDINVOLVED.
`
`.
`
`~
`
`..
`
`.
`
`.
`
`,
`
`A M;
`4
`,
`H __ R '
`
`NOTE:
`
`1' L!
`
`57;
`
`(C) Attorney's (Firm Name, Address, and Telephone Number)
`Fredric D. Abramson
`
`Law Ofiices ofFredric D. Abrainson
`21155 WoodfieldRoad,Gaithersburg,MD20882
`301-840-9733
`ll. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`A“°m‘Y5 afx-“°“'1|)
`
`,3
`
`.. 1,}
`1 1%
`2 Q3 3
`" ‘“’ 0
`J 7
`III. CITIZENSHIP OF PRINCIPAL PA.RTI.ES(Pliice m "x" in Orle Box ii)!
`(For Diversity Cases Only)
`Plaintifl‘ilnd One Box for Defuidanl)
`PTF
`DEF
`PTF
`DEF
`
`Federal Question
`(U.S. Government Not a Party)
`
`Citizen ofThis State
`
`U I U I
`
`Incorporated or Principal Place )Q 4
`of Business In This State
`
`El 4
`
`U I US. Government
`Plaintifi
`
`CI 2 US. Government
`Defendant
`
`U 4 Diversity
`(Indicate Citizenship ofParties
`in Item III)
`'
`
`Citizen ofAnother State U 2 U 2
`
`Incorporated and Principal Place U 5 K
`of Business In Another State
`
`Citizen or Subject of a
`Forei {J Courl
`
`El 3 U 3
`
`Foreign Nation
`
`U 6
`
`El 6
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`IV. NATURE OF SUIT
`
`
`
`
`Place an “X” in One Box Onl
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`
`
`OTHER STATUTES
`
`
`
`
`
`D 422 Appeal 28 USC 158
`
`
`
`
`
`
`
`610 Agriculture
`
`620 Other Food & Diug
`625 Drug Related Seizure D 423 Withdrawal
`
`ofProperty 21 USC 881
`630 Liquor Laws
`64-0 RR. 5:. Truck
`
`650 Airline Regs.
`
`
`660 Occupational
`
`
`
`
`
`110 lrulranoe
`120 Marine
`l30Miller Act
`B I40 Negotiable lrurument
`150 Recovery ofOverpaymait
`& Enforcement ofludgmenz
`I5 I Medicare Act
`Student Loans
`I52 RecoveryofDefaulted
`(Excl. Veterans)
`[] 153 Recovery oI'Ovel'payml:it
`ofVetl:-an’sBerlefits
`I60 Stockholders‘ Suits
`E 190OtherContract
`195C
`Prod
`L’ bil'
`°'“‘“"‘
`"°‘
`"‘
`“V D
`
`REALPROPERTY
`_
`210LandCondemnation
`220 Foreclosure
`:33 $3; to Land& Emma“
`.
`.
`.
`245 Tort Product Liability
`290 All Other Real huperty
`
`PERSONAL INJURY
`310 Airplane
`315 Airplane Product
`Liability
`D
`320 Assault, Libel &
`Slander
`D 330 Federal Employers‘
`340 Marine
`El
`Liability
`U 345 Marine Product
`Liability
`3SOMotor Vehicle
`355 Motor Vehicle
`ProductLiability
`3600th
`P
`rialIn'
`‘" °'”°
`1"”
`CIVIL RIGHTS
`'
`E 441 Voting
`442 Employment
`‘ 443 ;{ mhfimm
`444 Welfare
`440 Other Civil Rights
`
`
`
`400 Stine Reapportionment
`PERSONAL INJURY
`410 Antitrust
`[1 362 Personal Injury—
`430 Bank: and Banking
`Med. Malpractice
`450 Commerce./ICC Rates/etc.
`D 365 Personal Injury -—
`460 Deportation
`Product Liability
`470 Racketeer Influenced and
`U 368 Asbt-.-itoei Personal
`Corrupt Organizations
`Injury Product
`850 Securitiezl/Cornmoditied
`PERSONAL PROPERTY
`810 Selective Savice
`Liability
`Etchange
`370 Other Fraud
`CI 375 cimmei Challenge
`TY
`SEC
`SOC
`OR
`an Truth in Lending
`I2 usc 34lo
`aw Oti'lerPenlonal LABIAI-URI
`89! Agricultural Am
`Property Damage
`.
`892EconomicStabilizationAct
`[1 335riupenynumge
`U 7"’:2‘"“’°'S‘‘*‘‘‘*‘‘‘*'
`:2;$2:':::;?m)
`8931511 '
`aIM
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`Produ
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`894 En;‘;";““°°";_fim“X:‘“
`"‘ “ ‘ “V
`I] no Labor/Mgmt. Relations
`863 Diwc/i_)lww (4053))
`
`
`395 pmdom of
`PRISONER PETITION
`.
`364 55") Tm’ XV‘
`moflmm M
`D 730 Labor/Mgmt.Reporting
`865 R51 (405(g))
`'
`
`
`D 5l0MotlonstoVacate
`B
`JrDisclosureAct
`FEDERALTAX SU‘Ts D 900Appeal0”,”
`Sentence
`740 Railway Labor Act Dmmgmfim Um
`égalizsmgtlpu
`[j
`190 Other Labor Liti don D 37° T“"“ W5‘ "“i“‘m
`E“‘“" "‘°““ “’ ’““'i°'
`3*‘
`or Defendant)
`E] 950 Corutitudonality of
`535 Death Penalty
`Sm: smut“
`540
`& Other U 791 Em;-ll.’ Ret. Inc.
`D 890 om” Sammy Acfiom
`550 Civil Rlgltx
`Secl.intyAct
`555 Prison Condition
`
`
`
`
`
`
`
`
`
`p
`
`
`
`
`
`B 871 lRs_Third Pm,
`26 USC 7609
`
`
`
`
`
`V. ORIGIN
`1 Original
`Proceeding
`
`V1‘
`
`flmfiggmmsfict
`from
`Tm“
`(PLACE AN ~;(lv1N ONE BOX ONLY)
`-
`di tri t
`oth
`Cl 7
`D6 Multidistrict
`fi“,3"‘“‘:{°
`C
`El 4 Reinstatedor D5 glpeciity) S
`D 2 Removcdfmm
`EI3 Remandedfiom
`Litigation
`
`
`State Court
`Appellate Court
`Reopened
`(Cite the US. Civil Statute under which you are filing and write briefatatement of cause.
`Do not cite jurisdictional statutes unless diversity.)
`
`OF
`
`Lanham Act, 15 U.S.C. Sec. 1051 et seq.; Defendants infringe Plaintiffs trademarks and compete unfairly
`
`VII. REQUESTED IN
`[3 CHECK IF THIS IS A cuss ACTION
`DEMAND s
`CHECKYES only ifdernanded in c
`lam:
`
`
`
`COMpLA1NT; E]Ycs mks UNDERF.R.C.P. 23 JURY DEMAND;
`VIII. RELATED CASE(S)
`(506 in5!m€!i°nS)t
`
`DOCKET NUMBER
`
`
`
`FOR OFFICE USE ONLY
`
`
`
`RECEIPT #
`
`AMOUN
`
`
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`__ _ ._ _
`
`

`
`
`
`.~
`
`,
`
`.v...
`
`|>»\“<“—
`
`__
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` , T r,9:;;:g;
`
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`
`IN THE. UNITED STATES DISTRI_,C_T.'.COUR'I'3 2= H U "
`FOR MARYLAND
`N
`
`“
`
`- - _ SEFST‘:
`
`Civil Action No.
`Judge
`
`agistrate M 0 2
`
`_
`
`.
`
`3 7
`
`-
`
`'.
`
`.
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`..
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`,
`
`CHESAPEAKE BANK OF
`2001 East Ioppa Road
`Towson, Maryland
`a Federal Savings & Loan
`
`'
`
`Plaintiff
`
`CHESAPEAKE FINANCIAL SHAl{ES,ll:IC.
`97 N.‘ Main St.
`' Kilmarnock, VA 22482 i
`a Virginia Corporation
`
`.
`
`,-
`
`A
`
`-
`
`'cHEsAPEAKEBANI§,INc.-
`97 N. Main St.
`
`Kilmarnock, VA 22482
`a Virginia Corporation
`
`PRIVATE BUSINESS, INC.
`9010 Overlook Blvd.
`
`Brentwood, TN 37027
`
`Defendants
`
`|jl|:l|:l|jL—Jédk£|—Jéik£L:l|:l|:l|?lL:lél|:l%fil:J&l\:l|:ll1JI:J
`
`COMPLAINT Fo11.TRADEMAr{K INFRINGEMENT ,
`UNFAIR COMPETITION, AND DECLARATORY RELEIF
`
`Plaintiff, Chesapeake Bank ofMaryland, Inc., (“Chesapeake Bank”) brings this Complaint against the
`
`Defendants Chesapeake Financial Shares, Inc., Chesapeake Bank, Inc., and Private Business, Inc.
`
`(collectively “Defendants”).
`
`Chesapeake Bank v. Chesapeake Financial Shares et. al.
`
`Page _1_
`
`

`
`
`
`NATURE OF THE ACTION
`
`1. This action for trademark infringement and unfair competition arises fiom the Defendants’
`
`use of the mark CHESAPEAKE BANK in Maryland in connection with the marketing of banking
`
`services that infringes Chesapeake Bank’s CHESAPEAKE and CHESAPEAKE BANK trademarks for
`‘a
`
`banking products and services.
`
`2. Plaintiff Chesapeake Eank has for over 40 years continuously and consistently used the
`
`CI-IESAPEAKErmark tosidentify itself as a source ofbanking products and services.
`3.__ By contrast, Defendant Chesapeake financial‘ Shares, Inc., and its subsidiary Chesapeake
`
`A. Bantqfnc. havein those same forty years changed corporate structures, changed names, changed
`products and services,'ar-"id changed trademarks by addingand abandoning various trademarks, all in a
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`narrowly restricted area known as the Northern Neck of Virginia.
`
`'
`
`‘JURI'sD1c'fioN AND. VENTJE
`
`4. This actionafises under Sections 32(1) and 43(a) of the Trademark Act of 1946, commonly
`
`referred to as the Lanham Act, 15 U.S.C..,§U1O51 et _seq., and the common laws ofthe State ofMaryland.
`
`5. This Court has jurisdiction under Section 39»of the LanharIi_..Act, 15 U.S._C'."'§1121, and 28
`
`U.S.C. § 1338(a) in that this case arises under the Trademark Laws ofthe Unitedisfitates, 15 U.S.C. §§
`
`1051 et seq.
`
`6. This Court has jurisdiction of the Maryland state law trademark infringement, unfair .
`
`.
`
`competition, false advertising, and business reputation injury claims herein ‘under the provisions of 28
`
`U.S.C. § 133 8(b) in that said claims are joined with substantial and related claims under the Trademark
`
`laws (15 U.S.C. §§ 1051 et seq.) of the United States.
`
`Chesapeake Bank v. Chesapeake Financial Shares et. al.
`
`Page _2_
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`

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`
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`7. Venue is properly laid in this District pursuant to 28 U.S.C. §§ 1391(b), 1400 and/or 1381 in
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`that each defendant may be found and/or is doing business within this District; a substantial part of the
`
`events giving rise to the claims occurred within this judicial district, and this Court has jurisdiction over
`
`the person of each defendant.
`
`THE PARTIES
`
`6. Plaintiff Chesapeake is a Maryland business entity and is a federally chartered savings and
`
`..o
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`loan association engaged in banking. It is headdquarteréid in Towson, Maryland.
`
`. . I Chesapeakel3ank. reaches 47% ofMaryland’s 5:2 million population
`
`the urban region
`
`‘, surrounding Towson (Anne_Arundle County, Baltiniolre City, Baltimore County, Carroll County,
`ii .Hairiford County and Howard County) and 83% ofMaryland including Frederick, Montgom§ry_
`Prhice’George’s‘Courfties. (Exhibit 1, map ofChesapeake Bank’s market area);
`
`..,_
`
`«.
`
`' 8. Chesapeake Bank has been providing banking services inlvlaryland and surrounding states
`
`‘continuously since 1960 under the CHESAPEAKE trademark. Since 1997, Chesapeake Bank has been
`providing__bankin:g services under its CHESAPEAKE BANK trademark in Marylandand surrounding
`
`« states, including the metropolitan Baltimore-Washington DC area.
`
`. 9. Defendant Chesapeake Financial Shares, Inc. (“CFS”) is a Virginia corporation acting as a
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`financial services and bank holding company. It is headquartered in Kilmarnock Virginia.
`
`10. Defendant Chesapeake Bank, Inc. (“Virginia Bank”), is a Virginia corporation that is wholly
`
`’ owned by Defendant CFS. The Virginia Bank is headquartered in Kilmamock, Virginia.
`
`11. The market area of Defendants CFS and Virginia Bank is rural Southeastern Virginia,
`
`covering most of the area north of the Rappahannock River and south of the Potomac River known as
`
`Chesapeake Bank v. Chesapeake Financial Shares ct. al.
`
`page _3_
`
`

`
`
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`the “Northem Neck", the area bounded on the south by the York River and on the north by the
`/
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`Rappahannock River, known as the "Middle Peninsula", and the Williamsburg area north of the James
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`River, and comprises less than four percent ofVirginia’s 7 million population. {Exhibit 2 - map of
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`Virginia Bank's market area)
`
`12. Defendant Private Business, Inc. (“Private Business”) is, on information and belief, a
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`Ten_n_esse«e corporation headquartered in Brentwood, Tennessee.
`
`3-
`
`13. Private Business is involved inthe management and sales of various financial and banking
`.-
`-“'
`_~‘
`‘
`"products throughout the‘Unite'd States, including a product known as the Business Manage_r_,_ a type of
`
`factoring program that lends money to small businesses taking accounts receivable as security.
`
`.
`
`_
`
`,_._1_4, Ibe Defendants are all partwof a"common
`
`to market financial serviuces-in‘1i\i/laryland.
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`.
`
`FACTUAL BACKGRQUND
`
`TRADEMARK USE HISTORY — PLAINTIFF CHESAPEAKE BANK
`
`_1_5. Chesapeake Bankiis in the banking business, which includes making loans to consumers and
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`small businesses. Its products and services include checking accounts, savings accounts, mortgage loans,
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`consumer credit loans, business loans, and collateral marketing goods..‘It_.markets its products and
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`services through 6 branches located in Anne Arundel County, Baltimore City and Baltimore County
`within the State ofMaryland, and markets its products and services through the Internet under the marks
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`CI-HESAPEAKE, CHESAPEAKE BANK and CHESAPEAKE
`
`OF MARYLAND.
`
`16. Chesapeake Bank was originally organized in 1911 as the New Eastern Permanent Savings &
`
`Loan Association. It formally changed its name to Chesapeake Federal Savings and Loan Association on
`
`Chesapeake Bank v. Chesapeake Financial Shares et al
`
`-
`
`page _4.
`
`

`
`
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`January 20, 1960.
`17. Chesapeake Bank adopted its flagship trademark CHESAPEAKE as early as 1960 to identify
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`itself as a source of banking services for consumers and business
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`18. Its.use of CHESAPEAKE was in materials common to the banking industry, including
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`newspaper ads, flyers, and radio advertising. (Exhibit 3, Example of 1966 Newspaper Advertising) -
`-.
`Plaintiff continuously since i960 used its trademark CHESAPEAKE to identify and ,
`«I
`
`distinguish its banking services.
`
`a
`.'
`'
`20. In the forty years since it,_began using the CHESAPEAKE mark, Plaintiff Chesapeake Bank
`
`,_
`
`we
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`has grown 100 fold, from holding $2 million in iassetsfiin 1961 to $193 million in 2001.
`
`21. Since 1960, Chesapeake Bank has earned hundreds ofmillions ofdoilars worth ofrevenues il-
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`» re; banking services under the CHESAPEAKE ® mark, siso million in the 'p§§i 15 years alone. “ "
`
`22. Plaintiffis the lawfiil owner offederal Registraticnilumber 2,301,218 for its
`CHESAPEAKE trademark for “[c]}ons‘umer bankingservices, namely, checking accounts, personal
`savingsaccounts,‘certificates ofdeposit, and loans secured-by mortgages and automobiles, in class 36”
`
`that was issued by the United States Trademark Office _on December 21, 1999 without opposition.
`
`(Exhibit~”4, CHESAPEAKE Federal Trademark Registration).
`
`23. A federal registration is prima facie evidence of the validity of the registered mark, of the
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`registration of the mark, and of the registrant’s ownership of the mark.
`
`24. A federal registration is prima facie evidence the registrant’s exclusive right to use the
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`registered mark in commerce on or in connection with the goods specified in the registration. 15 USC.
`
`1115
`
`Chesapeake Bank v. Chesapeake Financial Shares et al.
`
`_
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`Page _5_
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`

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`
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`25. Starting as early as 1997, Chesapeake Bank of Maryland, Inc. added the mark
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`CHESAPEAKE BANK to its advertising and promotion as an additional way for consumers to identify
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`and distinguish it from competition. (Exhibit 5, Example of 1999 Newspaper Advertising)
`
`26. The legal name of “Chesapeake Bank was changed from Chesapeake Federal Savings and
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`"Loan Association” to “Chesapeake Bank of Maryland, Inc.” on January 21, 1998.
`
`.4
`
`TRADEMARK USE HISTORY — DEFENDANTS CFS AND VIRGINIA BANK
`v
`_ 27. Defendant
`waschartered in Kilmarnock, Virginia in 1982 as a one-bank holding
`company iinder the name Chesapeake Bankshares, Inc.
`'
`-28. Defendant CFS today uses the mark CI.-IESAPEAKE to identify itselfas a financial holding
`company:
`N
`
`29. Defendant CFS first began use of CHESAPEAKE to identify itself as a financial holding
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`company in the 1990’s, and in no event prior to 1982 when it was formed. (Exhibit 6, 1999 CFS Annual
`.,.
`.
`
`Report)
`
`30. Defendant CFS markets both banking products and a variety of uninsured financial products
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`through a network of separate, wholly owned subsidiaries.
`
`31. Defendant CFS owns and operates twoactive wholly owned subsidiaries: Defendant
`
`Chesapeake Bank, Inc. and Chesapeake Investment Group, Inc.
`
`32. Defendant Chesapeake Bank, Inc. owns one wholly owned subsidiary: Chesapeake Insurance
`
`Agency, Inc., T/A Chesapeake Title Company.
`
`A
`
`33. Chesapeake Investment Group, Inc. owns and operates three wholly owned subsidiaries: (1)
`
`Chesapeake Bank v. Chesapeake Financial Shares er. al.
`
`Pagc _5_
`
`_
`
`

`
`
`
`Chesapeake Trust Company, Inc., (2) Chesapeake Insurance Agency, Inc., d/b/a Chesapeake Investment
`
`Services, and (3) Chesapeake Financial Group, Inc.
`
`'.._n.«,-_.- 1..-r»
`
`-....._.
`._m_;_--‘:.'':-»
`
`-.
`
`I
`
`;
`
`34. Defendant CFS offers annuity products (fixed and variable), mutual funds and discount
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`brokerage services only through Chesapeake Investment Services, the subsidiary to Chesapeake
`
`Investment Group, Inc.
`
`35. Defendant Virginia Bank traces its creation to 1900 when it was founded as Lancaster
`
`National Bank, a federally chartered bank.
`
`v
`
`._,
`
`.v'
`
`36. In 1968, Defendant ._\/irginia Bank’s predecessor, then still known as Lancaster National I’
`
`Bank, changed its name to “Chesapeake National Bank” after it acquired"a Virginia state bank -the
`
`Chesapeake Banking Company.
`
`37. Defendant Virginia Bank's predecessor Chesapeake National Bankbecarne a wholly owned}. '
`
`subsidiary ofDefendant CFS in 1982.
`-A
`38. From 1968 to 1995 Defendant Virginia Bank’s_ predecessorused only the marks
`CHEASPEAICE NATIONAL BANK, CHESAPEAKE NATIONAL and CNB to identify Chesapeake
`National Bank as a source ofbanking ser-v_ices and‘products.
`.
`
`39. Defendant CSF on June 27, 1995 terminatedthe existence ofits national chartered
`subsidiary, Chesapeake National Bank, and replaced it with a newly formed Virginia state chartered
`
`bank, Defendant Chesapeake Bank, Inc,
`
`40. Prior to 1965, there was no use by any Defendant or any predecessor of the CHESAPEAKE
`
`mark to identify themselves as a source of banking products and services.
`
`41. After 1965, the mark CHESAPEAKE was used only sporadically to identify Chesapeake
`
`National Bank as a source of banking products and services.
`
`Chesapeake Bank v. Chesapeake Financial Shares et. al.
`
`page _7_
`
`

`
`
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`42. On information and belief, this sporadic use was from 1986 to 1990 in advertising in
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`~Kilmarnock..Virginia area newspapers. __,-, -
`
`..
`
`..-‘vwr:
`-..-. .
`I-2: ~.
`.. ;. o..-"I .
`
`43. Any trademark rights that may have been developed by the local Kilmarnock newspaper ads
`
`were abandoned as of 1994 in accordance with Section 45 of the Lanham Act (15 US. C. 1127) as
`
`amended
`
`Pub. L. 103-465 increasing from two to three years the time of nonuse needed to trigger the
`
`presumption of abandonment.
`
`44. The first use ofCHESAPEAKE
`
`z
`
`r
`as a mark for banking products and services. was not until 1995.
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`incommerce by Defendants CSF or Virginia Bank
`
`.
`
`:-
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`‘ INTERNET DOMAIN NAME‘
`
`45. On July 4,1997, Chesapeake Bank registered the Internet domain name
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`CI-IESAPEAK-EBANKCOM with Network Solutions, Inc.
`
`46:-Plaintiff Chesapeake,Bank has since'Iu1y_ 4, 1997'.been continuously listed iii the public
`
`I.
`I
`record as that domain name’s owner.
`47. Defendant Virginia I3ank registered the Internet domain name CI-IESBANK.C(i)M with
`Network Solutions, Inc. on March 25, 1998.
`i
`48. Defendant Virginia Bank uses WWVVCHESBANKCOM as a trademark, displaying the
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`mark prominently on such items as a Volkswagen Beetle to identify itself as source of banking products
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`and services. (Exhibit 7, picture of VW with mark displayed).
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`49. Defendant Virginia Bank has never objected to Plaintiffs use of CHESAPEAKEBANK as a
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`~ mark or domain name.
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`Chesapeake Bank v. Chesapeake Financial Shares et al.
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`FEDERAL TRADEMARK APPLICA'I'ION CHRONOLOGY
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`50. On February 13, 1997, Plaintiff Chesapeake Bank applied for federal registration of
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`CHESAPEAKE BANK (Serial No.75/244,844) on the Principal Register, with term “bank” disclaimed.
`51. In'March 1997, the Defendant Virginia Bank applied for federal registration of
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`BANK (Serial No. 75/255,515), “oval design with marsh grass and flying ducks" 5
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`(Serial No. 75/255,516), and CHESAPEAKE BANK AND DESIGN (Serial No. 75/255,517), with the
`.(
`,,,._,..
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`term “bank” ‘disclaimed in the 25 5,5 1; and 255, 517 applications.
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`.4
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`52.,Defendant VirginiaBank declared under oath in itsiappilications that it uses the
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`CHESAPEAKE BANK mark for _“[b] anking'service_s and marketing ofannuities, mutual funds, and
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`title insurance” in class 36.
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`53. On infornfation and belief, as of the date offilingiand..before,iDefendant Virginia»Bank was
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`forbidden by law to market or offer for sale uninsured financial products under its name or in association
`9
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`with its name, marks and logos.
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`54. On December'l8, 1997, the United Siates Trademark Cffice suspended Defendant Virginia
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`Biank’s 255,515 and 255,517 applications.
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`55. The United States trademark ofiice officiall-y notified‘ Defendant Virginia Bank that the
`255,515 and 255, 517 applications may be refused registration under Section 2(t) ofthe Lanham Act if
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`either of.Plaintift’ s two applications (241,468 for CHESAPEAKE and 744,S44i for CHESAPEAKE
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`BANK) matured intoa registration.
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`56. On April 27, 1999, Plaintiffs CHESAPEAKE mark was published for opposition.
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`57. Defendant Virginia Bank elected not to oppose Plaintiff s CHESAPEAKE registration
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`Chesapeake Bank v. Chesapeake Financial Shares et al.
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`despite two requests for time extensions from the United States Patent and Trademark Office to oppose
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`and otherwise object to Plaintiff 5 registration of CHESAPEAKE.
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`.58. Defendant Virginia Bank elected not to oppose Plaintiff’ s CHESAPEAKE registration
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`despite its decision to file on July 6, 1999 its opposition to registration ofPlaintiffs CHESAPEAKE
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`BANK mark.
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`i
`69. At the time Defendant Virginia Bank filed its opposition to registration ofPlaintiff’ s
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`A CHESAPEAKE BANK mark, Defend»ant’Virginia Bank was still within the statutory period, which
`_i_ncluding.two extensions ended on’.Aiugust 25, 1999, to oppose Plaintiffs CITESAPEAKE mark
`60.iOpposition Case Number 114,3 53 before the Trademark Trial and Appeal Board remains
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`pending at this time.
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`61. On March 22., 20041-Defendant Virginia Bank filed a_Petition with the United States
`Trademark Trial and Appeal Board to Cancel Plaintiffs CHESAPEAKE registration‘ (Cancellation No.
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`i 31,763),
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`remains pending. .
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`FACTUAL BACKGROUND ~
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`"
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`DEFENDANTS MARKE'I'ING ACTIVITIES IN MARYLAND
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`62. On or about August 15, 2002, Defendant Private Business, Inc. telephoned Ms. Jan Orcutt, a
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`smallbzusiniess owner_located in Montgomery County, Maryland. (Orcutt Affidavit, paragraph 4)
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`63. Defendant Private Business’s phone call was unsolicited by Ms. Orcutt, or anyone afiiliated
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`with Ms. Orcutt.
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`64. The'caller identified himself as representing “CHESAPEAKE BANK.” (Orcutt Afiidavit,
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`paragraph 5)
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`Chesapeake Bank v. Chesapeake Financial Shares et_ al.
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`Page _10_
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`65. The caller, Mr. Kevin Kelleher, described an accounts receivable program called “Business
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`Manager,” and set up an appointment to have a Mr. Kevin Wood meet Ms. Orcutt at her home; which is
`also her place ofbusiness, on August 20, 2062. (Orcutt Affidavit, paragraphs 9 & 10)
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`66. Mr. Kelleher sent a confirming fax to Ms. Orcutt at about 11:28 am on August 15, 2002.
`(Exhibit 8 is a true copy ofthe fax) (Orcutt Affidavit, paragraph 10)
`A
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`67. The fax violated the law relating to use otftelephoneequipment (47 United States Code §227)
`bywnot providing identifyinglinformatfonfin the header as required.
`x,
`._..»
`I
`6d. Tlpon re.ceipt'iof_the
`and upon observing that Mr. Kelleher signed it as “for Private
`Business,'Tnc.,” Ms. Orcutt began to investigateiwhat was behind this meeting. (Crcutt Affidavit, _
`paragrap__h 12) i
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`7
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`69. Ms. Orcutt went on-line and using a search engine identified the Plaintiff‘Chesapeake Bank.
`(Orcutt Affidavdit, paragraph 13)
`i
`70. Ms_. Orcutt telephoned Chesapeake Bank on August 15, 2002 and spoke with Ms. 10 Taylor,
`vice president of Chesapeake Bank. (Orcutt Affidavit, paragraph 15)
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`71. Ms. Taylor stated that Chesapeake Bank has no such product as__the Business Manager, and is
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`not affiliated in any waywith Private Business, Inc. (ohm Affidavit, paragraphs 17 & 18)
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`72. Ms. Orcutt then went online and located the phone number for Private Business, Inc., in
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`Tennessee. She called Private Business, Inc. in Tennessee and obtained the phone number for Kevin
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`Wood, who was located in Richmond, Virginia. (Orcutt Affidavit, paragraphs 29 and 32)
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`73. Defendants’ Maryland target market at a minimum includes Montgomery County, Maryland,
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`which geographically overlaps Plaintiff Chesapeake Bank’s market.
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`74. The instance of actual confusion demonstrates that Maryland residents are likely to conclude
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`Chesapeake Bank v. Chesapeake Financial Shares et al.
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`Page._11_
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`that the Chesapeake Bank that is associated with marketing accounts receivable factoring is the
`-...<»-...- ..u.... ..,.....,
`Chesapeake.Bank headquartered in »Towson,—=‘Maryland-.
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`TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT
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`COUNT I
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`75. Plaintiff reallegesthe preceding paragraphs as if fully set forth herein.
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`76. Plaintiff Chesapeake Bank has used the CHESAPEAKE ® mark in relation to banking A.
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`services and products on a cointinuouslbasis in i_nterstate commerce since as early as Ianuary 1960.
`'l:he registeredfmark used by PlaintiffChesapeake Bank (CHESAPEAKE
`indicates,
`describes; identifies and denotes Plaintiffas a source ofbanking products and services
`A
`banking
`'78‘. Plaintiff Chesapeake Bank has used the CHESAPEAKE BANK mark in relation
`“services and products on a continuous basis in interstate commerce since as early as January 1997.
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`79._ Plaintiff Chesapeake Bank uses the marks CHES’APEAKE® and CHESAPEAKE BANK to
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`establish good will and reputation and to identify the particular products andservices it ofl‘ers, and to
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`fUI'l'.h€l' distinguish these from similar goods and services offered by others.
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`80. Since at least as early as 1960, Plaintiff Chesapeake Bank has advertised and promoted
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`CHESAPEAKE® in the Baltimore-‘Washington metropolitan area. Such advertising and promotion was
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`and is designed to distinguish Plaintiff Chesapeake Bank’s products from those of others.
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`81. Plaintiff Chesapeake Bank has since at least 1997 prominently used and displayed its
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`CHESAPEAKE® and CHESAPEAKE BANK marks in newspaper, television, radio and Internet
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`advertising in the Baltimore-Washington metropolitan area.
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`Chesapeake Bank v. Chesapeake Financial Shares et al.
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`82. Defendants in 2002 have started using CHESAPEAKE BANK in telemarketing to solicit
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`customers located in the State of Maryland and to market banking services and products to‘ the public.
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`83. Defendants are confusing the public as to the source of their services and products.
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`84. The public believes that Defendants’ services and products originate with Plaintiff
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`Chesapeake Bank.
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`85. Defendants are infringing Plaintiff Chesapeake Bank’s marks in interstate commerce
`these and other various acts" that include solicitingsinall businesses in Montgomery Count; Maryland
`while holding themselves
`BANK as a source ofbanking servicesand products
`marketed to customers arid potential customers ofPlaintiff
`-86. Defendants; use ofthe mark CHESAPEAKE BANK in marketing banking services and
`products inlvlaryland is without pennissidn or authority ofPlaintiff Chesapeake Bank, and
`use by I
`these Defendants is likely to cause confiision, to cause mistake and to deceive.
`&___ 87. Defendantsare attempting to trade in the PlaintiffChesapeake Bank’s market area while
`using the Plaintiff mark: CHESAPEAKE BANK.
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`"I
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`88. Defendants’ use of CHESAPEAKE BANK in Maryland is willfi.il,”and with knowledge that
`Plaintiffconducts its business in Marylarid under the CESAPEAKE and CHESAPEAKE BANK
`marks.
`1
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`89. The Defendants’ use of the CHESAPEAKE BANK mark constitutes a false designation of
`origin that is likely to cause confusion, to cause mistake and to deceive as to the affiliatiion, connection"
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`or association ofDefendantswith Plaintifi‘ and as to the origin, sponsorship, or approval ofPlaintiff.
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`90. Defendants use the confusingly similar mark CHESAPEAKE BANK to indicate or identify
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`similar products and services that they marketed in direct competition with Plaintiff Chesapeake Bank in
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`the same trade area in which Plaintiff Chesapeake Bank has established its marks.
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`91.-‘ Defendants’ acts violate 15 U.S.C-.S;' § .11 14(a)'in that Defendants use in commerce a -‘sis:-4'1‘;
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`reproduction, copy, or colorable imitation ofPlaintiff’s registered mark CHESAPEAKE” in connection
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`with the sa1e,'offering for sale, distribution, or advertising ofgoods or services on or in connection with
`which such use is likely to cause confusion, or to cause mistake or to deceive.
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`92. Defendants have also reproduced, copied, or colorably imitated Plaintiff’ s registered mark
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`CHESAPEAKEQ and applied such reproduction, counterfeit, copy, or colorable imitation to labels,
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`si-gns, p‘rints,,packages, wrappers: receptacles or advertisements intended to be used in commerce upon
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`orin connection with the sale, offering for sale, distribution, or advertising of services orpgoods on or in
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`uiconnection w_ith.which_ such use is likely to cause confiision, or to cause mistake,"or to, deceive.
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`93. Defendants’ acts of trademark infringement were committed with the intentttorcause
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`confusion, mistake and to deceive.
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`Through Deferidants’ acts, Plaintiff Chesapeake Bank has suffered and will continue to suffer
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`damage to its reputation, loss of customers, and diminishment of its good will;
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`.
`Coimrf 11
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`.,.,UNFAIR_COMPETITION IN VIOLATION or THZE LANHAM ACT
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`95. Plaintiff realleges the preceding paragraphs as if fully set forth herein.
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`_ 96. Defendants’ acts in copying and emulating Plaintiffs registered mark CHESAPEAKE® and
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`in copying and emulating Plaintiffs CHESAPEAKE BANK trademark constitute unfair competition
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`against Chesapeake Bank.
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`97. Defendants’ acts of marketing products or service under the CHESAPEAKE BANK mark
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`constitutes unfair competition against Chesapeake Bank.
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`98. Defendants’ acts are likely to cause confusion, or to cause mistake, or to deceive as to the
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`affiliation, connection, or association of a Defendant with Plaintiff, or as to the origin, sponsorship, or
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`approval of a'Defendant or its goods, services, or commercial activities by Plaintiff. 15 U.S.C. Sec.
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`1125(a)(1)(A).
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`.
`COUNT III
`FALSE AND DEQEPTIVE ADVERTISING VIOLATION
`OF THE LANHAM ACT_
`P
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`4.
`‘:9-9,,Plaintifflrealleges the ppeceding paragraphs as iffi.1lly set forth herein. ,
`pdisplhayfed to
`100. Defendants use the text mark
`in
`., , the public that copy the
`BANK’mark used-by PlaintiffChesapeake fl
`A
`I
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`1.0.1‘. Defendants, in commercial advertising or promotion, misrepresent the nature,
`characteristics, qualities, or’geographic origin of its services, goods, or commercial activities, violating
`15 U.S.C.A: Sec. '1 125(a)(1)(B).
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`I
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`I
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`.
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`COUNT IV
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`UNFAIR COMPETITION BY VIOLATION OF
`MARYLAND UNFAIR OR DECEPTIVE TRADE PRACTICES
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`102.
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`Plaintiff realleges the preceding paragraphs as if fiilly set forth herein.
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`103. Defendants’ acts constitute unfair competition and a violation of the Maryland Unfair or
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`Deceptive Trade Practices provisions ofthe Annotated Code ofMaryland, Commercial Law § 13-2Cl1 et.
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`seq..
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`Chesapeake Bank v. Chesapeake Financial Shares er. al.
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`Page _15_
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`104. Defendants’ representations of sponsorship are misleading, and have the capacity,
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`tendency or effect of deceiving or misleading consumers.
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`105. As a result of the goodwill developed by Plaintiff Chesapeake Bank in its
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`CHESAPEAKE” and CHESAPEAKE BANK marks, Defendants’ use of the marks and names
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`CHESAPEAKE and CHESAPEAKE BANK is likely to and does cause confiision in the public.
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`106.
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`Onriinformation and belief, Defendants’ infringed Plaintiff Chesapeake Ban_k’s marks --~-
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`with the intent. to deceive the public into believing that goods sold by Defendants are made by, approved
`by, sponsored by or affiliated with Plaintiff Chesapeake Bank.
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`107 On information. and belief, Defendants’ acts were committed with the intent to pass off
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`A
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`i and palm offDefendants’ goods as the goods of the Plaintiff Chesapeake Bank, and with the intent to
`I
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`deceive and defraudbthe public.
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`_,
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`108; . Defendants’ acts have createdconfiision and are likely to create confusion in the minds of
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`a’ substantial portion of reasonable members of public.
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`a.
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`H
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`COUNT V
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`_,
`INJURY TO BUSINESS REPUTATION .,_“
`Plaintiffrealleges the preceding paragraphs as iffully set forth herein.
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`109.
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`1 Defendants’ injure Plaintiff Chesapeake Bank's business, and violate the Maryland Code
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`of Business Regulations, § 1-401 et. seq., Trademarks, Service Marks, and Tradenames
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