STATE OF FLORIDA

DIVISION OF ADMINISTRATIVE HEARINGS

FIRST NATIONAL BANK AND ) TARPON FINANCIAL CORPORATION, )

)

Petitioners, )

)

vs. ) CASE NO. 88-1250

)

DEPARTMENT OF STATE, )

)

Respondent )

)

RECOMMENDED ORDER

A final hearing was held in this case on June 28, 1988 in Clearwater, Florida before Donald D. Conn, Hearing Officer, Division of Administrative Hearings. The parties were represented by:

APPEARANCES

Petitioner: Donald R. Hall, Esquire

Suite 402, Corporate Square 2900 U.S. Highway 19, North

Clearwater, Florida 34621

Respondent: Henri C. Cawthon, Esquire

Department of State

The Capitol, Room LL-10 Tallahassee, Florida 32399-0250

The issue in this case is whether the Department of State (Respondent) should approve the name of "First National Bank" as a service mark which is sought by First National Bank and Tarpon Financial Corporation (Petitioners). At the hearing, each party called one witness, and Petitioners introduced nine exhibits while Respondent introduced five. The transcript of the hearing was

filed on July 13, 1988, and the parties were thereafter allowed to file proposed recommended orders. A ruling on each proposed finding of fact is included in the Appendix to this Recommended Order.

FINDINGS OF FACT

1. Petitioner Tarpon Financial Corporation is a federal banking corporation engaged in general banking services in the State of Florida, with its principal place of business in Tarpon Springs, Florida. Petitioners are not subsidiaries of, or associated with, either First National Bank of Florida, Inc., or First Florida Banks, Inc.

   
   

2. On or about June 16, 1987, Petitioners submitted to and requested approval from Respondent of the name "First National Bank" as a service mark. Respondent denied registration of this service mark on June 29, 1987 by letter stating, "(W)e have a mark registered under the same or similar name and class."

3. On August 6, 1987, Petitioners requested reconsideration citing the Rand McNally Banker's Directory, a nationally issued banking directory, to support its position that the same or similar service mark it seeks to register is not already in use in the State of Florida. The Respondent again denied the request on August 14, 1987 by letter stating, "Our records indicate 'First National Bank of Florida' is an active Florida corporation. We have no record of any name change."

   
   

4. Petitioners sought reconsideration again on August 27, 1987, and requested that the matter be reviewed by Respondent's trademark committee. After review by that committee, Petitioners' application was denied for a third time on September 8, 1987.

   
   

5. The service mark, "First National Bank of Florida," was registered with Respondent on June 16, 1982, and given mark number 927091. The owner of this mark is First National Bank of Florida, Inc., Tampa, Florida, and annual reports have been filed with Respondent in June of each year, including June 8, 1988, thereby indicating the mark has not been abandoned. The Respondent's records indicate that "First National Bank of Florida" is an actively registered service mark. The fact that it does not appear in the Rand McNally Banker's Directory does not establish that it is not an active mark registered with Respondent.

   
   

6. The period of registration for service marks is ten years, and therefore the registration of "First National Bank of Florida" expires June 16, 1992, subject to renewal.

   
   

7. The Respondent cannot register marks unless they are distinguishable from service marks already registered. Competent substantial evidence was not presented to support Petitioner's claim that "First National Bank," the mark it seeks to register, is distinguishable from "First National Bank of Florida," which is already registered. The absence of the phrase "of Florida" from the mark Petitioner seeks to register does not distinguish it from the mark already registered

   
   

   CONCLUSIONS OF LAW

   
   

8. The Division of Administrative Hearings has juris- diction over the parties and subject matter in this cause. Section 120.57(1), Florida Statutes. As the party seeking to register a service mark, Petitioners have the burden of proof in this case. Florida Department of Transportation v. J. W. C. Corporation, 396 So.2d 778 (Fla. 1st DCA 1981).

   
   

9. Section 495.011(2), Florida Statutes, defines "service mark" to mean:

   
   

   ....any word, name, symbol, character, design, drawing or device or any combination thereof, and the distinctive features of radio, television or other advertising, adopted and used by a person to identify services rendered or offered by him and to distinguish them from services rendered or offered by others.

   The Respondent is prohibited, by Section 495.021(1)(f), Florida Statutes, from registering any mark that:

   
   

   Consists of or comprises a mark which so resembles a mark registered in this state or a mark or trade name previously used in this state by another and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive.

   
   

10. Rule 1N-1.0041(7), Florida Administrative Code, has been adopted by Respondent and provides:

    
    

    The phrase OF FLORIDA or OF THE STATE OF FLORIDA shall not constitute a name difference unless the applicant is a business subsidiary or associate of the previously filed corporation.

    
    

    The only difference between the mark Petitioners seek to register and the already registered mark "First National Bank of Florida" is the phrase "of Florida" which does not constitute a name change, as per Rule 1N-1.0041(7), above. Petitioners' proposed mark and this already registered mark are so similar as to likely cause confusion or mistake because there is no difference in these two marks. Petitioners are not subsidiaries or affiliates of the previously filed corporation.

    
    

11. Petitioners' case is based upon the argument that the Rand McNally Banker's Directory does not list "First National Bank of Florida" as an active bank in Florida. However, the Respondent's duties in registering service marks are governed by Chapter 495, Florida Statutes, and are not determined by whether or not there is a listing in this Directory. Section 495.071(5), Florida Statutes, specifically recognizes that actively registered marks may be in a status of "nonuse" and still be renewed. Further, Sections 495.101(4) and (5), Florida Statutes, vest in the Circuit Court, rather than Respondent, the authority to determine that a registered mark has been abandoned. No evidence of abandonment was presented in this case, and in any event the Respondent is not authorized to order cancellation of a registered service mark due to abandonment.

    
    

12. The evidence presented clearly establishes that "First National Bank of Florida" is an actively registered service mark, and, further, that it so resembles the mark Petitioners seek to register as to likely result in confusion or mistake.

RECOMMENDATION

Based on the foregoing, it is recommended that Respondent enter a Final Order denying Petitioners' application to register the service mark, "First National Bank."

DONE and ENTERED this 1st day of August, 1988, in Tallahassee, Florida.

DONALD D. CONN

Hearing Officer

Division of Administrative Hearings The Oakland Building

2009 Apalachee Parkway

Tallahassee, Florida 32399-1550

(904) 488-9675

Filed with the Clerk of the Division of Administrative Hearings this 1st day of August, 1988.

APPENDIX TO RECOMMENDED ORDER, CASE NO. 88-1250

Rulings on Petitioners' Proposed Findings of Fact:

1. Adopted in Finding of Fact 3, but otherwise Rejected in Finding of Fact 5 and as irrelevant.

2. Rejected as irrelevant and unnecessary.

3-4. Rejected in Finding of Fact 7 and Rejected as unsupported in the record.

1. Rejected as irrelevant.

2. Rejected in Finding of Fact 7.

3. Rejected as irrelevant and unsupported in the record.

4. Rejected as unsupported in the record.

Rulings on Respondent's Proposed Findings of Fact: 1-2. Adopted in Finding of Fact 5.

1. Adopted in Finding of Fact 2.

2. Adopted in Finding of Fact 1.

3. Adopted in Finding of Fact 2. 6-7. Adopted in Finding of Fact 3. 8-9. Adopted in Finding of Fact 4.

10. Rejected as unnecessary.

COPIES FURNISHED:

Donald R. Hall, Esquire Suite 402, Corporate Square 2900 U.S. Highway 19, North

Clearwater, Florida 34621

Henri C. Cawthon, Esquire Department of State

The Capitol, Room LL-10 Tallahassee, Florida 32399-0250

Honorable Jim Smith Secretary of State The Capitol

Tallahassee, Florida 32399-0250

Docket for Case No: 88-001250

Orders for Case No: 88-001250