Establishing the Truist Financial Corp. name and brand has cost about $125 million to date, according to the bank’s latest defense brief in the trademark-infringement lawsuit filed by Truliant Federal Credit Union.
Truist also threw a legal counter-punch for the first time, claiming the Truliant brand “by itself does not have commercial strength” and is “just one mark in a crowded field.”
Truliant filed the complaint June 17 against BB&T Corp. and SunTrust Banks Inc., which combined to form Truist on Dec. 6. BB&T spent $33.5 billion to buy SunTrust with legacy BB&T shareholders owning 57% of Truist.
Truist’s headquarters is in Charlotte and its community/banking hub in Winston-Salem.
Truliant has narrowed the focus of its pull-no-punches complaint to the usage of the “Tru” prefix in the Carolinas and Virginia marketplaces that it shares with the nation’s sixth-largest bank.
Truliant wants any Truist-branded products to be destroyed. Truliant also wants to be awarded any profits made via the Truist brand as compensatory monetary damages and is requesting punitive damages.
Truist wants the federal court to dismiss the Truliant complaint with prejudice, meaning it can’t be re-filed, and to deny Truliant’s motion for a preliminary injunction.
Truist, responding as defendants BB&T and SunTrust, said they “would suffer grave harm if enjoined, and the balance of equities tips demonstrably in its favor,” citing the $125 million in expenses to date.
The bank provided a spending breakdown that includes:
- $75 million in “direct community support and marketing expenses in the name of Truist;”
- $40 million to change operating systems so that Truist could use its legal name on the merger date;
- $7 million on creating the name and branding; and
- $4 million “to have the name approved by shareholders and regulators.”
“To replace Truist with a new name would require a shareholder vote and regulatory approvals, take 6-9 months, and cost another $34 million,” the bank said.
“After informing clients and the public that BB&T and SunTrust are ‘now Truist,’ switching would undermine those relationships.”
Truliant said in a statement that "despite the investment which the defendants have made in the development of a new name, we remain steadfast behind the facts of the case, which demonstrate the strength and vitality of the Truliant name."
"No company may infringe upon the name and goodwill of another simply because of the size of its investment."
Truliant said that despite its legal challenges, "BB&T and SunTrust forged ahead to re-brand themselves at the expense of the Truliant name."
"Truliant is a commercially solid, $2.9 billion credit union with more than 30 locations in three states and has built a strong brand identity."
"We plan to continue protecting it as any business would."
Truist said Truliant “cannot meet its burden of showing a clear likelihood of success because, in plaintiff’s own words to the U.S. Patent and Trademark Office, TRU- is diluted by thousands of co-existing marks, and confusion is unlikely.”
Truist noted Truliant’s legal claim for its Tru2Go trademark application as an example.
Truist cited there are more than 7,460 federal registrations existing for “Tru-” marks, including more than 500 in financial and related services. That includes TruPoint Bank, serving Asheville and mostly Virginia.
TruPoint’s dark blue color scheme and yellow arch appear more similar to Truliant’s brand and logo.
“Plaintiff is aware of (but has not taken action against) TruPoint of Asheville, which had until recently a loan production office in Winston-Salem. Plaintiff has over 500 customers in the counties where TruPoint has branches.”
Truist has said it may take until August 2021 to fully roll out its branding campaign and branch signage changes, including in North Carolina. The main public use of Truist is at Truist Park, home of the Atlanta Braves, and sponsoring the Super Bowl Host committee.
The credit union claims a preliminary injunction is timely and necessary to stop further confusion before the Truist signs, logo and color appear at branches in the three states.
“No harm to defendants would outweigh that irreparable harm to Truliant,” the credit union said.
Todd Hall, Truliant’s president and chief executive, said in a statement in January that “unfortunately, the merged entities have ignored our complaint and we will not tolerate their infringement.”
“Our detailed motion and affidavits show not only that their use of Truist is likely to cause consumer confusion, but that it has actually caused confusion among both Truliant’s members and their customers.”
“Our motion for an injunction asks the court to put a stop to it.”
In its counterclaim, Truist said “the marks — as actually used in the marketplace — could not be more dissimilar, not only in terms of appearance, sound and meaning, but also logo, color scheme, design and stylization.”
Truist claims Truliant has not proven any “actual or imminent irreparable harm,” but rather “potential harm based on words.”
“There is no risk that anyone would confuse these marks in context in actual marketplace use. Obtaining a mortgage or opening a checking account is not like buying a candy bar.”
Truist also said that if there is marketplace confusion, it is because Truliant “took deliberate steps to create an association with itself and Truist” ... including “as soon as the Truist name was announced, plaintiff rushed to publicize the lawsuit ... and solicited reporters for coverage.”
Industry analysts have questioned such a confusion claim considering Truist has $506 billion in total assets in its 17-state network as of March 31.
By comparison, Truliant, based in Winston-Salem, has $2.6 billion in total assets as one of the largest credit unions in the Carolinas.