Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Credito Oriental, No. 11-1473 (1st Cir. 2012)Annotate this Case
The parties in this case were competing financial institutions operating in Puerto Rico. Plaintiffs (collectively, "Oriental") had for many years used the ORIENTAL mark in connection with advertising, promotion, and offering of financial services in Puerto Rico. Oriental contended that beginning around 2009, Defendant ("Cooperativa") used a confusingly similar mark, COOP ORIENTAL, and a confusingly similar logo containing that mark in connection with its financial business and services, in violation of the Lanham Act and Puerto Rico trademark law. Finding a likelihood of confusion, the district court ordered Cooperativa to cease all use of its new logo (which used the COOP ORIENTAL mark with an orange trade dress) but allowed Cooperativa to revert back to using its pre-2009 logo (also containing the COOP ORIENTAL mark, but with a different trade dress). On appeal, Oriental contended that the court's injunction should have been broader to include any use of the COOP ORIENTAL mark and similar marks. The First Circuit Court of Appeals remanded to the district court to determine whether there was a likelihood of confusion as to the COOP ORIENTAL mark and other marks and whether the injunction should be broader.