The dispute over the “Tru” prefix appears likely to take into 2021 to resolve between Truliant Federal Credit Union and Truist Financial Corp.
Truliant filed a federal trademark-infringement lawsuit June 17 against BB&T Corp. and SunTrust Banks Inc., which combined to form Truist on Dec. 7.
A legal filing Thursday lays out a potential timeline leading up to a jury trial projected to take two weeks.
An initial pretrial conference hearing is set for 9:30 a.m. Tuesday at the federal courthouse in Durham.
The parties said Friday they have agreed upon Jonathan Harkavy to serve as mediator, and that mediation hearings would be due by Sept. 4.
The filing cites Truliant’s intent to file a preliminary injunction. The discovery process has a Jan. 1, 2021, deadline for completion.
“The parties have engaged in substantial settlement discussions, but have been unable to resolve the dispute,” according to the filing.
Truliant requests that Truist be prevented from moving forward with marketing Truist at retail or online sites, including applying for Truist trademarks.
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, as well as requesting punitive damages.
Meanwhile, Truist wants the federal court to dismiss the Truliant complaint with prejudice, meaning it can’t be re-filed.
BB&T and SunTrust announced Feb. 7 that BB&T was buying SunTrust in a $30.4 billion megadeal in which BB&T shareholders would have a 57% ownership stake.
Truist is based in Charlotte, with Winston-Salem operating the community/retail banking hub and Atlanta the wholesale banking hub.
On June 12, the banks unveiled Truist Financial Corp. as the name for their combined holding company and Truist Bank as the retail brand.
Truliant filed Wednesday its response to the counterclaim submitted by BB&T and SunTrust on Dec. 18.
Truliant has narrowed the focus of its complaint to the usage of “Tru” in the marketplaces it shares with the bank. The lawsuit has centered on Truliant’s concerns of confusion between it and Truist in the Carolinas and Virginia.
Industry analysts have questioned such a claim considering Truist has $463.7 billion in total assets in its 17-state network.
By comparison, Truliant, based in Winston-Salem, has $2.6 billion in total assets as one of the largest credit unions in the Carolinas.
Truist unveiled Monday a blending of BB&T burgundy and SunTrust blue into a purple hue.
“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 said in its counterclaim. “There is no risk that anyone would confuse these marks in context in actual marketplace use.”
Truliant acknowledged in its response that it previewed the Truist logo and colors, “which differ from Truliant’s logo and colors.”
Truist has claimed that “many banks, credit unions, financial service companies and others use ‘Tru’ in their names without confusion.” It lists the brand logos for 24 financial institutions, 12 of which use the “Tru” prefix and 12 that use a variation of True, Trust or Truity in their brand.
“In this crowded field, consumers can easily differentiate among these various uses of ‘Tru,’” according to the response.
Truliant countered by saying that while it acknowledges other financial institutions use “Tru,” only Truist “provides goods or services within the counties ... in Truliant’s field of membership.”
Truliant claims its goods and services are comparable with those offered by Truist. It has cited concerns that its trademarks are being harmed when consumers do an online search and type in “Tru,” and Truist appears as an option.
Truliant claims a trademark distinction for its use of “Tru” by claiming that many of the existing financial and insurance trademarks “are not pronounced as ‘TrÙ.”
Truist claims that “by filing this lawsuit, plaintiff Truliant ... is improperly (attempting) to monopolize the common term ‘Tru-.’
“But the truth of the matter is that no one can exclusively own the term ‘Tru.’ ”