First Interstate Bancorp v. Stenquist

First Interstate Bancorp (Bancorp) (plaintiff) owned a number of banks called “First Interstate Banks.” Bancorp registered “First Interstate Banks” in California in 1980 and then with the United States Patent and Trademark Office (PTO) between 1984 and 1986. Stenquist (defendant) owned a real-estate business called “First Interstate Realty.” Stenquist claimed that this title was used since 1981 and without any knowledge that Bancorp had used “First Interstate.” In 1988, Stenquist licensed the use of “First Interstate Realty” to Carson. The license was labeled as a limited license to use the trademark, but Stenquist did not enforce or control Carson’s use of it after the agreement had been signed. The agreement did not contain any other quality-control requirements except that Carson warrant that he was a broker in good standing. The agreement also emphasized that the two companies would remain separate entities. Bancorp sued Stenquist for trademark infringement, and Stenquist counterclaimed that Bancorp had committed trademark infringement. Bancorp claimed that it had used and registered “First Interstate” prior to Stenquist’s use of it. Furthermore, Bancorp claimed that, even if Stenquist had a right to use the mark, the license of the mark to Carson waived Stenquist’s right to bring a claim for trademark infringement. Bancorp filed for a partial summary judgment on whether Stenquist had abandoned his rights to the trademark.