WBA-Initiated Legal Action

Rose Oswald PoelsBy Rose Oswald Poels

I have worked full time at WBA now for almost 29 years and have had the pleasure of interacting with my colleagues (legal counsels and state association executives) from around the country at various American Bankers Association (ABA) and Independent Community Bankers of America (ICBA) events throughout that time. Every banking association is focused on the same general priorities of advocating on behalf of their members in each state and with our respective congressional delegations for the good of the entire collective banking industry, as well as providing member value through various products and services. All these state associations are a family in the sense that we all are working to better the banking industry.

Particularly in the advocacy space, congressional and federal regulatory action impacts the franchise value of every bank in the country. Consequently, each state association must do its part to help elect individuals to office who are “B” for banking, and nurture relationships with their members of Congress to at least have constructive dialogue with them on issues important to the industry. The strength of our industry is inextricably tied to the strength of each individual state association working collectively with each other on these common goals. To accomplish this, we need bankers to support the trade associations in the states in which they do business, and we need the state associations to work cooperatively with each other. Unfortunately, the latter is not currently happening.

I learned last spring that the California Bankers Association (CBA) filed an application with the U.S. Patent and Trademark Office (USPTO) seeking federal trademark registration of trademark “WBA.” The application was filed in late 2017, just prior to their merger with the Western Independent Bankers (WIB) organization. After CBA’s merger with WIB, CBA changed its name to Western Bankers Association. Unfortunately, the USPTO issued the federal trademark registration in February 2020 despite the Wisconsin Bankers Association’s existing and long-standing trademark rights in the trademark “WBA,” and despite the likely similar rights of two other state banking associations in the trademark “WBA.” None of the trade association executives from the state associations with rights in the mark “WBA” were made aware of this filing by CBA.

Given the common law trademark rights the Wisconsin Bankers Association has long held in the “WBA” trademark, this situation is untenable. Last May, I joined my colleagues from Washington and Wyoming in a virtual meeting with Steve Andrews, the current Western Bankers Association President and CEO, to attempt to discuss and resolve this situation, with our requests including that he voluntarily surrender this federal trademark registration with the USPTO. It was clear in that conversation that Mr. Andrews believed they had an asset worth protecting and surrender of the registration was unlikely. The three state associations with rights in the mark “WBA” then attempted to settle with the Western Bankers Association through our respective attorneys throughout last fall.  When it became clear that an amicable final resolution would not happen, we initiated an administrative legal action in the USPTO in November seeking cancellation of CBA’s federal trademark registration.

Efforts by many association colleagues to encourage Mr. Andrews to work out these legal issues have continued, but instead he has chosen to double down on his position. In the case of the WBA trademark registration, the Western Bankers Association chose to file a response in the pending action denying our claims on January 3, 2022, so that action now continues to the discovery phase. If this legal action proceeds through the full trial schedule, the case will continue well into 2023.

To the best of my knowledge, this is the first time that an individual state bankers association has attempted to federally register a trademark in which another state bankers association owns prior trademark rights. It is incredibly disappointing that another peer association would take this action, which knowingly and purposely harms other associations and their members. I know that we all could use the money we are spending on legal fees in other ways for the benefit of all of you rather than engaging in this family feud.

Since this is the first time WBA has been a party in a legal action of this type, I wanted to bring this matter to your attention since you are members, and, therefore, owners of WBA. Furthermore, I am aware that the Western Bankers Association is regularly emailing and soliciting banks outside of the state of California for membership and for participation in their education programs, including many of you. Please consider their actions in this matter when you receive this type of communication. If you have any questions on our legal action, please don’t hesitate to contact me directly.