Credit Suisse has filed a petition for the cancellation of a trademark for the First Boston name before the US Trademark Trial and Appeal Board as it looks to assert its claim to the historic brand as part of a new strategy for its investment bank.
The holder of the First Boston trademark in the US is a company called First Boston Inc, which is based in New York. The application for the mark was originally made in 2018 by a company called Dominant Brands, which assigned it to First Boston Inc in June 2020. Christopher Daniels is listed in US Patent and Trademark Office filings as managing director of Dominant Brands.
In its petition dated October 26, Credit Suisse lists several grounds for cancellation, including that there was no use of the brand in commerce to justify the award of the trademark and that the holder of the trademark had made false suggestions of connections between it and the original First Boston entity, to which Credit Suisse is the legal successor.
Credit Suisse's complaint characterised the use of the trademark by First Boston Inc as "a deliberate and blatant attempt to falsely suggest a connection with the true 'First Boston' and Credit Suisse". It said the start-up was using as its logo the same image of a sailing ship formerly used by the original First Boston.
"While the proffered evidence of use consists of screenshots of a website purporting to offer various services, such as 'Invrestment [sic] banking services including brokering business sales and acquisitions', Dominant Brands and Mr. Daniels do not appear to have licenses for such services," wrote Credit Suisse's lawyers.
On the same day as its petition, Credit Suisse filed its own application for a new US trademark, CS First Boston.
First Boston, once a leading bulge bracket firm on Wall Street, formed a joint venture with Credit Suisse in 1978 as part of its expansion into Europe. Credit Suisse took control of the firm after bailing it out in 1990 following a collapse in the junk bond market, and built the business further in 2000 when it acquired Donaldson Lufkin & Jenrette for US$11.5bn.
Credit Suisse phased out the First Boston brand in 2006 but said on October 27 it was planning to resurrect it as part of a major restructuring. “It's classic Credit Suisse to make it [the First Boston brand] a key part of their strategy and then spark more litigation," said a former Credit Suisse banker.
“Credit Suisse’s investment banking and capital markets business has a strong track record of leveraging our long-term heritage from, and roots in, First Boston and DLJ," said a spokesperson for Credit Suisse in an emailed statement.
"The bank has developed the First Boston trademark and related reputation and goodwill over decades, and will vigorously pursue and defend its rights in this regard.”
It is not the first time that Dominant Brands has registered a trademark for a legacy investment banking brand. The company was also behind the Salomon Brothers trademark that is now being used by a New York-based start-up called Salomon Encore. The legal successor to the original Salomon Brothers entity is Citigroup, but it has allowed its trademark rights to lapse and is not connected to Salomon Encore.
Dominant Brands has also sought to register the trademarks of other well-known, defunct financial services brands such as Robertson Stephens, Bank of Boston and Shawmut, and even attempted to register the trademark of US airline TWA, though its application was refused in 2012 due to likely confusion with the trademark held by American Airlines.
Credit Suisse is being represented in the trademark case by John Welch of Wolf, Greenfield and Sacks and David Herrington of Cleary Gottlieb Steen and Hamilton.
First Boston Inc registered a change of representation on October 24, having appointed upstate New York firm Harter Secrest and Emery as legal adviser. Although the trademark has been transferred to First Boston Inc, Daniels and Dominant Brands continue to be listed on the most recent filings.
First Boston Inc did not immediately respond to a request for comment.
Updated story: Adds detail throughout