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July 27, 1989


The opinion of the court was delivered by: WOLIN

 Currently before the Court is the motion of plaintiff, First Fidelity Bancorporation, for dismissal pursuant to Fed.R.Civ.P. 12(b)(6) of all counterclaims raised by defendant, First Fidelity Capital Corp., based on the failure to state a claim upon which relief can be granted. Alternatively, plaintiff seeks dismissal of defendant's counterclaims by entry of summary judgment in its favor. For the reasons set forth below, plaintiff's motion for summary judgment is granted as to all three counterclaims.


 Plaintiff, First Fidelity Bancorporation ("First Fidelity" or "plaintiff"), is an interstate bank holding company with a number of subsidiaries operating under names which include the words "First Fidelity." *fn1" Plaintiff's "First Fidelity Capital Corporation" provides commercial lending services, and its non-banking subsidiaries include entities which provide insurance, capital financing, commercial mortgage banking services, and community development assistance. J. Roger Williams Affidavit, at para. 7.

 Plaintiff is the owner of Federal Service Mark Registration No. 1,431,461 for the mark "FIRST FIDELITY & DESIGN." Plaintiff and its subsidiaries utilize this mark in connection with banking and financial services, and believe that the public has come to associate the "FIRST FIDELITY" names and marks with plaintiff as indication of the source of plaintiff's services, and to symbolize the quality of those services. Williams Affidavit, at para. 12.

 Defendant, First Fidelity Capital Corp. ("FFCC"), is a New York corporation that has been engaged in the business of brokering stocks, mutual funds and insurance since November 1985. FFCC has utilized the mark "FIRST FIDELITY CAPITAL CORP." since June 1986. *fn2" However, plaintiff claims that prior to filing the instant action, it determined that defendant's incorporation under the "First Fidelity Capital Corp." name was subsequent in time to plaintiff's earlier use of its "FIRST FIDELITY" names and marks. Williams Affidavit, at paras. 3, 7 & 8.

 Defendant claims that it selected the mark because the individual words thereof conveyed a desirable connotation arising from their historical and descriptive use in the financial industry. Moreover, defendant claims that it adopted the mark with the belief that the individual words thereof, in various combinations or individually, were in common use and were in the public domain. Rubin Affidavit, at 1.

 Defendant apparently ordered a corporate name search prior to its selection of the mark in question. The search, defendant contends, revealed numerous other businesses utilizing various combinations of the words "Fidelity," "First," and "Capital" to identify their services. Rubin Affidavit, at 2. Defendant further claims that it is not in direct competition with plaintiff's subsidiary, and is not aware of any customer confusion as to the identity of, or source of services offered by plaintiff and its subsidiaries and FFCC. Id.

 Plaintiff filed the present suit based on its belief that defendant's "First Fidelity Capital Corp." name is confusingly similar to plaintiff's family of "FIRST FIDELITY" names and marks, and is being used in connection with services which are competitive with or closely related to those of plaintiff. More specifically, plaintiff has alleged federal trademark infringement (15 U.S.C. § 1114); false designation of origin and false description (15 U.S.C. § 1125(a)); and common law unfair competition. Defendant has counterclaimed alleging abuse of process; federal unfair competition (15 U.S.C. § 1125); and New Jersey unfair competition (N.J.S.A. 56:4-1 et seq.). It is with regard to these counterclaims that plaintiff now seeks dismissal or, alternatively, summary judgment.


 A motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim will be granted where it is clear that the claimant can prove no set of facts entitling him to relief. Conley v. Gibson, 355 U.S. 41, 45, 2 L. Ed. 2d 80, 78 S. Ct. 99 (1957). When matters outside the pleadings are presented to and not excluded by the court, such motion shall be treated as one for summary judgment and disposed of pursuant to Fed.R.Civ.P. 56.

 Summary judgment will be granted when the moving party proves that there are no genuine issues of material fact to be resolved at trial. Anderson v. Liberty Lobby, 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). Where an examination of the facts demonstrates that the non-moving party will be unable to prevail on its claims at trial, summary judgment is warranted. The mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment. Anderson, 106 S. Ct. at 2510 (emphasis in original). The disputed facts must be material to the resolution of the matter. Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is "no genuine issue for trial." Matsushita Electric Industrial v. Zenith Radio Corp., 475 U.S. 574, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986) (citing First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 88 S. Ct. 1575, 20 L. Ed. 2d 569 (1968)).

 In light of the affidavits submitted to this Court, the present motion will be treated as one ...

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