Mass Mutual sues JPMorgan over "smart" retirement trademark

By Andrew Chung

(Reuters) - Unable to reach a compromise with JPMorgan Chase & Co (JPM.N) over the use of the term "smart" in relation to its lucrative retirement savings products, major life insurance provider MassMutual is taking the banking company to court.

MassMutual said discussions on Friday over its RetireSmart brand and the bank's SmartRetirement trademark had failed, prompting it to immediately file a lawsuit in Massachusetts federal court.

The insurer is asking for a declaration that it is not infringing on JPMorgan's trademark.

MassMutual, formally known as Massachusetts Mutual Life Insurance Co, is owned by policyholders and manages $147 billion in assets in its retirement business. It has used the brand RetireSmart for its mutual fund and retirement planning services for eight years, the lawsuit said. The company also has a website under the same mark.

JPMorgan first told MassMutual it was infringing the bank's trademark last May. The two sides engaged in discussions over the summer, according to the court filing, and a coexistence agreement was drafted, but it ultimately failed.

Finally, in a telephone conversation on Friday, Dan Serrao, a managing director at the bank, told MassMutual's corporate vice president Todd Picken that they were at an impasse.

The suit by MassMutual demands the cancellation of JPMorgan's trademark, because "many individuals and companies" use the terms "smart" and "retirement" in connection with helping people save for their post-work years. The company also argued there should be no trademark on a term that was "merely descriptive."

"We are confident in our position," MassMutual spokesman David Potter said.

Representatives for JPMorgan did not immediately return a request for comment.

The case is Massachusetts Mutual Life Insurance Co v. JPMorgan Chase & Co, in the U.S. District Court for the District of Massachusetts, No. 14-cv-30183.