Citigroup Does Not Have Exclusive Rights to “City” Used By Capital City Bank

The Court of Appeals for the Federal Circuit upheld the USPTO Trademark Trial and Appeal Board (TTAB) decision which denied Citgroup’s opposition (see www.citibank.com) to Capital City Bank’s (see www.ccbg.com) efforts to register “CAPITAL CITY BANK.” Years earlier, Capital had registered “CAPITAL CITY BANK” with a five-pointed star design. Although courts had held that the CITIBANK mark was a “famous” trademark, Citibank, N.A. v. City Bank of San Francisco, 206 U.S.P.Q. 997, 1004 (N.D. Cal. 1980), Capital prevailed first at the TTAB and then at the Federal Circuit. Citigroup Inc. v. Capital City Bank Group, Inc., Case No. 2010-1369 (Fed.Cir. Mar. 28, 2011) (available here).

The TTAB found, and the Federal Circuit confirmed, that four of the six relevant likelihood of confusion DuPont factors favored Citigroup: (1) the fame of the CITIBANK mark; (2) the similarity of Citigroup’s services as compared to the services listed in Capital’s trademark applications; (3) the similarity of Citigroup and Capital’s trade channels; and (4) the similarity of their consumers. In contrast, the TTAB found that two of the DuPont factors favored Capital: (1) the nature and extent of any actual confusion (none found after Capital’s use) and (2) the similarity of the marks (the marks looked and sounded different). After weighing the DuPont factors, the TTAB determined that neither a likelihood of confusion nor dilution would arise from the registration of Capital’s marks and dismissed the opposition by Citigroup.

The Federal Circuit approved the TTAB’s use of the 13 factor DuPont test to determine likelihood of confusion. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) states: “In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark). (10) The market interface between applicant and the owner of a prior mark: (a) a mere “consent” to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.”

The DuPont factor test assesses the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The marks under study had distinctive spellings, CITI vs. CITY. CAPITAL CITY BANK is different from CITIBANK because (1) it starts with the word ‘Capital,’ not CITIBANK, (2) ‘City Bank’ is two words, not a compound word, and (3) applicant’s ‘City’ is spelled with a ‘y,’ not an ‘i.’ All this favored Capital. Forty (40) different websites for banking entities used the phrase “City Bank” such as Surf City Bank, Gate City Bank, Lake City Bank, and Hastings City Bank. “Capital City” is the dominant portion of the mark. The word “capital” is a commonly understood word and is descriptive of financial services and of the location of the trademark applicant.

All told, there was sufficient evidence to support the TTAB’s decision rejecting Citigroup’s opposition to the Capital City Bank marks.

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