Citigroup Inc. v. Capital City Bank Group, Inc.

Citations: 637 F.3d 1344; 98 U.S.P.Q. 2d (BNA) 1253; 2011 U.S. App. LEXIS 6215; 2011 WL 1108255Docket: 2010-1369

Court: Court of Appeals for the Federal Circuit; March 28, 2011; Federal Appellate Court

Original Court Document: View Document

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The United States Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (T.T.A.B.) decision denying Citigroup Inc.'s opposition to four service mark applications filed by Capital City Bank (CCB). Citigroup, which provides commercial and consumer financial services, owns several federally registered marks that include the "CITI" prefix and has established the CITIBANK brand as famous in trademark law. Citigroup opposed CCB's applications on grounds of likelihood of confusion and dilution by blurring. The T.T.A.B. evaluated the opposition using the thirteen factors from the DuPont case. It found that four factors favored Citigroup, including the fame of the CITIBANK mark and similarities in services, trade channels, and consumers. Despite this, the T.T.A.B. ultimately ruled in favor of CCB, leading to Citigroup's appeal, which was affirmed by the appellate court.

Two DuPont factors favored CCB in the T.T.A.B. ruling: the nature and extent of actual confusion, and the similarity of the marks. The T.T.A.B. concluded that there was no likelihood of confusion or dilution arising from the registration of CCB’s marks, leading to the dismissal of Citigroup’s opposition. On appeal, Citigroup focused solely on the likelihood of confusion argument, stating that it did not need to address dilution to challenge the Board's dismissal. The court affirmed that it has jurisdiction under 15 U.S.C. 1071(a) and 28 U.S.C. 1295(a)(4)(B). The court reviews T.T.A.B. factual determinations for substantial evidence and the ultimate legal conclusion for correctness based on the underlying facts.

Under section 2(d) of the Lanham Act, a mark's registration must be rejected if it resembles a previously registered mark in a way that could cause confusion. Standard character registrations do not claim a specific presentation style. The likelihood of confusion is assessed on a case-by-case basis using the DuPont factors. The court examined the T.T.A.B.’s findings on the similarity of the marks and actual confusion, determining that substantial evidence supports the T.T.A.B.’s conclusion that CCB’s marks are not similar to Citigroup’s. Key elements included distinctive spellings, third-party usage of "City Bank" in financial services, and the distinguishing role of the word "Capital" in CCB’s marks.

CCB’s marks differ from Citigroup’s marks in spelling, which the court recognizes as a basis for mark dissimilarity. Citigroup’s marks consistently use the C-I-T-I spelling as seen in the case of Champagne Louis Roederer, S.A. v. Delicato Vineyards, where the court identified dissimilarity between CRISTAL and CRYSTAL CREEK. The T.T.A.B. noted that "CAPITAL CITY BANK" lacks characteristics of the CITIBANK marks due to its different starting word, its separation into two words, and the distinct spelling of "City." The district court in Citigroup Inc. v. City Holding Co. emphasized that the "I/Y distinction" is critical, asserting that the distinct spelling of "CITI" contributes significantly to its trademark protection. Citigroup has consistently maintained that its marks are distinct and has argued that various banks using "City Bank" do not undermine the strength of its mark. The T.T.A.B. referenced numerous examples of banks with "City Bank" in their names, concluding that such uses do not dilute Citigroup’s trademark. Citigroup is concerned that registering "CITY BANK" marks could complicate its ability to protect its trademark but does not oppose the registration of "CAPITAL CITY." The denial of CCB's registration would not hinder its business objectives.

CCB's acquisition of the mark "CAPITAL CITY" in standard character form, when combined with the term "BANK," is under consideration since "BANK" is deemed generic by the T.T.A.B. This combination could establish the mark "CAPITAL CITY BANK," despite the presence of similar third-party marks, such as "SURF CITY BANK," which has a federally registered standard character mark differing only by the substitution of "CAPITAL" for "SURF." The T.T.A.B. finds "CAPITAL CITY" to be the dominant element in CCB’s marks, primarily due to its placement at the beginning, which creates a distinct commercial impression compared to Citigroup’s marks. The Board also noted that the disclaimed term "BANK" does not detract from the dominance of "CAPITAL," reinforcing that the unclaimed term typically holds greater significance. 

Citigroup contends that "capital" being a common financial term does not alleviate the similarities, arguing that consumers might confuse "CAPITAL CITY BANK" as a service from Citigroup. However, this assertion is countered by the notion that "Capital" also has geographic significance, referencing Tallahassee, Florida. Citigroup references the In re Mighty Leaf Tea case to support its claims, but the circumstances differ notably; in Mighty Leaf Tea, the exact same "ML" mark was already registered, whereas CCB’s mark is distinctly different and not simply an abbreviation or variation of Citigroup’s marks. Additionally, the prevalence of third-party marks ending in "City Bank" indicates that consumers are likely to recognize differences in the first word when identifying bank names.

Citigroup argues that the T.T.A.B. improperly limited its evaluation of variations of CCB’s marks by deeming certain depictions as not "reasonable," specifically regarding the emphasis on "CITY BANK." Both parties reference the Phillips case as establishing that only "reasonable" manners of depicting a standard character mark should be considered. In Phillips, the court opposed a mark due to its resemblance to a previously registered mark, concluding that confusion was likely based on how the mark was visually presented. The excerpt highlights that neither Phillips nor any other relevant court has supported the T.T.A.B.'s “reasonable manner” limitation in the DuPont analysis. Although this limitation has been applied in multiple T.T.A.B. proceedings, it is not a formally adopted standard. The T.T.A.B. must evaluate all reasonable manners in which a mark could be depicted when registered in standard character format, as established in prior cases. Citigroup contends that the T.T.A.B.'s approach restricts the evaluation of marks, arguing that once a standard character registration is obtained, it should be considered in various depictions without the "reasonable manner" constraint. Furthermore, Citigroup interprets the T.T.A.B.'s comments on CCB's past mark presentations as focusing too narrowly on past usage rather than considering potential future displays, in conflict with the principles set forth in Cunningham v. Laser Golf Corp.

In the case involving Cunningham, the court canceled the junior trademark LASERSWING for a golf practice device due to the existence of the senior trademark LASER for golf clubs and balls. The ruling emphasized that a respondent in a cancellation proceeding cannot claim dissimilarity based on the font, color, logo, or house mark used in their registration. The T.T.A.B. examined the range of marks in CCB’s application and determined that "BANK" is a generic term in the context of banking while "CITY" serves as a geographic identifier. Therefore, CCB could not distinguish itself effectively from third-party banks. Although the Board's mention of "reasonable manners" was seen as ambiguous, substantial evidence supported the T.T.A.B.’s conclusion that CCB’s marks are significantly different from Citigroup’s marks in various aspects.

Regarding the DuPont factor of actual confusion, the T.T.A.B. found no evidence of confusion despite the concurrent use of the marks since 1975 in close geographic proximity, which should have presented a reasonable opportunity for confusion. Citigroup argued that its extensive advertising and the nature of services rendered would have led to confusion if the marks were similar. However, the absence of confusion despite this exposure undermined Citigroup's position. Citigroup's assertion that its "CitiCapital" brand could be damaged by CCB's marks was dismissed, as "CitiCapital" was not used until 2000, postdating CCB’s applications. The court also refuted Citigroup's claim about the absence of all potential variations of CCB's marks affecting confusion, citing that unlike the case of Nina Ricci, CCB's marks had been commercially used in overlapping markets without any evidence of confusion. Overall, the T.T.A.B.’s findings on mark similarity and actual confusion were well-supported by substantial evidence.

After evaluating the pertinent DuPont factors, the T.T.A.B. correctly determined that there was no likelihood of confusion between the parties' marks. Not all DuPont factors hold equal significance, and any single factor can be decisive. In this case, six of the thirteen factors are relevant: 1) overall similarity of the marks; 2) nature of the goods/services; 3) trade channels; 4) target consumers; 5) fame of the prior mark; and 6) actual confusion. The T.T.A.B. identified CITIBANK as a famous mark, which greatly influences the likelihood of confusion analysis due to its broad protection scope. Fame can be gauged by sales volumes, advertising efforts, and duration of recognition, with studies indicating a 90-95% unaided awareness level for the CITIBANK mark. The second factor assessed the resemblance and nature of services offered by Citigroup and those in CCB’s applications, finding them virtually identical. The T.T.A.B. recognized that both parties operate in unrestricted trade channels targeting the same consumers, thereby favoring Citigroup in the third and fourth factors as well.

The T.T.A.B. found that the trade channels and classes of consumers for Citigroup and CCB are nearly identical. Citigroup contended that the T.T.A.B. misapplied the DuPont factors, arguing that the factors should not be treated equally, as they carry different weights. While the T.T.A.B. recognized the CITIBANK mark as famous, this fame is only one of thirteen DuPont factors. CCB's marks lack the distinctive C-I-T-I spelling and structure that contribute to Citigroup's mark's fame, rendering the fame factor less impactful. Additionally, widespread third-party use of "City Bank" in financial services limits the protection available for CITIBANK. The differences in appearance, sound, connotation, and overall impression between the marks support a conclusion of no likelihood of confusion. There have been no reported instances of actual confusion, even with potential for it. However, the standard character registration might cover variations of CCB’s marks, diminishing the relevance of the "actual confusion" factor. After weighing the DuPont factors, the conclusion reached is that CCB's marks are unlikely to cause confusion with Citigroup's marks. The T.T.A.B.'s denial of Citigroup’s opposition to CCB's mark registration is affirmed, and each party will bear its own costs.