Tuesday, February 23, 2010

Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition

You can learn an awful lot about trademark law by reading this 68-page decision covering a myriad of issues concerning Section 2(d) likelihood of confusion and Section 43(c) dilution. Citigroup opposed registration of the marks CAPITAL CITY BANK, CAPITAL CITY BANC INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS, and CAPITAL CITY BANK INVESTMENTS for banking and financial services, in view of the registered mark CITIBANK and variations thereof for banking services. The Board dismissed the opposition, finding no likelihood of confusion or dilution primarily in view of the differences in commercial impression engendered by the parties' marks. This posting will hit the high points of the Board's ruling, but readers are urged to consume the entire opinion. Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential].

Fame as of when?: The Board began with a discussion of Citigroup's burden of proof in establishing when the CITIBANK mark became famous for dilution purposes. Normally, in opposing an I-T-U on dilution grounds, an opposer must show that fame was acquired before the I-T-U filing date. Here, however, each of Applicant's three I-T-U's include the term CAPITAL CITY BANK (the fourth applied-for mark), and so the Board concluded that Citigroup must show that its mark became famous prior to the first use date of that use-based application.

Morehouse defense: Applicant claimed that Citigroup could not be harmed by registration of the applied-for marks because Applicant already owns three registrations for marks containing the term "Capital City Bank." As usual, this defense failed because the marks of the prior registrations (which included the star logo shown above) and the recited services are not "essentially the same" as the applied-for, standard character marks at issue here.

Opposer's registrations: Citigroup attempted to introduce its registrations into evidence via the testimony of its senior IP counsel, but it failed because she "did not expressly testify that the registrations are owned by opposer and that they are currently subsisting." However, Applicant did not contest Citigroup's ownership of the registrations, nor whether they are still in force. Moreover, Applicant referenced the registrations in its brief. Therefore, the Board treated them as of record.

Opposer's family of marks: The question was whether Citigroup established a family of marks prior to Applicant's first use date. The Board found that Applicant may rely on its use of the mark CAPITAL CITY BANK GROUP to establish priority, and that its first use date was 1975. Citibank did not address this issue in its brief, and its evidence failed to establish an earlier date for its family of marks. Thus the family of marks doctrine was unavailable to Citigroup.

Likelihood of Confusion: Citigroup presented overwhelming evidence that CITIBANK is a famous mark for Section 2(d) purposes. The Board then found the services involved to be, at least in part, identical as to each opposed application. As a result, the Board presumed that the channels of trade and classes of customers are the same. Next, the Board found the lack of actual confusion to be a factor weighing in favor of Applicant, since there had been ample opportunity for confusion to arise.

The key issue was the similarity or dissimilarity of the marks. The Board found that Applicant's marks are not similar to Citigroup's marks:

Since the commercial impression of applicant’s marks is the geographic designation CAPITAL CITY and the generic term “Bank,” applicant’s marks are not similar in appearance, sound or meaning with opposer’s CITIBANK marks. The absence of any reported instances of actual confusion lends credence to this finding because, considering the widespread advertising of opposer’s marks and the identity of the services, if the marks were similar then it is likely that there would be some reported instances of confusion or mistake as to source such as misdirected telephone calls, visits, or requests for information, or other indicia of confusion in the marketplace.

Balancing all the factors, the Board concluded that the "significant differences" between the marks outweigh the fame of the CITIBANK marks.

Likelihood of Dilution by Blurring: Based on the record, the Board found that the CITIBANK marks became famous in 1983, after Applicant's first use of the CAPITAL CITY BANK mark. Therefore Citigroup's dilution claim failed for that reason alone.

Moreover, the Board reviewed the statutory dilution factors and found no likelihood of dilution:

We have found that the marks are not substantially similar, that there are numerous third-party users of the term “City Bank,” that there is no evidence demonstrating any association between the parties’ marks, and that there is no evidence that applicant intended to create an association with opposer’s marks[; these factors] outweigh the fame and distinctiveness of the CITIBANK marks.

Decision: The Board dismissed the opposition.

TTABlog comment: This is the first TTAB decision on dilution in a long time. Usually, as here, the dilution claim is combined with a Section 2(d) claim, but the Board never gets to the dilution issue. If the opposer proves Section 2(d) fame (a lower standard than for dilution) then the strength of the mark and its broad scope of protection will typically bring victory on that claim and the Board will decline to reach the dilution issue. If the opposer fails to prove Section 2(d) fame, then it perforce will not satisfy the higher fame standard for dilution, and again there is no need for the Board to discuss dilution at any length. Here we have the unusual case of an opposer losing on the likelihood of confusion issue even though its mark is famous.

Can you think of a situation in which an opposer could lose on the Section 2(d) claim but win on the dilution claim? Answer from Marty Schwimmer: isn't that why we have dilution? E.g., Buick for shoe polish. [Or TTABLOG for cat food].

Text Copyright John L. Welch 2010.


At 1:03 PM, Blogger Dan said...

Banks, in particular, have a lot of naming conflicts due to the fact that this line of business was heavily regulated for decades in a manner that limited their geographical spread, with federal law prohibiting most forms of interstate banking, and many states further limiting branching within the state; the result was that there were different banks in every town, and many of them had names with similar elements like "First National" and "City". The result, once the regulations eased up and some banks started to engage in national marketing, was the necessity for similarly-named banks to coexist; there are quite a few banks that have some form of "City Bank" in their name, despite the fame of Citibank.


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