CAFC Affirms TTAB's Dismissal of CITIBANK's Opposition to CAPITAL CITY BANK

The CAFC has affirmed the TTAB's decision in Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010) [precedential] [TTABlogged here], ruling that the Board had properly applied the du Pont factors in dismissing Citibank's Section 2(d) opposition to registration of four standard character marks that include the phrase CAPITAL CITY BANK. Citigroup, Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253 (Fed. Cir. 2011) [precedential].


Citibank dropped its dilution claim on appeal, and instead focused on the two du Pont factors that the Board decided in CCB's favor: the dissimilarity of the marks and the lack of actual confusion.

Similarity of the marks: The appellate court ruled that substantial evidence supported the Board's factual finding that the CAPITAL CITY BANK marks and the mark CITIBANK are "dissimilar in appearance, sound, connotation, and commercial impression."

The court did, however, conclude that the Board erred in its view that only "reasonable" manners of depicting a standard character mark are to be considered.

Neither Phillips nor any other opinion of the United States Court of Customs and Patent Appeals, our predecessor court, or this court has endorsed the T.T.A.B.’s “reasonable manner” limitation of variations evaluated in the DuPont analysis.
* * * The T.T.A.B.’s “reasonable manner” standard limits the range of marks considered in the DuPont analysis. * * * The T.T.A.B. should not first determine whether certain depictions are “reasonable” and then apply the DuPont analysis to only a subset of variations of a standard character mark. The T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark. As explained in Phillips, illustrations of the mark as actually used may assist the T.T.A.B. in visualizing other forms in which the mark might appear.

Lack of actual confusion: Again, the court concluded that substantial evidence supported the Board's factual finding regarding lack of actual confusion. Citibank argued that the lack of actual confusion was not significant, since CCB "has not used all the potential variations of the standard character mark." The court was not persuaded: "Although the most potentially confusing form of CCB's marks, that is, a version deemphasizing 'Capital" and emphasizing "City Bank,' has not yet been used, the critical words are all in use and there is no evidence of actual confusion." However, the CAFC did state that the "actual confusion" factor has "limited probative value in this case."

Finally, the CAFC considered the Board's legal conclusion of no likelihood of confusion, and agreed with it.

And so the appellate court affirmed the TTAB's decision.

TTABlog comment: The court did not make it clear (at least to me) what the TTAB is supposed to do in considering the possible variations of a standard character mark. The Board cannot limit its consideration to "reasonable" alternatives. So must it consider "unreasonable" alternatives?

Text Copyright John L. Welch 2011.