CITIAIR for Travel Agency Confusable With Famous "CITI" Family of Marks, Says TTAB
Making a rare finding that a party had established a family of marks, the Board sustained an opposition to registration of the mark CITIAIR & Design (shown below) for "travel booking agencies," finding it likely to cause confusion with Citigroup's family of "CITI" marks for banking, credit card, and related services. Citigroup Inc. v. Citiair, LLC, Opposition No. 91201920 (March 31, 2014) [not precedential]
Opposer relied on 23 CITI-formative marks,including CITITRAVEL, CITIRAIL, CITI, CITIBANK, CITIGROUP. It also claimed common law rights in the marks CITI SPECIALS, CITI CARDS, CITIBANK ONLINE, and CITI MILES (in design form). It alleged use of CITI marks in connection with certain third-party credit cards, and asserted ownership of thirteen vanity telephone numbers that included CITI.
Family of Marks: A family of marks is a group of marks having a common characteristic, that have been used in such a way that the public associates the common term (or "master") with the mark owner. Using a series of similar marks does not necessarily create a family. There must be recognition by the purchasing public that the common term indicates a common origin for the goods or services.
Citigroup contended that it has a family of CITI marks "in the sense that the 'master' mark CITI or another key family mark (e.g., CITIBANK) is used along with one or more CITI Marks in association with each other." The Board agreed. For example, a 2008 internet advertisement showed the word marks CITI, CITIBANK, CITIMANAGER, CITIDIRECT, and the CITI logo mark. A 1999 brochure displayed CITIGOLD, CITICORP, CITIBANK, CITICARD, and THE CITI NEVER SLEEPS. The Board found that opposer had used and advertised numerous CITI-formative marks in a manner to create common exposure and recognition. [So all you have to do is display all the marks on one page? That creates a family? - ed.].
Fame: Citigroup's revenues figures were staggering: for example, $13 billion for 2011. Its advertising expenditures were "extremely impressive." Brand-tracking studies showed high brand awareness. Media references indicated extensive public recognition and renown of the CITI and CITBANK brands. The Board concluded that the family of CITI marks [the entire family? - ed.] is famous for Section 2(d) purposes.
The marks: Applicant's mark "conforms to the format of opposer's demonstrated family of marks." The word "air" is at least highly descriptive of applicant's services and the design portion is "very highly suggestive" of same, and so the "Citi" portion is dominant in the applied-for mark. The Board concluded that this duPont factor favored a finding of likely confusion.
The services: Opposer's CITITRAVEL registration covers travel planning services and, and opposer offers discounts on airfare, hotels, and dining to its customers. Its credit card services have "numerous points of contact with travel services," including co-branding with airlines and hotels. The Board noted that opposer is not a travel agent, but these cross-marketing efforts have exposed consumers to many of the CITI marks in the context of travel services. Therefore, the Board found a "significant commercial relationship between opposer's business and applicant's identified services."
Other factors: The Board found that the ordinary channels of trade for "travel booking" services overlap substantially with opposer's advertising channels. As to customers, applicant argued that its target audience consists of "cost-conscious Indian consumers" who want "cheap airfare" between India and this country. That was irrelevant, however, since there were no such restrictions in the opposed application. Finally the Board found the potential for confusion to be substantial in view of the large scope of opposer's business.
Balancing the relevant duPont factors, the Board found confusion likely, and it sustained the opposition. It declined to reach Citigroup's dilution claim.
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TTABlog note: Hardly a fair fight. Once Citigroup got the "fame" label, it was all over.
Text Copyright John L. Welch 2014.