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• Case Summary: The Federal Circuit affirms a Trademark Trial and Appeal Board ruling denying Citigroup's opposition to a bank's registration of “Capital City Bank” and other marks, ruling that there was no likelihood of confusion between Citigroup's “Citibank” marks and the bank's marks.
• Key Takeaway: In determining likelihood of confusion, the TTAB is not required to discuss every DuPont factor and may find a single factor, such as the similarity of the marks, dispositive.
The Trademark Trial and Appeal Board's findings that a bank's “Capital City Bank” marks and Citigroup's “Citibank” marks are not similar and that there was no evidence of actual confusion were supported by substantial record evidence, the U.S. Court of Appeals for the Federal Circuit ruled March 28 (Citigroup Inc. v. Capital City Bank Group Inc., Fed. Cir., No. 2010-1369, 3/28/11).
Affirming the TTAB's denial of an opposition by Citigroup to Capital City Bank's registration of its marks, the court ruled that the TTAB did not err in finding no likelihood of confusion between the marks, stating that the board was not required to discuss every In re E. I. DuPont De Nemours & Co. factor and may find a single factor dispositive.
Capital City Bank Group Inc. filed applications with the Patent and Trademark Office to register the marks “Capital City Bank,” “Capital City Bank Investments,” “Capital City Bank Growing Business,” and “Capital City Banc Investments.” Capital City already holds two registrations for the marks “Capital City Bank,” and “Capital City Bank ATM.”
Citigroup Inc., owner of various “Citibank” service marks, also for financial services, filed a notice of opposition to Capital City's applications on the ground of priority of use and likelihood of confusion pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), and dilution pursuant to Section 43(c), 15 U.S.C. §1125(c).
In February 2010, the Trademark Trial and Appeal Board dismissed Citigroup's opposition, ruling that the “Capital City Bank” mark would be interpreted by the public as a geographic name indicator and would not likely be confused with the “Citibank” marks (79 PTCJ 479, 2/26/10). Finding that two of the six relevant likelihood of confusion factors from In re E. I. DuPont De Nemours & Co.,476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), favored Capital City--the nature and extent of any actual confusion and the similarity of the marks--Administrative Trademark Judge Marc A. Bergsman said that, although the Citibank marks are famous and Citigroup and Capital City's services are in part identical, there were no instances of actual confusion, and thus the marks were not likely to cause confusion. Further, the board ruled that Citigroup had not demonstrated that the registration of Capital City's marks would dilute its Citibank mark.
Citigroup only appealed the issue of likelihood of confusion.
Under 15 U.S.C. § 1052(d), registration of a mark must be refused it if so resembles a registered mark as to be likely to cause confusion, or to cause mistake, or to deceive.
Looking at the first of the two DuPont factors--the similarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression--Judge Arthur J. Gajarsa said that substantial evidence supports the TTAB's factual finding that Capital City's marks are not similar to Citigroup's marks. Specifically, Gajarsa said that the record detailed the distinctive spellings of the marks at issue, third-party usage of the phrase “City Bank” in the financial services industry, and the role of the word “Capital” in distinguishing Capital City's marks from Citigroup's marks.
In its determination, the TTAB relied on the frequent usage of the phrase “City Bank” in the banking industry and considered forty different websites for banking entities whose names contained the term “City Bank.” The board also examined the role of the word “Capital” in distinguishing Capital City's marks from Citigroup's marks.
Citigroup argued that because capital is a commonly understood financial term, it does little, if anything, to reduce the similarities between the marks, and that customers are likely to assume that Capital City Bank is a financial service offered by Citigroup. Gajarsa, however, said that this argument was unpersuasive as “Capital” is not merely a descriptive financial term; it has geographic connotations.
Next, Citigroup cited In re Mighty Leaf Tea,601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010) (79 PTCJ 799, 4/23/10), in arguing that the presence of an additional term in a mark, such as capital, does not necessarily eliminate the likelihood of confusion. In that case, the Federal Circuit affirmed the TTAB's rejection of Mighty Leaf Tea's application for registration of the mark “ML” in standard character form for use with personal care and skin care products because the mark “ML Mark Lees” was already registered for skin care products. The court ruled that the additional words, “Mark Lees” did not serve to distinguish the registrants's mark from ML standing alone.
Gajarsa said that the facts in Mighty Leaf Tea differ from the present case in “some critical ways”: the exact same “ML” mark was already in use, whereas here, Capital City's mark is spelled differently, is not a compound word, and is not a short or long form of Citigroup's existing marks. Further, third-party usage of marks ending in “City Bank” suggests that the public is sensitive to differences in the first word of the name of a bank, the court said.
Citigroup also maintained that because a footnote in the TTAB's opinion noted that minimizing “Capital” and emphasizing “City Bank” is not a “reasonable manner” of depicting Capital City's marks, the TTAB did not consider as many variations of Capital City's marks as it should have.
Gajarsa said that the TTAB'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 court said. “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.”
The T.T.A.B.'s opinion addresses the range of marks encompassed by the standard character format of the marks in [Capital City's] application. The T.T.A.B. determined that given the widespread use of CITY BANK, BANK is a generic banking term and CITY is part of a geographic name or identifies a community bank. … Thus, it would not be reasonable for [Capital City] to present itself in a manner not distinguishing itself from these third-party banks. … Although the Board's reference to “reasonable manners” of depicting [Capital City's] marks in its opinion is ambiguous and unduly narrow, substantial evidence supports the T.T.A.B.'s finding that [Capital City's] marks are dissimilar in appearance, sound, connotation, and commercial impression from Citigroup's marks.
Turning to the second DuPont factor--the nature and extent of any actual confusion--the court said that substantial evidence supported the TTAB's factual finding of an absence of actual confusion. Concurrent use in the same geographic markets since 1975 presented a reasonable opportunity for confusion to have occurred, but neither party is aware of any actual confusion, the court said.
Citigroup argued that it has offered services under the brand “CitiCapital” and, therefore Capital City's standard character marks could damage the value and goodwill associated with its marks. The court said that, in addition to the argument being considered waived, it lacks merit: the CitiCapital mark was not used in commerce until November 2000, well after the 1995 priority dates of Capital City's applications.
Citigroup also argued that the significance of the absence of actual confusion is negated because Capital City had not used all of the potential variations of the standard character mark. The court said that, although the most potentially confusing form of Capital City's marks, one that de-emphasizes “Capital” and emphasizes “City Bank,” has yet to be used, the critical words are all in use and there is no evidence of actual confusion.
Thus, the court said that substantial evidence supported the TTAB's analysis of the similarity of the marks and the nature and extent of any actual confusion.
The court concluded, after weighing the relevant DuPont factors, that the TTAB did not err in finding no likelihood of confusion between the parties' respective marks. The court said that six of the thirteen DuPont factors were relevant to this case, and that the TTAB was not required to discuss every factor and may find a single factor dispositive.
The TTAB found that four of the six factors--the similarity and nature of the services; the similarity of established, likely-to-continue trade channels; the buyers to whom sales are made; and the fame of the prior mark--favored Citigroup. Citigroup, in turn, argued that the TTAB incorrectly weighed the DuPont factors.
Although the T.T.A.B. deemed the CITIBANK mark famous, fame is only one of the thirteen DuPont factors. [Capital City's] marks do not employ the C-I-T-I spelling or compound word structure, characteristics that contribute to the fame of Citigroup's marks. Because those characteristics are not present in [Capital City's] marks, the fame factor is less persuasive than it is typically. Pervasive third-party use of the phrase “City Bank” in marks for financial services also limits the protection afforded to the CITIBANK mark. The dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression strongly supports a finding of no likelihood of confusion. Additionally, no instances of actual confusion have been reported despite opportunities for confusion to have occurred. But because a standard character registration would cover potential variations of the [Capital City] applications that create a different commercial impression from [Capital City]'s past uses, the “actual confusion” factor has limited probative value in this case.
Thus, the court said that Capital City's marks are not likely to cause confusion with Citigroup's marks, and it affirmed the TTAB's denial of Citigroup's opposition to the registration of the marks.
Chief Judge Randall R. Rader and Judge Sharon Prost
Citigroup was represented by Michael F. Clayton of Morgan, Lewis & Bockius, Washington, D.C. Capital City was represented by Joseph W. Berenato of Berenato & White, Bethesda, Md.
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