No likelihood of confusion or dilution due to different commercial impressions

United States of America
In Citigroup Inc v Capital City Bank Group Inc (Opposition 91/177415, February 16 2010), a case involving four applications in standard character form for the marks CAPITAL CITY BANK, CAPITAL CITY BANK INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS and CAPITAL CITY BANC INVESTMENTS, all for financial services, the Trademark Trial and Appeal Board (TTAB) has found that the marks were not confusingly similar to, and did not dilute, the famous CITIBANK mark.
 
The TTAB first had to address the issue of priority. Citigroup Inc, the owner of the CITIBANK mark, based its allegations of likelihood of confusion and dilution on its prior use of CITI formative marks, which created a family of marks. In support of its allegations, Citigroup relied on 12 registrations for CITI formative marks for financial services. The TTAB determined there was no issue of priority; Citigroup clearly had priority. However, to rely on its family of marks allegation, Citigroup had to establish that it had a family of marks prior to the applicant’s first use of its marks. Based on the record before the TTAB, Citigroup established a family of CITI formative marks as of November 2000.
 
The applicant attempted to 'tack' its use of CAPITAL CITY BANK to earlier use of CAPITAL CITY BANK GROUP. The applicant argued that its priority date should be 1975, the year it began using CAPITAL CITY BANK GROUP. In permitting the applicant to tack on its use of CAPITAL CITY BANK to CAPITAL CITY BANK GROUP, the TTAB determined that the two marks created the same commercial impression and were therefore essentially the same. Because the applicant could rely on rights dating back to 1975, and Citigroup could show that it had a family of CITI formative marks only since 2000, Citigroup could not rely on its family of marks argument. It had to rely on its individual registrations.
 
After determining priority, the TTAB turned to weighing the relevant likelihood of confusion factors and found that a number tilted in favour of Citigroup:
  • CITIBANK is a famous mark;
  • the services recited in the opposed applications and in Citigroup’s registrations of record were partly identical; and
  • the parties channels of trade were presumed to be the same, and the classes of purchasers the same.
These factors, however, could not outweigh two remaining factors:

  • the nature and extent of any actual confusion; and
  • the similarity or dissimilarity of the marks in sound, appearance, connotation and commercial impression.
Specifically, the TTAB found that there was a reasonable opportunity for confusion to have occurred. Citigroup contended that the parties did not operate in the same geographical locations, so a lack of actual confusion was not probative. The applicant countered this argument by introducing evidence of geographic overlap of locations through a declaration of one its attorneys, William Schrot. Schrot used Citigroup’s 'Find Citi locations' on its website to identify “whether [the] opposer had Citibank locations in or near the cities in which [the] applicant’s branches are located”. Schrot’s research showed that there was overlap. Moreover, Citigroup’s national advertisements reached areas where it did not have branch locations, and both parties claimed to have customers in all 50 states. Based on this evidence, the TTAB found that there were opportunities for actual confusion. Since there was no evidence of actual confusion in the record, this factor weighed in favour of finding no likelihood of confusion.
 
As to the similarity or dissimilarity of the marks, the TTAB found that, although Citigroup may have the exclusive right to use CITIBANK, “the term ‘City Bank’ is used by others to convey the alternative meanings”, where 'bank' is a generic term and 'city' is used as part of a geographic name, or where 'City Bank' is used as a designation for a community bank (eg, City Bank of Lynwood). The applicant introduced evidence of third-party uses of 'City Bank' which assisted the TTAB in making the above determination. In finding that CITIBANK and CAPITAL CITY BANK were dissimilar, the TTAB stated that the marks’ respective commercial impressions were different. CAPITAL CITY is the dominant element of the opposed applications, and the applicant's marks were not likely to be confused with CITIBANK.
 
In addressing the dilution claim, the TTAB found that CITIBANK was not a famous mark as of the applicant’s first use of CAPITAL CITY BANK, as required under the Section 43(a) of the Lanham Act. The TTAB determined that CITIBANK was famous as of 1983, but the applicant had rights dating back to 1975. Even though Citigroup failed to establish fame within the relevant time period, the TTAB considered whether CAPITAL CITY BANK diluted the CITIBANK mark. The TTAB found no likelihood of dilution since:
  • the marks were dissimilar;
  • there were a number of third-party uses;
  • there was no evidence demonstrating any association between the parties’ marks; and
  • there was no evidence that the applicant intended to create an association with Citigroup’s marks. 
Leigh Ann Lindquist, Sughrue Mion, PLLC, Washington

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