Fame of Citigroup Marks Fails to Win the Day in Citigroup Opposition
Citigroup filed an opposition to four standard character mark applications filed by Capital City Bank for the following marks: CAPITAL CITY BANK; CAPITAL CITY BANK INVESTMENTS; CAPITAL CITY BANK GROWING BUSINESS; and CAPITAL CITY BANC INVESTMENTS. The TTAB dismissed Citigroup's opposition, concluding that there was neither a likelihood of confusion nor dilution from registration of Capital City's marks.
The Federal Circuit affirmed the dismissal, concluding that although a number of the relevant factors supported Citigroup, a proper weighing of the most relevant factors supported a finding of no likelihood of confusion:
Citigroup's approach of mechanically tallying the DuPont factors addressed is improper, as the factors have differing weights. 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.
Weighing these factors, the Federal Circuit concluded that the TTAB correctly found that Capital City's marks were not likely to cause confusion with Citigroup's marks and affirmed dismissal of Citigroup's opposition.
The Federal Circuit did not address Citigroup's dilution claim, which Citigroup did not discuss on appeal, because Citigroup contended that "'proper consideration of all the reasonable manners of display demonstrates a clear likelihood of confusion' and 'this Court need not consider the issue of dilution to reverse the Board's dismissal below.'"
The case cite is Citigroup Inc. v. Capital City Bank Group, Inc., No. 2010-1369 (Fed. Cir. March 28, 2011) (Opposition No. 91177415).
