Citigroup Inc. v. Capital City Bank Group, Inc.
637 F.3d 1344
| Fed. Cir. | 2011Background
- Citigroup owns numerous famous CITI marks for financial services and has sought to police them against confusingly similar marks.
- Capital City Bank (CCB) filed four standard-character service mark applications for CAPITAL CITY BANK-related marks in 2006.
- Citigroup opposed all four applications alleging likelihood of confusion and, to a lesser extent, dilution by blurring.
- The Trademark Trial and Appeal Board (TTAB) treated the four applications as one and concluded no likelihood of confusion or dilution.
- Citigroup appealed, challenging the TTAB findings on similarity of marks and absence of actual confusion; dilution issues were not pursued on appeal.
- The Federal Circuit affirmed, holding no likelihood of confusion under the DuPont factors for standard-character marks.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the TTAB erred in finding no likelihood of confusion | Citigroup argued the marks are confusingly similar in overall impression. | CCB argued differences in spelling, geography, and presentation distinguish the marks; capitalization and color not controlling. | No likelihood of confusion; TTAB supported by substantial evidence. |
| Whether the TTAB properly considered variations of standard-character marks | Citigroup contends a broader range of depictions should be appraised, not just 'reasonable' forms. | CCB contends TTAB adequately restricted to reasonable depictions under TTAB practice. | TTAB mischaracterized but substantial evidence still supports dissimilarity; no reversal. |
| Role of the 'Capital' vs 'City Bank' elements in consumer impression | Citigroup argued 'Capital' would not prevent confusion with CitiBank family. | CapitalCity is dominant and distinguishes the mark; City Bank is generic in the field. | Capital City dominates perception; marks are dissimilar in appearance, sound, connotation. |
| Whether fame of the Citibank mark influences the analysis | Fame should drive protection and increase likelihood of confusion. | Fame is just one DuPont factor and not dispositive given dissimilarities and third-party usage. | Fame weighing is limited here; other factors support no likelihood of confusion. |
| The weight and relevance of the 'actual confusion' factor | Absence of actual confusion is not determinative given potential variations. | Lack of actual confusion is strong evidence against likelihood of confusion. | Absence of actual confusion supported TTAB finding; probative value limited for standard-character variations. |
Key Cases Cited
- In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003) (DuPont factors may not all be dispositive; a single factor can control)
- Hewlett Packard Co. v. Packard Press, Inc., 281 F.3d 1261 (Fed. Cir. 2002) (absent restrictions, same channels and classes of consumers presumed)
- Recot, Inc. v. M.C. Becton, 214 F.3d 1322 (Fed. Cir. 2000) (Lanham Act analysis is a question of law based on underlying facts)
- On-Line Careline v. American Online, 229 F.3d 1080 (Fed. Cir. 2000) (DuPont factors applied to determine likelihood of confusion)
- In re Dixie Rests. Inc., 105 F.3d 1405 (Fed. Cir. 1997) (dominant term in a multiword mark influences consumer perception)
- Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376 (C.C.P.A. 1971) (standard for considering depictions of a typed mark; 'reasonable' forms)
- Nina Ricci, S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070 (Fed. Cir. 1989) (usage context affects probative value of absence of actual confusion)
- Jockey Int'l Inc. v. Mallory & Church Corp., 25 U.S.P.Q.2d 1233 (TTAB 1992) (typed marks require consideration of ordinary depictions)
- Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000) (marks must be evaluated as registered, not solely by use)
- DuPont de Nemours & Co. v. Kolon, 476 F.2d 1357 (CCPA 1973) (DuPont factors govern likelihood of confusion analysis)