Citibank, N.A. v. Citibanc Group, Inc.

VANCE, Before HILL and Circuit TUTTLE, Judges, Judge. and Circuit Senior HILL, Judge: C. Circuit JAMES Inc., Citibanc and Group, eight its sub- sidiaries, defendants in the district court (Citibanc defendants) or from the appeal judgment of that court in of plaintiff favor Citibank, (Citibank plaintiff). N.A. Plaintiff sued defendants for of its federally-registered trademark and “Citibank,” service mark seeking order prohibiting doing defendants from business as “Citibanc.” The district court held plaintiff’s right tiff’s mark valid and to use the mark to be superior any right might defendants have in the mark. The estop- decided that neither laches nor pel and, bars plaintiff finding from relief infringed plaintiff’s that defendants had mark, granted the relief. requested We find no by error in the result reached the district court.

Plaintiff, a wholly subsidiary owned Citicorp, is a chartered national banking association with principal its office in New Inc., City. York Defendant Group, Citibanc is a bank holding company principal with its place of business Alabama. Citibanc Group majority or its shareholders own in whole or in the part eight other defendants case, which, in this exception, with one (name town)”.1 named “Citibanc of eighth subsidiary Computer is Citibanc Sys- tems, Inc. the exception With of the com- puter company, performs which services for banks, engage subsidiaries nor- banking operations mal in various cities in Alabama. collectively

1. We will refer to all defendants as Citibanc. changed the other two banks their names to on its claim of its suit Plaintiff bases service the term incorporate trademark and Bank. ownership “Citibank,” that defendants’ arguing mark Group, Citibanc was incor- At infringes rights. its use of “Citibanc” Federal Re- porated approved and allega- trial, denied these the defendants holding company. serve as a bank System estoppel that laches tions and asserted company exchanged stock holding also relief. bar partner- for the stock of the Wilbanks’ contending counterclaimed years, the next few hold- ship. During various On reasons. invalid interest in ing company acquired majority specific have raised appeal, and created the defendant banks error, discuss the facts and we will points of 23, 1977, subsidiary. January On computer specific decision each necessary our holding company decided the board of under- to a basic point Helpful below. a similar subsidiary adopt should each case, is a review standing of the terminology Citibanc name conten- history underlying name town), banks did (name of various and defendants. tions of both February, 1977. so in of employed Plaintiff first derivative char- Bank” when was the name “City VALIDITY OF THE I. THE in Bank of New York City tered as The PLAINTIFF’S RIGHTS Banking when the National 1812. In Law and the A. The Common the bank became national- adopted, Act was Lanham Act. its name to The changed chartered ly and York. Plaintiff National Bank of New City cannot argue plaintiff that of name Bank or a variation City used the Act Lanham rights assert under the its the through purposes the name for various rights law common because defendants’ 1955, the the 1900’s. In 1800’s and into registra- the predate both with the First National plaintiff merged Act; thus, of the passage the 1947 tion and First York to become The Bank of New defendants, preserved rights their are argue York. In City National of New Bank Act, 15 U.S.C. 33(b)(5) of the by section name to First National plaintiff changed its Act, 15 (1976), 15 of the 1115(b)(5) section registered the plaintiff Bank. In City the 2(d) of (1976),or section U.S.C. § for use in connection mark Citibank The de- Act, 1052(d) (1976). 15 U.S.C. § and, services, again in banking each that name of contend the fendants Citibank, name, time to this changed traced to the Alabama can be bank in N.A. using the banks the two Alabama names of be- history of the defendants The name 1947. Defendants prior to City term Bank of Wil- when the gins partnership in 1955 mere vari- that, is a because Citibanc argue control- purchased and the banks Wilbanks Bank, “tack on” to they may City ation of & Sav- Peoples Trust ling interest in use Citi- two of those banks rights the Goodwater, Alabama. Subse- Bank of ings of Alabama. the state throughout banc control- acquired partnership quently, maintains defendants’ that plaintiff Tuskeegee City Bank ling interests in were fro- City Bank rights law common of Roa- (1967), Company & Trust City Bank in 1960 registration time of zen at the and Merchants (1967), The Farmers noke user of plaintiff was senior because Covington (1968)and the Bank of Lineville defendants, to the according mark. The (1969). The use Bank Andalusia County only in “City Bank” could use plaintiff, thus by Bank the Roanoke of the term City Alabama. in relatively small towns two incorporated was began when it to the de- use willing to concede this Not de- any the use predates this use however, argues that plaintiff fendants, City Bank for the Except fendant. to Citibanc their names by changing 1933, no other incorporated in Tuskeegee, their names wrongly changed the term defendant used predecessor mark Citibank registered 1960’s, to the “closer” During 1969. in its name before in the City to use the term Bank possessed in continued any rights they and abandoned towns, name. The nor is the issue now the two-word version of the Alabama two substantially adopted right of the other de- before us as plaintiff’s argument. term in their incorporate such fendants has run names. It is clear that defendant arguments The various set forth principle Holiday stated in Inns afoul of the and, large to a parties complex, both a term much closer to by adopting we need not they focus on issues degree, than the term it registered tiff’s trademark address to decide this case. The issue be used. previously can use the fore us is whether defendants We need not term Citibanc in Alabama. Registration. in the B. Fraud whether the defendants would be decide that plaintiff may Defendants contend City able to use the term Bank Alabama because registration on the 1960 rely of this term except to the extent use invalid. Defendants ar- registration allows defendants to use Citibanc under one obtaining principally plaintiff, gue grandfather provisions various Citibank, fraudu- of the mark registration We, perceive Lanham Act. do not Patent and misrepresented to the lently difficulty. to be of Assum great this issue that no other banks were Trademark Office validly plaintiffs for the moment their names. part Bank as using City rights and obtained trademark registered mis- argue Defendants also defendants, regardless of Citibank in “banking that its services were represented Bank, could their to use the term were in actuali- services” when the services adopt not in 1967 the term Citibanc. See “Ready-Credit plan” loan ty Inns, Inn, Holiday Holiday fraudulently filed section 8 and (D.S.C.1973), aff’d mem. 498 when section 15 continuous use affidavits (4th Cir.1974). F.2d 1397 plaintiff continuously had not used Inns, In the defendant had ac Holiday years. mark for five quired “Holiday local to use the mark rights claims, reviewing defendants’ plaintiff’s reg Inn” before the Lanham Act court findings by we review the district registration, istration. After the fraud; plaintiff that did not commit these campaign the defendant embarked on a findings clearly fact and the plaintiff findings associate itself with the in the For defendant con public eye. example, of Federal Rule of Civil erroneous standard sign virtually structed and installed a iden 52(a) For defendants to applies. Procedure well-known, nationally- plaintiff’s tical to fraud, they necessarily have must proven at 783. The court sign. used false, proven by have a material statement enjoined by this action the defendant. a fact would have plaintiff that think this case presents at 786-87. We grounds regis for denial of the constituted problem the same as the Holi substantially See, known. tration had the truth been adopted Inns case. a day Food, Hyde, Inc. v. Malone & e.g., Giant Citibanc—substantially more similar mark— to Inc., (C.C.P.A.1975); Hollow 522 F.2d 1386 plaintiff’s mark two-word ver than the form, AEH, (C.C.P.A. Inc. v. 515 F.2d City Bank. We are mindful that the sion — two versions sound 1975).2 alike, perceive but we defendants, As to the first claim of difference between the two terms. Citi showing of a that there absence “[i]n banc and Citibank are “manufactured” use, law common prior third-party words. They are “not to be found in the an innocent subse resulting rights Sunline, Inc., dictionary.” See Sweetarts v. use ...” are not material quent (8th Cir.1967)(discussing Food, F.2d at Giant application. term “Sweetarts”). We do not decide that Food, Inc., Mastracco, Inc. v. Giant the two affected defendants could have Rosso & Thus, if, contend, applicability of 2. This need not decide the is true even as defendants we actual fraud cancel need not be shown to the case before us. that section to (1976). service mark under 15 § U.S.C. service, not a (Fed.Cir.1983). type provider The district dicates but a that specifically found of that service. See J. Trade- McCarthy, “[w]hen firm, ... no other application, tiff filed its Competition, marks and Unfair 12.2 at otherwise, as a was ‘Citibank’ bank or 407-08.3 name, trademark, mark.” or service

trade D. Abandonment. Thus, obligation under no plaintiff was to the trademark office. anything disclose Defendants next contend that deciding plaintiff without Assuming plaintiff, rights even if it once had to Citi material uses of should have disclosed all bank, abandoned rights by failing those change our conclusion. City Bank does prove use the mark. In order to abandon also to be the The evidence shows ment, defendants must show that plaintiff of this term. senior use mark, actually abandoned use of the and, also, also find defendants’ second and We intended to abandon third contentions to be without merit. the mark. United Jaycees See States court could that it properly district conclude Philadelphia (3d Jaycees, represent plan is not fraudulent to a loan as Cir.1981). provides The Lanham Act a banking adequate service. There is also years failure to use a mark for two consti evidence in the record to support facie “prima tutes abandonment.” plaintiff continually court’s conclusion that case, however, In this U.S.C. § years; used the five “Citibank” correctly concluded that thus, section 8 and section 15 defendants failed to meet the strict burden were affidavits not fraudulent. We have proof applicable to abandonment claims. reviewed the record and have determined Foods, Flake, American Golden rejected that the district court properly (5th Cir.1963). Al allegations of fraud set forth though plaintiff admittedly used Citi defendants; thus, we must defend reject the use only sporadically before ants’ contention plaintiff’s registration fairly clearly was continuous and sufficient should be cancelled. justify finding the district court’s plaintiff never intended to discontinue us Descriptive C. Generic or Character- the name. istics of the Mark. plain Defendants next contend that II. ABILITY TO PLAINTIFF’S

tiff right has no them from prevent ENFORCE ITS RIGHTS the term gener Citibanc because it is that, plaintiff Defendants contend even if ic or descriptive. generally Vision Cen See right successfully bring once had the suit Inc., Opticks, (5th ter v. 111 Cir. right. it infringement, for has forfeited 1979). generic A term is one that describes A. Preclusive Effect of the Federal a class to which the individual service be Reserve Board's Decision. longs; descriptive a “identifies a char term In the Federal Reserve Board quality acteristic or of an article or service ” Group, (FRB) approved the use of Citibanc .... Id. at 115. The district court held Inc., holding company for the defendant the descriptive, agree term not and we with objected even to that deci though plaintiff that conclusion. The term “Citi” does not contend that because sion. Defendants describe a class of or a banking services that decision it plaintiff appeal did not from banking characteristic of services. As the on court. It is true binding is now this stated, most that can be “[t]he that, 1842(c)(1976), 12 the under U.S.C. § said for Bank is that it a suggests anticompetitive effects FRB must consider Slip modern or urban at 49 op. bank.” merger when a or consolidation approving in To Pro (emphasis original). paraphrase prepared, are not fessor we find that Citibank in- of banks. We McCarthy, 33(b) pre- descrip- that section of the Act 3. Because we find Citibank not to be contention raising generic, plaintiffs this claim. tive or we need not vents defendants address were that defendants should known the FRB’s conclusion leap not but did subsequent prior Bank using City in a are conclusive actions the reviewing After action. until 1979.4 infringement file suit trademark court, the findings of the district facts and support in two only cite cases laches by be barred not to plaintiff we hold supports case neither argument; of their learned of first plaintiff in this case. When for In Fund Gov’t asserted. the proposition the as of Citibanc adoption defendants’ Trust, Investment Investors, Inc. v. Gov’t 1972,plain- company holding of its name the court (E.D.Va.1981), U.S.P.Q. regarded warning that wrote letters tiff the defend- conclusion that supported its as an use of Citibanc the similar confusingly not names were ants’ several sent Plaintiff rights. plaintiff’s the Se- by noting name the plaintiff’s In years. next few had the other letters over Exchange Commission curities and their changed Da- 1977, In North banks conclusion. the defendant reached the same later, Bank & Trust years National v. Merchants Citibanc. Two kota names to include Cir.1980), the court (8th New York. filed suit in plaintiff unfair of state preemption dealt Fund Defense In Environmental Act, Bank by law the National competition Cir.1980), Alexander, 614 F.2d no We can find 12 U.S.C. § 316, 66 cert. that the Congress intended indication that forth the court set (1980), L.Ed.2d or that court FRB bind this decision of the must The defendant elements of laches. Lanham preempt should section 1842 a a “(1) delay asserting a show: the trade FRB Although the considers Act. excusa claim; was not (2) delay approv- before of its decisions implications defend ble;” (3) delay that the caused con- necessarily not it does ing merger, In addi Id. at 478. prejudice. undue ant re- analysis trademark complex duct the case, tion, in a trademark case. quired this Johanna See protectible. must rights be FRB decision weight to the give To Bowl, Farms, Inc. v. Citrus an create defendants would urged by the words, In other (E.D.N.Y.1978). known well situation. anomalous expanded mark must have the owner of the v. Hart’s Food Dawn Donut Co. case of that an territory such infringer’s into Cir.1959),the Stores, Inc., (2d Dawn Donut can be action maintained. enjoin plaintiff court held that could Stores, Inc., 267 F.2d 358 v. Hart’s Food Co. absent use of a trademark defendants’ Cir.1959). (2d will ex- “present likelihood determining into laches use of the defend- pand its retail The test ” at 360. The area .... Id. examine ant’s market the court must flexible is a one: noted, however, that if prejudice delay the amount both area, it into the defendant’s expanded later case, plaintiff delay. In this caused defend- injunction against could obtain infringe possible of a notified Assuming the trademark. ants’ use of adopted before defendants problem ment do- was not deciding plaintiff without time period a short Within Citibanc. when the in Alabama in 1972 ing business Ci began widespread use plaintiff after effect to acted, applying FRB conclusive their defendants broadened tibank Dawn nullify the the FRB’s would decision peri entire During the usage Citibanc. such prepared give are not holding. We objec od, plaintiff’s knew of weight to a FRB decision. enlarge proceeded tions but nevertheless B. Laches. were actions term. These their use of the complete realization “with the taken the doctrine contend that not use and did disputed their plaintiff bars suit because plaintiff’s laches in Alabama. subsequently this filed action brought dis- tiff York and 4. This suit was New jurisdiction. personal Plain- missed for lack acquiesce in it.” Finance Co. Defendants contend that the district intend to Corp., v. Bankamerica by according America court erred too much weight (D.Md.1980); 596-97 see also Clinton plaintiff’s finding “sugges- mark after v. Procter & Detergent Co. Gamble tive, ... not ... coined or ... arbitrary ” Defend- F.2d 49 C.C.P.A. ..., comparatively and thus weak .... delay not relied on the ants have Slip op. at 50. The district court found mark; of the expanding tiffs in their use Bank, City Citibank more distinctive than indeed, their use while they expanded Bank,” but weaker than the mark at “Sun so, their to do in the face of asserting issue in the Banks case. Defendants Sun The district plaintiff’s complaints. constant that, argue since the mark in Banks Sun court concluded that has correctly weak, fatally was must also Citibank be not of laches. guilty been fatally disagree weak. We with this read- Banks, ing of the case. In there was Sun III. LIKELIHOOD OF CONFUSION use, party substantial evidence of third and Defendants contend that the dis mark, the defendant’s “Sun Federal Sav- trict court erred in finding likelihood of Loan,” much ings & was less similar to Sun confusion between Citibank and Citibanc. We disagree. Bank than Citibank is to Citibanc. reaching decision, 313-17; district court at see also Safeway, F.2d properly analyzed the follow ing factors: argue at 1165. Defendants that the district similarity of design, the similarity of product, type issue, usag- of mark court failed to consider the numerous at identity of customers, banks, similarity of es of Bank various but we advertis media, intent, defendant’s correctly actual think the district court noted that confusion. See Safeway Stores, than, Inc. v. is and different stronger Safeway Discount Drugs, from, City Bank. We need not consider (11th Cir.1982); Sun Banks of Florida whether the district court intended to char- v. Sun Fed. Savings Assoc., & Loan weak, very simply acterize Citibank as (5th F.2d Cir.1981). The presump arbitrary weak relative to an mark. The tion of validity afforded plaintiff’s mark test, multiple test is a factor and the mark under the Lanham Act is not material to certainly strong enough, when combined this decision. Foods, See American factors, support with the other dis- Flake, Inc., Golden Cir. trict court’s decision. 1963). In the absence of indications that Defendants next contend that the district district court law, misapprehended the court erred in relying on the timing we review its conclusion under the defendants’ clearly adoption of widespread erroneous standard of use of Federal Rule of Civil Citibanc in 52(a). finding Procedure capitalize intent to Safeway, 675 F.2d Banks, plaintiff’s Sun on mark. The at 314-15. district court did The clearly erroneous applies standard not expressly here. make such a finding. The court evidence, stated that “there is no oth- Of the multiple factors, we need not dis- that, er than any, if which can be inferred cuss the findings of the district court that names, from the similarity of the that de- plaintiff failed to prove confusion, actual fendants have intended to upon plain- trade that the similarity of advertising media fac- good tiff’s will.” Slip op. at 22. The court tor weighs only slightly favor of plain- nevertheless tiffs, indicated that this that the factor identity of service facilities should be customers is “balanced in the favor” dispositive, and that the marks because are of “an inference can be raised of an virtually design.5 identical We have carefully intent to reviewed these cause confusion.” findings Slip op. at 53. and conclude that the The district properly reached could draw such the proper result in inference, and, each factors, instance. in weighing the very respective obviously 5. The marks are simi- lar. Association, factor with the other

properly balanced this Federal Savings Sun & Loan (5th Cir.1981),compels 651 F.2d 311 us to aspect factors. The of this factor is the key confusion; find that there is no likelihood of confusion tendency to show this is ade- case, hence, in this no trademark in- by the quately similarity demonstrated fringement. the names even without direct evidence of opinion intent. The demonstrates that the in A review of the facts is order brief the factors analyzed with this of fraud. In respect with to the claim in mind. registration filed for federal papers, servicemark “Citibank.”1 In its Ci- argue defendants the dis- Finally, stated that it first made interstate tibank trict that the finding court erred in with use of that mark in connection bank- tiff and defendants offer similar services. append- services in 1959. also The district court noted the obvious similar- of its vice signed by ed an affidavit one ity correctly of services and realized that the best of his presidents declaring that “to direct not competition required prove to firm, knowledge person, and belief no other confusion. Safeway, 675 F.2d at or association has the corporation Hotels, Tisch Inn, Inc., Inc. v. Americana commerce, in in the use said mark either case, Cir.1965). In this identical form or in such near resemblance banks, both parties are and this adds sub- might thereto as be calculated deceive.” stantially likelihood of confusion. application registration listed certain The danger of confusion that would com- already numbers which the bank owned. promise plaintiff’s reputation exists even gave The Patent and Trademark its Office though the parties may directly not com- approval registration and awarded in 1960. pete for deposit customers. J. See McCar- thy, Trademarks Competition, & Unfair facts, theOn basis of these the district addition, 26.6. at In 213-17. there is evi- specifically found that Citibank “did dence that and defendants com- not advise the Patent and Trademark office pete in the areas of credit card sales and of any party third users of Bank’ in ‘City its Thus, loans. the district court af- properly 1959 federal application ...”2 Despite forded weight substantial to this factor. earlier claim that it knew of no confusingly marks, however, similar Citibank subse- We weighed the factors carefully quently instituted eleven trademark in- and find no error the district court’s fringement against suits users of “City conclusions as to confusion. Bank,” “Citibane,” “Citibank” and alleging The judgment is these marks created a likelihood of AFFIRMED. confusion. It threatened eight another predicated banks suit. Citibank these VANCE, Judge, dissenting: Circuit actions on its supposed rights as the senior I claim of agree cannot that Citibank’s Bank,” “City user of dating from 1812 and trademark is meritorious. set forth in its registration 1949 and 1950 First, view, my it fails for three reasons. applications for the servicemark “The Na- surrounding the circumstances the 1959 tional City Bank of New York.” sub- registration application and Citibank’s sequent litigation suggest a campaign strongly suggests This turn of events apart strong possibility Wholly of fraud. original that Citibank’s denial of the exist- that, “Citibank” is too weak a mark to attempt ence of similar marks was an Finally, merit our protection. trademark conceal the derivation of its mark order Florida, its chances of Un- improve registration. decision in Banks of Sun applica- applied Alabama then current name other users their recent 1. Plaintiff under its though banks in First National Bank of New tions even there “The confusion, “City I refer to Bank” in their York.” To avoid shall Alabama which use complain, plaintiff simply as “Citibank.” names. Plaintiff does against suit that defendant has commenced party predicated on a senior other third users on that the 2. The court below went to observe “City use of Bank.” the term also the existence of failed reveal

1549 Act, approval grounds 1051 et would denied on the 15 U.S.C. der the Lanham § descriptive generic terms the mark was or at best de- generic terms seq., meaning qualify cannot secondary scriptive. apparently that lack Citibank’s selective 1052(e)(1), registration. for federal ignorance § of the existence of rival users Co., 617 F.2d Soweco, Inc. v. Oil (f); Shell permitted it to outflank this obstacle. Cir.1980), cert 450 1178, (5th view, majority’s no fraud arose 1516, 981, 67 L.Ed.2d 816 Citibank, because as the senior user of “City traced the explicitly Had Bank,” duty had no under 15 U.S.C. “City derivation of to the use of “Citibank” 1052(d) to disclose the of con- possibility § Bank,” outright it re- would have courted “City fusion with other Banks.” Rosso & jection application ground of its on the that Mastrocco, Foods, Inc., Inc. v. Giant generic descriptive, its mark was or merely (Fed.Cir.1983); The Money Store as I shall discuss below.3 Finance, Inc., 666, Harriscorp v. to conceal the good Citibank had reason (7th Cir.1982). 670-71 This mistakes the lineage of its mark in an effort to ensure object alleged fraud. Citibank had of its An incontesta- approval application. conceal starting no motive to date of registration ble allows the owner to assert use, since even a claim colorable of senior nationwide, all but the its mark free of charge use would obviate a of fraud in the defenses enumerated in the common-law registration. McCarthy, 1 J. Trademarks particular, Lanham Act.4 In incontestabili- 20:23, Competition and Unfair at § ty bars the defense that the mark is a 411; 31:21, (1973); McCarthy, 2 J. at see § descriptive secondary term that lacks mean- also, e.g., Haviland & Co. v. Johann Havi Soweco, 617 F.2d at 1184-85. With ing. Corp., F.Supp. land China 936-37 registration, Citibank thus succeeded reason, (S.D.N.Y.1967). It how did have bootstrapping “descriptive” its mark from ever, the generic descriptive to conceal proceeded to It then “suggestive” status. of mark. origin its exploit newly-gained advantages by registrant When a asserts senior use in filing a of lawsuits in which it battery portending circumstances such as these rights asserted based on its claim deceive, is laid for a way intent “City Obviously, senior use of Bank.” if Co., 269 conclusion of fraud. Haviland & appli- original Citibank had indicated on its 937; Automotive, cf. F.Supp. King at cation 1959 that it considered the new Inc., 667 F.2d Speedy King, Muffler equivalent “City mark the functional Bank,” (C.C.P.A.1981) (intent 1011 n. 4 to deceive the Patent and Trademark Office McCarthy, registration Trademarks and 2 J. the list of remote area.” 3. Citibank asserts already provided 26:13, Competition, (1973); see numbers it owned notice of Unfair § Citibank, potential According Foods, Flake, senior use. American Inc. v. Golden and Trade- these references directed the Patent Cir.1963). F.2d 625-26 lineage mark to files that traced the Office satisfied, five-year is Once the threshold “City implausible reading Bank.” This is an de- Lanham Act eliminates the common-law concerning litany the case law notice. A knowledge. good faith and lack of fenses of registration in and of itself cannot numbers Foods, American 312 F.2d at § U.S.C. provide notice. The Patent Office’s search of can defenses 626-27. No other common-law party did not reveal third users of “Citibank” “City registrant except against those be asserted Bank v. Amer- Bank.” Cf. American Sec. 1115(b). id. 1065. § enumerated in 15 U.S.C. § (C.C.P. ican Sec. Trust & noted, McCarthy has Professor 1978) (reaching opposite be- A. outcome of incontest- is clear that the attainment [I]t Security” cause a search “American would legal position ability vastly butresses [sic] Security party lead to third users of “American it becomes incontesta- of a trademark. Once Camelot, Inc., Corp. Bank”); see Kinark ble, legally registered attacked mark can be (D.N.J.1982). specifical- against, only few or defended on a incontestability Rights attach after 4. ly grounds. than those enumerated Other years mark in continuous use for five has been defenses, specific registered is in- following registration. 15 U.S.C. 1065. Fed- § vulnerable. pre- registration eral then confers “the 19:47, McCarthy, supra, at 742. empt junior in the nation once the all users registrant likely expand] [proves into a 1550 Biscuit 305 Kellogg Co. v. National regarding third- See silence

necessary before 109, 113, 111, 118, 83 L.Ed. 73 Lanham Act party use can constitute characterization of King proper Frank’s Size fraud); King-Size, 1138, more elusive than the Clothes, Inc., (S.D. “City Bank” is far fraud, have it While the majority appear. would Tex.1982) (same). In the event Bank” evoke the financial acu “City not warrant words would registration Citibank’s long associated with and would be men and innovation protection centers, characteristic of a banking urban 15 U.S.C. subject cancellation. innocent, mark, also describe a bank suggestive they it 1115(b)(1). If were Citibank § descrip of a city, located in a characteristic willing to test would be presumably generic tive or mark.6 against of its mark as of 1959 strength govern that stricter common law standards of the tradi- conceptual failure Given made no marks. has contestable case, in the context of this categories tional such offer. for us to instead focus on may be useful Two which trademark law serves. disagreement pro the ends My point second underlie the determination majority, in a considerations ceeds from the first. only protect will marks that fashion, characterizes the terms that the law conclusory one merchant’s services and distin- suggestive identify as “City Bank” “Citibank” A mark must be guish rests on the er them from another. marks. This determination distinctive in order for consumers identi- assumption that the traditional roneous merchant who merits their confi- fy are self-contained trademark classifications token, words which By The case dence. the same categories overlap. that do not as providers opposed describe a class of this circuit counsels otherwise. We law of individuals are names should categories, specific have observed that trademark may domain so that all merge imperceptibly public which “tend to from remain in v. another,” use them. Abercrombie & Fitch Co. “quite frequently, one to dif Inc., 4, World, (2d9 Cir. Opticks, Hunting 537 F.2d apply,” ficult to Vision Center 12:2, 406. Inc., (5th Cir.1979), 1976); McCarthy, supra, at cert. § 444 U.S. S.Ct. considerations cause me to conclude Both Soweco, (1980); also L.Ed.2d 646 see term which “City generic Bank” is a F.2d at 1182-83. “City protection. cannot receive trademark Bank,” denotes a shop,” like “town barber particularly apt This case illus- provides result, As a this term is The term class of businesses. “City tration of our admonition. incapable pinpointing any par- peculiarly the traditional distinction Bank” obscures “City unique. ticular Bank” as unworthy between servicemarks and names town’s Likewise, dispute “City it is difficult to protection by describing the location of Bank,” grocery,” belongs like “corner they provide.5 both bankers and the services Bank,” Center, “City geo- unlike held that the term “Vi- most unenforceable 5. Vision we “descriptive terms, geographical graphical sion was of the service Center” refers to a unit optical provided by a business deals no determined location. We have held Certainly “City goods.” F.2d at 117. “World,” applied carpets, as is not a descriptive of services. Bank” is no less purposes geographical for of the Lanham term Carpets, New Act. World Inc. v. Dick Littrell’s reason, gov- the restrictive rules 6. For the same Carpets, World 486-87 Cir. play. erning geographic Tra- names come into 1971). reached this conclusion because We geographic ditionally treat terms as at courts suggested specific place of neither “World” marks, require proof descriptive which best origin product. nor described the nature of the secondary meaning. McCarthy, supra, “City Id. Bank” contrast describes Because 14:1, at 483. Where the historical use of a § setting in are conduct- which services closely geographic term is so associated with a ed, geographical to trade- it is a term unentitled it, type of service the term is it identifies protection. Surf See Surf v. Tatem 14:8, Club generic. at These rules exist Id. 503. Club, 10 So.2d at 557. preserve every to tell seller the origin prod- geographical customers of its 14:1, ucts. at 484. “City Publishing Hampton domain. Innumerable Clean- Co. v. public International Communications, Inc., line the “City pages (2d ers” and Florists” Indeed, Cir.1980). metropolitan telephone directories. “City”

in 1959 over 200 banks used Even assuming that the majority correct- tradenames, “Bank” in their with 70 ly classifies “Citibank” suggestive as a It be the words in consecutive order. would mark, I fail to see how a likelihood of absurd at this late date to bar all banks confusion exists here where none existed in save one from this time-honored Florida, Sun Banks of Inc. v. Sun Federal name. Savings First Southern Federal Association, Savings & Loan 651 F.2d 311 & Loan Association v. First Sav- Southern (5th Cir.1981). In that case we concluded ings Association, 71, & Loan 614 F.2d 74 Bank,” although that “Sun was a arbitrary, (5th Cir.1980) (“First Southern,” as a combi- weak mark due to extensive party third term, a generic nation of and geographic outweighed use. This weakness any confu- unprotectable name); held as a bank Surf services, identity sion created Club, Inc., 406, Club v. Tatem 151 Fla. Surf types customers and of advertising media 554, (1942) 10 (holding So.2d 557 “Surf used. 318-19. Club” a generic any name for club located The court below held that is “Citibank” beach). on a even weaker than the fatally weak “Sun phonetic equivalent is too “Citibank” Bank” mark. Since the weakness of the minor a “City deviation from Bank” to war- required Banks, mark in I reversal Sun see protection rant where otherwise none would no choice to order it but here. The fact See, America, e.g., Surgicenters issue. traditionally that we have tolerated a Surgeries, greater degree among Inc. v. Medical Dental 601 F.2d of resemblance 1011, names financial (9th Cir.1979) only 1018 institutions rein- (“Surgicenter” See, Banks, e.g., forces this conclusion. Sun equivalent generic surgical term cen- (5th Cir.1981); 651 F.2d 311 First Southern ter); Brewing Miller Co. v. G. Heileman Association, Savings Federal & Loan 614 Co., 75, Brewing (7th Cir.1977), 561 F.2d 81 (5th Cir.1980); Fidelity Bond & 1025, 751, cert. Mortgage Mortgage Co. v. Bond & Fidelity (1978) (“Lite” generic L.Ed.2d 772 a term Texas, (5th Cir.1930). Co. of light beer); Engine for Cummins v. Co. 892, Motors Corp., Continental F.2d explains Banks majority away Sun 894-95, (1966) (“Turbodies 53 C.C.P.A. 1167 “Citibank,” weak, by noting that while generic el” a name engines having for diesel nearly more similar to “Citibanc of Ala- exhaust-driven Weiss Noo superchargers); town)” bama/(name of than “Sun Bank” Co., dle Specialty Co. v. Golden Cracknel & In Savings was to “Sun Federal & Loan.” 847, (1961) 48 C.C.P.A. 1004 holding, majority incorrectly gives so (“Ha-Lush-Ka” haluska, generic name for in similarity weight the element of double noodle); Hungarian egg word for balancing the Banks factors. The simi- Sun Druggists’ Syndicate American v. United mark factor in the larity separate of the is a States Industrial Alcohol F.2d analysis Banks which should not be Sun (D.C.Cir.1924) (“Al-kol” generic name as the used to resolve other factor such term, alcohol). rubbing generic for As a Having the mark. committed strength of error, cannot ei- qualify protection majority compounds “Citibank” then this Act, ther under the Lanham court to resolve the by allowing U.S.C. the district 1052(e)(1), 1064(c),7 good at common law. faith in Citibank’s favor question §§ even Brewing Brewing similarity Miller v. Falstaff on the basis of the names Co. (1st Cir.1981); Reese there is no evidence of bad faith.8 Corp., though incontestability provisions Lanham 8. I also believe that the district court erred 7. The “identity Act, failing weigh the factor of service bar the defense U.S.C. do not § of defendant. and customers” favor facilities The trial court weight. generic. that the mark is generic Cancellation of a gave little or no this factor 1119; may also lie. 15 U.S.C. § clearly The factor favors Citibanc McCarthy, supra, at 441-42. conduct is not chartered to since ap- that Citibank’s sum, I would hold mark, and itsof fraud, weakness parent reversal. compels confusion

the absence CZEREMCHA,

Robert

Plaintiff-Appellant, OF ASSOCIATION

INTERNATIONAL AEROSPACE AND

MACHINISTS AFL-CIO, Defendant-Ap WORKERS,

pellee.

No. 83-5259

Non-Argument Calendar. Appeals, Court of States

United

Eleventh Circuit. 16, 1984.

Feb. large business concerns serves is banking business in the state Alabama rural businesses wealthy likely in the investors time unlike to be so licensed found means who modest The court below furthermore future. individuals com- no customers in two banks have defendant. likely disparity since continue mon. This

Case Details

Case Name: Citibank, N.A. v. Citibanc Group, Inc.

Court Name: Court of Appeals for the Eleventh Circuit

Date Published: Feb 16, 1984

Citation: 724 F.2d 1540

Docket Number: 82-7214

Court Abbreviation: 11th Cir.