CitiGroup Ruling: Considerations in Developing a Brand or Trademark’s Value

Trademark oppositions are proceedings in front of the Trademark Trials and Appeal Board (TTAB) to prevent a second filer from registering a mark that is confusingly similar to an existing common law or registered trademark.  In a recent ruling, the Federal Circuit denied CitiGroup’s efforts to prevent Capital City Bank Group from registering standard character marks using the “Capital City” prefix.

In its decision affirming the TTAB’s dismissal of CitiGroup’s opposition based on its famous CitiBank brand, the Federal Circuit applied the well-known DuPont factors.  However, the Federal Circuit opined that not all of the DuPont factors have to be considered.  Only, the relevant DuPont factors need to be considered.

Instead, the likelihood of confusion analysis is a case by case analysis involving a careful weighing and consideration of the DuPont factors. The Federal Circuit opined that the TTAB’s factual determinations were not arbitrary or capricious, and supported by substantial evidence.   An important consideration was the different spellings of “City” v “Citi” and the inclusion of “Capital” in the “Capital City Bank” service mark.

In addition, Citi’s brand protection strategy of purposely misspelling City as a basis for distinction worked against its ability to block Capital City Bank’s service mark applications.  City’s policing decisions regarding not pursuing “City Bank” marks that use logos also came back to hurt its ability to block the Capital City Bank service marks.

In addition, the use of “City Bank” as a local or geographical identifier by others worked against CitiGroup’s in its opposition.  The Federal Circuit’s analysis explains some of the practical considerations in developing and implementing an overall brand strategy.   Understanding the nuances and maintaining a holistic trademark and brand strategy is crucial to developing a trademark’s value and enforcement capabilities.

Importantly, the Federal Circuit, affirmed the TTAB’s dismissal of CitiGroup’s opposition based on its application of only six of the DuPont factors.  Moreover, the TTAB found that four of these factors favored CitiGroup, but the lack of actual confusion and dissimilarity of the marks were controlling in deciding that there was no likelihood of confusion.

See: CitiGroup Case

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