Citigroup Inc. v. Capital City Bank Group Inc.

• Decision Date: 28 March 2011
• Docket Number: No. 2010–1369.,2010–1369.
• Parties: CITIGROUP INC., Appellant,v.CAPITAL CITY BANK GROUP, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

637 F.3d 1344

98 U.S.P.Q.2d 1253

CITIGROUP INC., Appellant,

v.CAPITAL CITY BANK GROUP, INC., Appellee.

No. 2010–1369.

United States Court of Appeals, Federal Circuit.

March 28, 2011.

Michael F. Clayton, Morgan, Lewis & Bockius LLP, of Washington, DC, argued for appellant. With him on the brief were J. Kevin Fee and Daniel S. Marks.Joseph W. Berenato, III, Berenato & White, LLC, of Bethesda, MD, argued for appellee. With him on the brief was David S. Taylor.Before RADER, Chief Judge, GAJARSA, and PROST, Circuit Judges.GAJARSA, Circuit Judge.

This is an appeal from a final decision of the Trademark Trial and Appeal Board (“T.T.A.B.” or “Board”) denying the opposition by Citigroup Inc. (“Citigroup”) to four standard character service mark applications filed by Capital City Bank (“CCB”). Citigroup Inc. v. Capital City Bank Grp., Inc., 94 U.S.P.Q.2d 1645 (T.T.A.B.2010). For the reasons discussed below, we affirm the T.T.A.B.'s denial of Citigroup's opposition to the registration of CCB's service mark.

Background

Appellant Citigroup provides commercial and consumer financial services. Citigroup owns multiple federally registered marks for financial services containing the CITI prefix, many of which are incontestable under 15 U.S.C. § 1065. See, e.g., CITI, U.S. Reg. No. 1,181,467 (1981); CITICORP, U.S. Reg. No. 982,066 (1974); CITIBANK, U.S. Reg. No. 691,815 (1960). Citigroup began using the name Citibank in 1897, although its official names from the 1800s through the late 1970s included City Bank of New York, National City Bank, and First National City Bank. J.A. 32. In 1976, Citigroup legally changed its name from First National City Bank to Citibank, N.A. Third-party brand valuation surveys, including by Interbrand and Millward Brown, indicate that the CITIBANK brand is one of the most valuable brands in the world. Citigroup, 94 U.S.P.Q.2d at 1658. Courts have deemed the CITIBANK mark “famous” for trademark analysis purposes. See, e.g., Citibank, N.A. v. City Bank of San Francisco, 206 U.S.P.Q. 997, 1004 (N.D.Cal.1980). Citigroup seeks to keep the federal registry and marketplace free of marks it considers confusingly similar to its marks through cease-and-desist letters, opposition proceedings, negotiations, and lawsuits.

Appellee CCB was formed in 1895 in Florida's state capital, Tallahassee. CCB has a multi-state presence including sixty-nine branches in Florida, Georgia, and Alabama; automated teller machines; and a website that serves customers in all fifty states. In 1995, CCB filed three service mark applications for banking services. Each contained the phrase “CAPITAL CITY BANK” along with a design consisting of a five-pointed star inside of a circle. See, e.g., U.S. Reg. No. 2,007,889 (1996):

Image 1 (1.81" X .43") Available for Offline Print

Beginning in June 2006, CCB filed a series of four new applications: CAPITAL CITY BANK, Serial No. 78/906,010 (filed June 12, 2006); CAPITAL CITY BANK INVESTMENTS, Serial No. 78/909,113 (filed June 15, 2006); CAPITAL CITY BANK GROWING BUSINESS, Serial No. 78/930,103 (filed July 14, 2006); and CAPITAL CITY BANC INVESTMENTS, Serial No. 78/934,941 (filed July 21, 2006). Unlike the prior applications, these applications contained standard character drawings and were, therefore, not limited to any particular font style, size, color, or design element. On May 21, 2007, Citigroup filed a timely Notice of Opposition with the T.T.A.B. against each of CCB's standard character applications. Citigroup based its opposition on two grounds: the likelihood of confusion between CCB's applications and Citigroup's marks and the likelihood of dilution by blurring. CCB denied all of the claims alleged by Citigroup.

In its opinion, the T.T.A.B. treated all four applications as one and evaluated the likelihood of confusion under the thirteen factors listed in Application of E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1362 (CCPA 1973) (“ DuPont ”). Citigroup, 94 U.S.P.Q.2d at 1657–65. The T.T.A.B. found that four of the six relevant likelihood of confusion factors favored Citigroup: (1) the fame of the CITIBANK mark; (2) the similarity of Citigroup's services and the services described in the applications; (3) the similarity of Citigroup and CCB's trade channels; and (4) the similarity of their consumers. Id. at 1657–60. The T.T.A.B. found that two of the DuPont factors favored CCB: (1) the nature and extent of any actual confusion and (2) the similarity of the marks. Id. at 1660–65. After weighing the factors, the T.T.A.B. determined that neither a likelihood of confusion nor dilution would arise from the registration of CCB's marks and dismissed Citigroup's opposition. Id. at 1664–69.

On appeal, Citigroup does not address any dilution issues because it contends 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.” Appellant's Br. 11. This court, therefore, will consider only the issue of likelihood of confusion between CCB's applications and Citigroup's marks. We have jurisdiction over the timely filed appeal pursuant to 15 U.S.C. § 1071(a) and 28 U.S.C. § 1295(a)(4)(B).

Discussion

We must affirm the T.T.A.B.'s factual determinations unless they are arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1327 (Fed.Cir.2000). The T.T.A.B.'s ultimate conclusion in a Lanham Act section 2(d) (15 U.S.C. § 1052(d)) analysis of whether a likelihood of confusion exists is an issue of law based on the underlying facts and is reviewed de novo by this court. In re Save Venice New York Inc., 259 F.3d 1346, 1351–52 (Fed.Cir.2001).

Under section 2(d) of the Lanham Act, registration of a mark must be refused if it

so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1052(d). “Standard character” or “typed” registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation. See, e.g., 37 C.F.R. § 2.52; Phillips Petroleum Co. v. C.J. Webb, Inc., 58 CCPA 1255, 442 F.2d 1376, 1378 (1971). Whether a likelihood of confusion exists between an applied-for mark and a previously registered mark is determined on a case-by-case basis, aided by application of the DuPont factors. On–Line Careline v. Am. Online, 229 F.3d 1080, 1085 (Fed.Cir.2000).

First, we examine the T.T.A.B.'s analysis of the two DuPont factors contested on appeal: the similarity of the marks and the “nature and extent of any actual confusion.” Then we conclude the legal analysis by balancing the DuPont factors and assessing the likelihood of confusion between the parties' respective marks.

I.

The T.T.A.B.'s factual findings regarding the similarity of the marks and the “nature and extent of any actual confusion” are supported by substantial record evidence. Evidence is substantial if “a reasonable person might find that the evidentiary record supports the agency's conclusion.” On–Line Careline, 229 F.3d at 1085. The T.T.A.B.'s finding may be supported by substantial evidence even if two inconsistent conclusions can be drawn from the evidence. Id. at 1086.

A.

The T.T.A.B. determined that the DuPont factor assessing the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression” favored CCB. Citigroup, 94 U.S.P.Q.2d at 1664. Upon examination of the record as a whole, we conclude that substantial evidence supports the T.T.A.B.'s factual finding that CCB's marks are not similar to Citigroup's marks. The evidentiary record details the distinctive spellings of the marks at issue, third-party usage of the phrase “City Bank” in the financial services industry, and the role of the word “Capital” in distinguishing CCB's marks from Citigroup's marks. We address each of these in turn.

CCB's marks are spelled differently than Citigroup's marks. This court has found mark dissimilarity when the words are spelled differently. See, e.g., Champagne Louis Roederer, S.A. v. Delicato Vineyards, in which this court found mark dissimilarity between CRISTAL and CRYSTAL CREEK. 148 F.3d 1373, 1374–75 (Fed.Cir.1998). Citigroup's marks are single words and all feature the C–I–T–I spelling. According to the record, CCB has never displayed its marks with “City” spelled C–I–T–I or with the words “City Bank” as a single compound word. J.A. 650. As the T.T.A.B. explained, “CAPITAL CITY BANK does not share the characteristics of the CITIBANK family of marks because (1) it starts with the word ‘Capital,’ not CITIBANK, (2) ‘City Bank’ is two words, not a compound word, and (3) applicant's ‘City’ is spelled with a ‘y,’ not an ‘i.’ ” Citigroup, 94 U.S.P.Q.2d at 1657.

Similarly, in Citigroup Inc. v. City Holding Co., a district court found that the “I/Y distinction is critical, though the marks are aurally identical.” 171 F.Supp.2d 333, 345 (S.D.N.Y.2001). That court ruled that “the distinctive quality [i.e., spelling] of the CITI mark, the extent of usage of both marks, both in time and geography ... demonstrate that the aural identity is overcome by the written differentiation.” Id. at 349. The district court explained that the “I” misspelling is the foundation of the CITI marks' distinctiveness and the basis of Citigroup's trademark protection policy. Id. at 347. We agree with the reasoning of that court.

Citigroup itself distinguishes its C–I–T–I spelling from marks containing the word “City.” When seeking to register the mark CitiMortgage in Ohio, Citigroup represented to the Ohio Secretary of State that “[...