Citibank, N.A. v. Citytrust, 782

• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
• Citation: 756 F.2d 273,225 USPQ 708
• Docket Number: No. 782,D,782
• Parties: CITIBANK, N.A. and Citicorp, Plaintiffs-Appellees, v. CITYTRUST and Citytrust Bancorp, Inc., Defendants-Appellants. ocket 84-7959.
• Decision Date: 04 March 1985

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756 F.2d 273 225 U.S.P.Q. 708 CITIBANK, N.A. and Citicorp, Plaintiffs-Appellees,
v.
CITYTRUST and Citytrust Bancorp, Inc., Defendants-Appellants. No. 782, Docket 84-7959. United States Court of Appeals,
Second Circuit. Argued Jan. 10, 1985.
Decided March 4, 1985.

Armand Cifelli, Bridgeport, Conn. (Cifelli, Frederick & Tully, Bridgeport, Conn., Jerry J. Strochlic, Sage Gray Todd & Sims, New York City, of counsel), for defendants-appellants.

Thomas P. Dowling, New York City (John F. Sweeney, Joseph A. Calvaruso, Dickerson M. Downing, Mitchell E. Radin, Morgan, Finnegan, Pine, Foley & Lee, New York City, Alfred F. Rohls, Assistant Vice President, of Citibank, N.A., New York City, of counsel), for plaintiffs-appellees.

Before MANSFIELD, PRATT, and JOHN W. PECK of the United States Court of Appeals for the Sixth Circuit, sitting by designation, Circuit Judges.

GEORGE C. PRATT, Circuit Judge:

The issue before us is whether the district court properly granted preliminary injunctive relief prohibiting the defendants, Citytrust and Citytrust Bancorp, Inc., from

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using the name "Citytrust" in identifying or referring to their recently established Long Island office, or to any other offices which they might establish in New York State in the future. 596 F.Supp. 369. Since the evidence before the district court was insufficient to establish that the plaintiffs, Citibank N.A. and Citicorp, would suffer irreparable harm in the absence of an injunction pending trial of the underlying trademark claims, we vacate the preliminary injunction and remand for further proceedings. BACKGROUND

Plaintiff Citibank, a national bank headquartered in New York State, was first chartered in 1812 as "City Bank of New York". It continued to use that name or variations thereof--including "The National City Bank of New York", "The First National City Bank of New York", and "First National City Bank"--through the adoption in 1976 of its current legal name, "Citibank, N.A.". Citibank currently does business in all fifty states and numerous foreign countries, and offers a full line of consumer and commercial banking services. It claims to be the largest bank in the world. Citibank has obtained federal and state registrations for the name, "Citibank", and for more than twenty additional names using the "Citi" prefix, such as "Citiquote", "Citicash", "Citibanker", "Citiphone", "Citipak", "Citilights", and "Citiwheels". Citibank is a wholly-owned subsidiary of plaintiff Citicorp, a bank holding company.

Citytrust, a small, localized banking association, is chartered under the laws of the state of Connecticut. It, too, provides a range of commercial and consumer banking services, although on a smaller scale than Citibank. First established in 1854 as "Bridgeport City Bank", Citytrust began using the words "City Trust" as part of its legal name in 1929 and continued that use through 1971. At that time, Citytrust became a national bank and operated under the name "City National Bank of Connecticut" until 1977. It claims to have continued to use the words "City Trust" to identify itself and its services while it was a national bank. When it reverted to state bank status in 1977, it adopted its current legal name, "Citytrust". Citytrust is a wholly-owned subsidiary of defendant Citytrust Bancorp, Inc., a bank holding company.

Citibank and Citytrust have engaged in a substantial amount of business with each other over the past four decades. The relationship began in 1940 when Citytrust established a correspondent banking account with Citibank. Among other things, Citytrust has sold Citibank traveler's checks and has engaged Citibank's consulting services to assist in the operation of Citytrust.

Until 1984, Citytrust offices were located only in Connecticut. In the July/August 1983 issue of Business Advance, a publication directed to business, financial, and industrial communities on Long Island, an article reported that Citytrust was "entering the Long Island market and making its expertise available to companies in this area." Citytrust's decision to establish a commercial lending office on Long Island was announced in the December 6, 1983 issue of Newsday, a Long Island newspaper of general circulation. The Long Island office opened in May 1984 in Melville, New York. In response to an inquiry by Citibank in late June 1984, a Citytrust official stated that the office had opened or was in the process of opening.

More than ten weeks later, plaintiffs filed the instant complaint alleging violations of Sec. 32 of the Lanham Act, 15 U.S.C. Sec. 1114 (infringement of federal service marks and trademarks); Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (false designation of origin); Sec. 368-b of the New York General Business Law (infringement of trademarks registered in New York); Sec. 368-d of the New York General Business Law (injury to business reputation and dilution); unfair competition and infringement of common law trademark rights. On these theories plaintiffs sought damages and a permanent injunction barring defendants from any use of the name "Citytrust" anywhere.

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Plaintiffs then moved for a preliminary injunction to enjoin defendants from using the name "Citytrust" in identifying or referring to the Melville office, or to any other offices subsequently established in New York State. They also sought an order prohibiting the defendants from increasing the...