In a recent example of what can happen when a company is able to obtain a trade mark for a commonly used word, in the United States, Citigroup is suing phone provider AT&T in relation to its newly launched rewards program 'AT&T THANKS', for alleged infringement of Citigroup's trade mark rights (among other stated rights) in the word THANK YOU.
Citigroup launched its THANK YOU loyalty program in 2004. It is currently the owner of a number of trade marks in the United States for and containing THANK YOU, including three trade marks for THANK YOU (simpliciter) for credit cards, gift cards and loyalty programs.
At first glance, it seems strange that a company could own a trade mark for a word like THANK YOU, particularly in relation to goods such as gift cards and loyalty programs, where the idea of a reward is typically a 'thank you' for customers' business with that company.
However, arguably the mark is not directly descriptive, and Citigroup has adopted and extensively used THANK YOU in relation to its loyalty programs over 12 years. So it seems to be a case of bad luck for AT&T (or perhaps bad planning if AT&T was aware of Citigroup's trade marks and use), as in a comparison between the two marks, the goods and services clearly overlap, and THANKS is a common shortening of THANK YOU.
An argument could be made that, because THANK YOU and THANKS are both common words, Citigroup's reputation may be narrowly construed to not extend to trade marks that are not exactly the mark they have registered. However, this would only be relevant in relation to a comparison of the reputation of Citigroup and AT&T's proposed mark, not on a strict comparison of the marks themselves (which is the standard required for assessing trade mark infringement).
Could this happen in Australia?
It may be thought that such a battle would never happen in Australia.
However, a search of IP Australia's ATMOSS database shows a number of trade marks for or containing THANK YOU or THANKS, including five registered or accepted trade marks for THANK YOU, mainly by the Thankyou Group, an Australian company primarily known in relation to their THANK YOU branded water. The earliest of these trade marks was accepted under previous section 41(5) of the Trade Marks Act (trade mark somewhat adapted to distinguish). Arguably, THANK YOU is not directly descriptive of water, but rather falls into the group of trade marks that might commonly be wanted to be used by other traders.
Importantly, trade mark rights only prevent other people using that mark 'as a trade mark', that is, to identify a source of trade, so they do not prevent people being able to say or use the word THANK YOU. It would seem that an extensive amount of evidence must have been needed to convince IP Australia of that particular mark's acquired distinctiveness, given our experience of IP Australia's treatment of applications for words far less common than THANK YOU. In an interesting counterpart to the Citigroup's action in the United States, the Thankyou Group is currently opposing a trade mark application for THANK YOU FROM CITI, owned by none other than Citigroup. This opposition is currently in its early stages.
It will be interesting to see how these two trade mark actions over the word THANK YOU are treated by the respective trade mark offices of the United States and Australia, and in particular, how the commonness of the applied-for mark is considered.
