Citigroup Inc. v. Capital City Bank Group, Inc.,
2011 WL 1108255 (Fed. Cir. Mar. 28, 2011)
The Federal Circuit affirmed the TTAB’s dismissal of Citigroup’s opposition to the registration of CAPITAL CITY BANK marks based on a likelihood of confusion with Opposer’s CITIBANK marks. The Federal Circuit agreed with the TTAB that Applicant’s marks were not similar to Opposer’s marks based on the distinctive spellings of the marks, third-party use of the phrase “City Bank” in the financial services industry, and the effect of the word “Capital” in distinguishing the parties’ marks. The Federal Circuit also found that the TTAB’s finding of no actual confusion was supported by substantial evidence. The court held that the TTAB had properly concluded that no likelihood of confusion existed between the parties’ respective marks based on a balancing of the relevant DuPont factors.
Applicant Capital City Bank Group, Inc. filed applications for several CAPITAL CITY BANK-formative marks (the “CAPITAL CITY BANK marks”) covering various banking and financial services. Opposer Citigroup Inc. opposed registration of the CAPITAL CITY BANK applications on the grounds of likelihood of confusion and dilution based on Opposer’s alleged family of CITIBANK marks for financial services. Opposer asserted numerous registrations for its CITIBANK marks for banking and financial services.
The TTAB found that four of the six DuPont likelihood-of-confusion factors favored Opposer: (1) the fame of the CITIBANK marks, (2) the similarity between the parties’ services, (3) the similarity between Opposer’s and Applicant’s trade channels, and (4) the similarity of the parties’ consumers. The TTAB found that two of the relevant DuPont factors favored Applicant: (1) the nature and extent of any actual confusion, and (2) the similarity of the marks. After weighing the factors, the TTAB determined that there was no likelihood of confusion.
On appeal, Opposer challenged only the TTAB’s finding on likelihood of confusion and, in particular, its findings on the similarity-of-marks and actual-confusion factors.
The Federal Circuit found that all of the TTAB’s findings were supported by substantial evidence. First, the court agreed that Applicant’s marks were not similar to Opposer’s marks based on the distinctive spellings of the marks, third-party usage of the phrase “City Bank” in the financial services industry, and the role of the word “Capital” in distinguishing the parties’ marks. Regarding the spelling of the marks, the court found that the marks were not similar because the CAPITAL CITY BANK marks started with the word CAPITAL; “City Bank” is two words, not a compound word; and Applicant’s “City” is spelled with a “y,” not an “i.” The Federal Circuit also noted the 40+ third-party websites whose names contained the term “City Bank” and the registration of the third-party mark SURF CITY BANK. Further, the court agreed that “Capital” was the dominant element of Applicant’s mark and that the public would be sensitive to the differences in the first word of the parties’ marks, given the extensive third-party use of marks ending in “City Bank.”
Opposer argued that the TTAB had not considered as many variations of the CAPITAL CITY BANK marks as it should have in its likelihood-of-confusion analysis. Specifically, Opposer pointed to a footnote in the TTAB’s opinion that stated that minimizing “CAPITAL” and emphasizing “CITY BANK” was not a “reasonable manner” of depicting Applicant’s marks and, thus, was not considered in the analysis. Because Applicant’s applications for the CAPITAL CITY BANK marks had been filed in standardcharacter format, Opposer argued that the TTAB should have considered all manners of depicting the marks (not just “reasonable manners”). The Federal Circuit agreed with Opposer that the TTAB’s “reasonable manner” restriction was unduly narrow. The Federal Circuit explained, “[t]he TTAB should not first determine whether certain depictions are ‘reasonable’ and then apply the DuPont analysis to only a subset of variations of a standard character mark. The TTAB should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark.” The Federal Circuit added that illustrations of how the mark is actually used may help the TTAB visualize other forms in which the mark might appear. Notwithstanding the TTAB’s misapplication of the “reasonable manner” standard, however, the court ultimately held that substantial evidence had supported its finding that the parties’ marks were dissimilar in appearance, sound, connotation, and commercial impression.
Additionally, the Federal Circuit found that substantial evidence supported the TTAB’s finding of an absence of actual confusion. The Federal Circuit agreed that the concurrent use of the parties’ marks in the same geographic markets since 1975 presented a reasonable opportunity for confusion to have occurred, and neither party was aware of any such confusion. Further, the court dismissed Opposer’s argument that the lack of any actual confusion was negated because Applicant had not used all of the potential variations of the CAPITAL CITY BANK mark. Although the most potentially confusing form of that mark—a version deemphasizing “Capital” and emphasizing “City Bank”—had not yet been used, the court found that the critical words were all in use and there had been no confusion. Thus, the TTAB’s decision was supported by the record.
Finally, the Federal Circuit found that the TTAB did not err in finding no likelihood of confusion based on its weighing of the relevant DuPont factors.
In cases involving standard-character marks, it is no longer proper for the TTAB to restrict its likelihoodof- confusion analysis only to “reasonable” manners of depicting the mark. The TTAB must use the DuPont factors to determine the likelihood of confusion between depictions of standard-character marks that vary in font, style, size, and color, and the other mark.