ABSTRACT

Based on Opposer’s prior use and registration of its CITIBANK marks for financial services, Opposer opposed registration of Applicant’s CAPITAL CITY BANK marks for financial services on the grounds of likelihood of confusion and dilution. Applying the DuPont likelihood-of-confusion factors, the TTAB found that Opposer’s CITIBANK marks were famous, the services of the parties were, in part, identical, and the services were presumed to move in the same channels of trade to the same classes of consumers. However, the TTAB also found that the marks were not similar and that there had been no reported instances of actual confusion despite having had a significant opportunity for confusion to occur. Balancing these factors, the TTAB found that the significant differences between the parties’ marks outweighed the factors favoring Opposer, and concluded that confusion was unlikely.

On Opposer’s dilution claim, the TTAB found that Opposer had not established the fame of its marks prior to Applicant’s relevant priority date. Further, the TTAB found that the parties’ marks were not substantially similar, there were numerous third-party users of the term “City Bank,” there was no evidence demonstrating any association between the parties’ marks, and there was no evidence that Applicant intended to create an association with Opposer’s marks. These factors were sufficient to outweigh any fame and distinctiveness of Opposer’s marks. Accordingly, the TTAB also rejected Opposer’s dilution claim.

CASE SUMMARY

FACTS

Capital City Bank Group, Inc. (“Applicant”) filed applications for the marks CAPITAL CITY BANK, CAPITAL CITY BANK INVESTMENTS, CAPITAL CITY BANK GROWING BUSINESS, and CAPITAL CITY BANC INVESTMENTS covering various banking and financial services. In each application, Applicant claimed ownership of three incontestable registrations for stylized versions of the mark CAPITAL CITY BANK featuring a star design to the left of the word mark.

Citigroup Inc. (“Opposer”) opposed registration of the CAPITAL CITY applications on the grounds of likelihood of confusion and dilution based on Opposer’s alleged family of CITIBANK service marks for financial services. Opposer asserted numerous registrations for CITIBANK-formative marks for banking and financial services.

ANALYSIS

Regarding standing, Applicant argued that because it was already the owner of three incontestable registrations incorporating the term “CAPITAL CITY BANK” for banking services, Opposer could not be damaged by the registration of the applications at issue. The TTAB rejected this argument, explaining that the prior registration defense asserted by Applicant was only applicable where the prior registration identified essentially the same mark for essentially the same goods or services as the proposed application. Here, the TTAB found that the applied-for marks in standard character form could create a different commercial impression than the marks in Applicant’s prior registrations, which were stylized and contained a star design. The TTAB also found that while the services in the applications and registrations fell under the same broad umbrella of financial services, the applications included services different from the banking services listed in the registrations.

The TTAB found that Opposer had established priority as to its individual CITIBANK marks based on its registrations. However, the TTAB held that Opposer had not established a family of CITIBANK marks prior to Applicant’s first use of its marks. Specifically, the TTAB found that Applicant was entitled to rely on 1975 as the relevant date for priority purposes, and that the earliest evidence of Opposer promoting its marks together as a family was not until a November 2000 press release, well after Applicant’s 1975 priority date. Because no family of marks had been established, the TTAB based its likelihood-ofconfusion analysis solely on the use of the individual marks in Opposer’s registrations.

Turning to Opposer’s likelihood-of-confusion claim, the TTAB found that the CITIBANK marks were famous based on Opposer’s long and extensive use of the marks, the high level of brand awareness of the CITIBANK mark as reflected in corporate image-tracking studies, the high rankings of the CITIBANK mark in the BusinessWeek magazine brand valuation study and in MillwardBrown’s brand rankings, BusinessWeek’s brand valuation of the CITIBANK mark at over $13 billion, and media references to Opposer’s stature as a leading bank. The TTAB also found that the parties’ services were essentially identical and that the channels of trade and classes of purchasers were thus presumed to be the same.

Nevertheless, the TTAB held that the significant differences between the parties’ marks and the fact that there had been no actual confusion outweighed these other factors. Contrary to Opposer’s arguments, the TTAB found that there had been a reasonable opportunity for confusion to arise between the parties’ marks because both of the parties offered their services in the same geographic locations. Further, the TTAB rejected Opposer’s argument that the lack of any actual confusion was not probative because the Applicant’s marks with the star logo “differed so greatly” from the pending word mark applications. The TTAB explained that the dominant portion of Applicant’s star logo marks was the name CAPITAL CITY BANK, which portion engendered the same commercial impression as the applied-for marks such that the concurrent use of Applicant’s star logo marks and Opposer’s marks had presented a reasonable opportunity for confusion to occur. Regarding the similarity of the marks, the TTAB found that although the marks were superficially similar to the extent that Applicant’s marks contained the term “City Bank,” because Applicant’s marks started with the word “Capital,” the commercial impression engendered by Applicant’s marks was entirely different. The TTAB explained that Applicant’s marks would be perceived as CAPITAL CITY . . . bank, not as CAPITAL . . . CITY BANK. Further, in Applicant’s CAPITAL CITY BANK marks, the TTAB found that the term “Capital City” would be perceived as a geographic designation and “Bank” as a generic designation. Accordingly, the TTAB concluded that the parties’ marks were not similar in appearance, sound, or meaning, and the absence of any actual confusion lent credence to that finding. On balance, the TTAB thus held that the significant differences between Applicant’s CAPITAL CITY BANK marks and Opposer’s CITIBANK marks outweighed the fame of Opposer’s marks rendering confusion unlikely.

With respect to Opposer’s dilution claim, Opposer argued that its marks were famous prior to the filing date of Applicant’s applications and that Applicant’s marks were likely to “blur” the distinctiveness of Opposer’s marks. Because Applicant’s CAPITAL CITY BANK application was a use-based application, however, the TTAB explained that Opposer was required to establish fame prior to Applicant’s first use of the CAPITAL CITY BANK mark, not the filing date of that application. Here, Opposer had failed to do so because Applicant was entitled to rely on its 1975 priority date, and the evidence of record showed that Opposer’s marks did not become famous until 1983. In addition, the TTAB found that Opposer had failed to establish blurring. Weighing the dilution factors, the TTAB found that Opposer had not established that the parties’ marks were substantially similar, that there were numerous third-party users of the term “City Bank,” that there was no evidence demonstrating any association between the parties’ marks, and that there was no evidence that Applicant intended to create an association with Opposer’s marks. Accordingly, the TTAB found that these factors outweighed any fame and distinctiveness of Opposer’s CITIBANK marks.

The TTAB thus dismissed the opposition as to both Opposer’s likelihood-of-confusion and dilution claims.

CONCLUSION

While the TTAB found the CITIBANK famous in its likelihood-of-confusion analysis in this case, this factor was ultimately outweighed by other factors such as the dissimilarity of the marks and the lack of any actual confusion despite the parties’ long-term coexistence in the marketplace.