United States: Federal Circuit Affirms Finding Of No Likelihood Of Confusion Between CITIBANK Marks And CAPITAL CITY BANK Marks

This article previously appeared in Last Month at the Federal Circuit - April 2011

In Citigroup Inc. v. Capital City Bank Group, Inc., No. 10-1369 (Fed. Cir. Mar. 28, 2011), the Federal Circuit affirmed the TTAB's dismissal of Citigroup Inc.'s ("Citigroup") opposition to registration of Capital City Bank Group, Inc.'s ("CCB") CAPITAL CITY BANK marks based on a likelihood of confusion with Citigroup's CITIBANK marks.

CCB filed applications for several CAPITAL CITY BANK-formative marks (the "CAPITAL CITY BANK marks") covering various banking and financial services.  Citigroup opposed registration of the CAPITAL CITY BANK applications on the grounds of likelihood of confusion and dilution based on Citigroup's alleged family of CITIBANK marks for financial services.  Citigroup asserted numerous registrations for its CITIBANK marks for banking and financial services.

The TTAB found that four of the six likelihood-of-confusion factors set forth in Application of E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1362 (CCPA 1973), favored Citigroup:  (1) the fame of the CITIBANK marks; (2) the similarity between the parties' services; (3) the similarity between Citigroup's and CCB's trade channels; and (4) the similarity of the parties' consumers.  The TTAB found that two of the relevant DuPont factors favored CCB:  (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 or dilution. 

On appeal, Citigroup challenged only the TTAB's finding on the issue of likelihood of confusion and, in particular, its findings on the similarity-of-marks and actual confusion factors.  The Federal Circuit, however, found that the TTAB's findings were supported by substantial evidence.  First, the Court agreed that CCB's marks were not similar to Citigroup'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 CCB's "City" is spelled with a "y," not an "i."  The Court 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 CCB'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."

The consideration of only 'reasonable' manners of depicting a standard character mark is unsupported by anything other than [TTAB] practice.  The [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."  Slip op. at 12-13.

Citigroup 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, Citigroup 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 CCB's marks and, thus, was not considered in the analysis.  Because CCB's applications for the CAPITAL CITY BANK marks had been filed in standard character font, Citigroup argued that the TTAB should have considered all manners of depicting the marks (not just "reasonable" manners).  The Federal Circuit agreed with Citigroup that its "reasonable manner" restriction was unduly narrow.  The Court explained, "The [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."  Slip op. at 13.  The Court 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 supported the finding that the parties' marks were dissimilar in appearance, sound, connotation, and commercial impression.

Additionally, the Court found that substantial evidence supported the TTAB's finding of the absence of actual confusion.  The Court 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 Citigroup's argument that the lack of any actual confusion was negated because CCB 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 Court concluded that the TTAB's decision was supported by the record.

Finally, the Court found that the TTAB did not err in finding no likelihood of confusion based on its weighing of the relevant DuPont factors.  In so doing, the Court found that Citigroup's approach of "mechanically tallying" the DuPont factors was improper, as the factors have differing weights.  Id. at 18.

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