CAPITAL CITY BANK Unlikely to Be Confused with CITIBANK

by Thomas Long, Legal Editor, CCH Trademark Law Guide  

Registration for banking services of four marks featuring the words CAPITAL CITY BANK would not be likely to cause confusion with Citigroup’s numerous registered marks featuring the term CITIBANK for the same services, the U.S. Court of Appeals for the Federal Circuit has held. A decision of the Trademark Trial and Appeal Board (TRADEMARK LAW GUIDE ¶61,568), denying Citigroup’s opposition to registration of the CAPITAL CITY BANK marks, was affirmed.

Dissimilarity of Marks

The applicant’s CAPITAL CITY BANK marks were dissimilar from Citigroup’s famous CITIBANK marks, the court said. The parties’ marks were spelled differently. The applicant’s mark started with the word “Capital,” not CITIBANK, and “City Bank” was two words, not a compound word.

The applicant’s mark spelled “City” with a “y,” not an “i.” The distinctive spelling of CITIBANK was one of the characteristics that contributed to its fame, the court noted. The absence of this spelling in the applicant’s marks diminished the relevance of the fame of the CITIBANK marks.

Although “City” and “Citi” were aurally similar, given the distinctive quality of CITIBANK and the extent of usage of both parties’ marks, the aural similarity was overcome by the written dissimilarity, according to the court.

The phrase “City Bank” was used frequently by third parties in the banking industry. The commercial impression of the applicant’s marks was the geographic designation CAPITAL CITY and the generic term “Bank,” the court said. In addition, “Capital City” was the dominant phrase in the applicant’s marks, not “City Bank.” The term “Capital” was not merely a descriptive financial term; it referred to Florida’s state capital, Tallahassee.

Lack of Actual Confusion

There was no evidence of actual confusion, which further weighed against a finding that confusion was likely, the court said. The parties had used their marks concurrently on 19 different branches in the same geographic markets since 1975, which presented a reasonable opportunity for confusion to have occurred, yet neither party was aware of any instances of confusion having taken place. Although the most potentially confusing form of the applicant’s marks –a version de-emphasizing “Capital” and emphasizing “City Bank” –had not yet been used, the critical words were all in use.

Citigroup, Inc., Fed. Cir., ¶61,784.