Monday, March 28, 2011
Federal Circuit: "Capital City Bank" marks not confusingly similar to CITIBANK
The Federal Circuit today handed Citigroup a loss in its opposition proceeding pitting its CITIBANK marks against several marks containing the words “CAPITAL CITY BANK.” Although the decision in Citigroup Inc. v. Capital City Bank Group, Inc., No. 2010-1369 (Fed. Cir. Mar. 28, 2011) was fairly fact-specific, a couple of legal points stood out. First, the Federal Circuit rejected the TTAB’s practice of considering only “reasonable” manners of depicting word (standard character) marks. The court stopped short of re-defining exactly what range of depictions should be considered, however, leaving ambiguity as to exactly what the precise broadening effect of this holding will be. Second, the court noted that “pervasive” use of the phrase “City Bank” in other financial service marks (both registered marks and those found used on various bank websites) “limits the protection afforded to the CITIBANK mark." Interestingly, on appeal, Citigroup waived its arguments as to dilution.