"DuPont Factors" Weighed in Affirming TTAB's Decision
Citigroup v. Capital City Bank (3/28/11)By: Christina M. Licursi
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What This Means to You
- Not all “DuPont factors” (used by the Federal Circuit to determine whether two trademarks are confusingly similar) are relevant in every case
- Any one factor may control
- Similarity of the marks alone is often dipositive
- A court (or TTAB) can find dissimilarity with phonetic equivalents (CRISTAL and CRYSTAL)
- In cases involving standard-character marks, it is not proper for the TTAB to rstrict its likelihood-of-confusion analysis only to "reasonable" manners of depicting the mark.
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Overview
In a recent case (Citigroup, Inc. v. Capital City Bank Group, Inc.) the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) affirmed the US Patent and Trademark Office's Trademark Trial and Appeal Board’s (“TTAB”) decision that no likelihood of confusion would arise from the use and registration of Capital City Bank Group Inc.'s CAPITAL CITY BANK marks.
Case Background
In the initial administrative proceeding filed by Citigroup in 2007, the TTAB concluded that neither a likelihood of confusion nor dilution would arise from the registration of Capital City's marks, which included Capital City Bank and Capital City Bank Investments, and subsequently dismissed Citigroup's oppositions.
Decision Analysis
On appeal, Citigroup only addressed the issue of likelihood of confusion. The Federal Circuit reasoned that because: 1) the two companies spell the word “city” differently, 2) numerous other banks use the phrase "city bank" in their trademarks, and 3) the word capital distinguishes Capital City's marks from Citigroup's, there was no likelihood of confusion between the marks.
The Federal Circuit emphasized the "I/Y distinction." They reasoned that even though the two marks are phonetic equivalents, the distinctive spelling of CITI in Citigroup's marks is the hallmark of its distinctiveness, so Capital City's marks do not present a likelihood of confusion.
Additionally, the Federal Circuit agreed with TTAB’s finding that, because the phrase "city bank" is frequently found in trademarks in the banking industry, consumers view the city component as either part of a geographic name or as evoking a community bank.
Finally, the court rejected Citigroup's argument that the word “capital” in Capital City's mark does not reduce the similarity between the two marks, finding that, in this case, 'Capital' is not merely a descriptive financial term, but also has geographic connotations.
Takeaways
The Federal Circuit affirmed the TTAB’s dismissal of Citigroup’s opposition based on its application of only six of the 13 DuPont factors. This means not all DuPont factors are relevant to every case.
Even though the TTAB found four of these factors favored Citigroup, the lack of actual confusion and dissimilarity of the marks was controlling in deciding there was no likelihood of confusion.
