United States Court of Appeals
for the Federal Circuit
__________________________
(Opposition No. 91177415)
CITIGROUP INC.,
Appellant,
v.
CAPITAL CITY BANK GROUP, INC.,
Appellee.
__________________________
2010-1369
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
______________________
Decided: March 28, 2011
______________________
MICHAEL F CLAYTON, Morgan, Lewis & Bockius LLP,
of Washington, DC, argued for appellant. With him on
the brief were J. KEVIN FEE and DANIEL S. MARKS.
JOSEPH W. BERENATO, III, Berenato & White, LLC, of
Bethesda, Maryland argued for appellee. With him on the
brief was DAVID S. TAYLOR.
__________________________
CITIGROUP v. CAPITAL CITY 2
Before RADER, Chief Judge, GAJARSA, and PROST, Circuit
Judges.
GAJARSA, Circuit Judge.
This is an appeal from a final decision of the Trade-
mark Trial and Appeal Board (“T.T.A.B” or “Board”)
denying the opposition by Citigroup Inc. (“Citigroup”) to
four standard character service mark applications filed by
Capital City Bank (“CCB”). Citigroup Inc. v. Capital City
Bank Grp., Inc., 94 U.S.P.Q.2d 1645 (T.T.A.B. 2010). For
the reasons discussed below, we affirm the T.T.A.B.’s
denial of Citigroup’s opposition to the registration of
CCB’s service mark.
BACKGROUND
Appellant Citigroup provides commercial and con-
sumer financial services. Citigroup owns multiple
federally registered marks for financial services contain-
ing the CITI prefix, many of which are incontestable
under 15 U.S.C. § 1065. See, e.g., CITI, U.S. Reg. No.
1,181,467 (1981); CITICORP, U.S. Reg. No. 982,066
(1974); CITIBANK, U.S. Reg. No. 691,815 (1960). Citi-
group began using the name Citibank in 1897, although
its official names from the 1800s through the late 1970s
included City Bank of New York, National City Bank, and
First National City Bank. J.A. 32. In 1976, Citigroup
legally changed its name from First National City Bank to
Citibank, N.A.
Third-party brand valuation surveys, including by In-
terbrand and Millward Brown, indicate that the
CITIBANK brand is one of the most valuable brands in
the world. Citigroup, 94 U.S.P.Q.2d at 1658. Courts have
deemed the CITIBANK mark “famous” for trademark
analysis purposes. See, e.g., Citibank, N.A. v. City Bank
of San Francisco, 206 U.S.P.Q. 997, 1004 (N.D. Cal. 1980).
3
CITIGROUP v. CAPITAL CITY
Citigroup seeks to keep the federal registry and market-
place free of marks it considers confusingly similar to its
marks through cease-and-desist letters, opposition pro-
ceedings, negotiations, and lawsuits.
Appellee CCB was formed in 1895 in Florida’s state
capital, Tallahassee. CCB has a multi-state presence
including sixty-nine branches in Florida, Georgia, and
Alabama; automated teller machines; and a website that
serves customers in all fifty states. In 1995, CCB filed
three service mark applications for banking services.
Each contained the phrase “CAPITAL CITY BANK” along
with a design consisting of a five-pointed star inside of a
circle. See, e.g., U.S. Reg. No. 2,007,889 (1996):
Beginning in June 2006, CCB filed a series of four
new applications: CAPITAL CITY BANK, Serial No.
78/906,010 (filed June 12, 2006); CAPITAL CITY BANK
INVESTMENTS, Serial No. 78/909,113 (filed June 15,
2006); CAPITAL CITY BANK GROWING BUSINESS,
Serial No. 78/930,103 (filed July 14, 2006); and CAPITAL
CITY BANC INVESTMENTS, Serial No. 78/934,941 (filed
July 21, 2006). Unlike the prior applications, these
applications contained standard character drawings and
were, therefore, not limited to any particular font style,
size, color, or design element. On May 21, 2007, Citigroup
filed a timely Notice of Opposition with the T.T.A.B.
against each of CCB’s standard character applications.
Citigroup based its opposition on two grounds: the likeli-
hood of confusion between CCB’s applications and Citi-
group’s marks and the likelihood of dilution by blurring.
CCB denied all of the claims alleged by Citigroup.
CITIGROUP v. CAPITAL CITY 4
In its opinion, the T.T.A.B. treated all four applica-
tions as one and evaluated the likelihood of confusion
under the thirteen factors listed in Application of E.I.
DuPont De Nemours & Co., 476 F.2d 1357, 1362 (CCPA
1973) (“DuPont”). Citigroup, 94 U.S.P.Q.2d at 1657-65.
The T.T.A.B. found that four of the six relevant likelihood
of confusion factors favored Citigroup: (1) the fame of the
CITIBANK mark; (2) the similarity of Citigroup’s services
and the services described in the applications; (3) the
similarity of Citigroup and CCB’s trade channels; and (4)
the similarity of their consumers. Id. at 1657-60. The
T.T.A.B. found that two of the DuPont factors favored
CCB: (1) the nature and extent of any actual confusion
and (2) the similarity of the marks. Id. at 1660-65. After
weighing the factors, the T.T.A.B. determined that nei-
ther a likelihood of confusion nor dilution would arise
from the registration of CCB’s marks and dismissed
Citigroup’s opposition. Id. at 1664-69.
On appeal, Citigroup does not address any dilution is-
sues because it contends that “proper consideration of all
the reasonable manners of display demonstrates a clear
likelihood of confusion” and “this Court need not consider
the issue of dilution to reverse the Board’s dismissal
below.” Appellant’s Br. 11. This court, therefore, will
consider only the issue of likelihood of confusion between
CCB’s applications and Citigroup’s marks. We have
jurisdiction over the timely filed appeal pursuant to 15
U.S.C. § 1071(a) and 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
We must affirm the T.T.A.B.’s factual determinations
unless they are arbitrary, capricious, an abuse of discre-
tion, or unsupported by substantial evidence. Recot Inc. v.
M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). The
T.T.A.B.’s ultimate conclusion in a Lanham Act section
5
CITIGROUP v. CAPITAL CITY
2(d) (15 U.S.C. § 1052(d)) analysis of whether a likelihood
of confusion exists is an issue of law based on the underly-
ing facts and is reviewed de novo by this court. In re Save
Venice New York Inc., 259 F.3d 1346, 1351-52 (Fed. Cir.
2001).
Under section 2(d) of the Lanham Act, registration of
a mark must be refused if it
so resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name previ-
ously used in the United States by another and
not abandoned, as to be likely, when used on or in
connection with the goods of the applicant, to
cause confusion, or to cause mistake, or to deceive.
15 U.S.C. § 1052(d). “Standard character” or “typed”
registrations are federal mark registrations that make no
claim to any particular font style, color, or size of display
and, thus, are not limited to any particular presentation.
See, e.g., 37 C.F.R. § 2.52; Phillips Petroleum Co. v. C.J.
Webb, Inc., 442 F.2d 1376, 1378 (CCPA 1971). Whether a
likelihood of confusion exists between an applied-for mark
and a previously registered mark is determined on a case-
by-case basis, aided by application of the DuPont factors.
On-Line Careline v. Am. Online, 229 F.3d 1080, 1085
(Fed. Cir. 2000).
First, we examine the T.T.A.B.’s analysis of the two
DuPont factors contested on appeal: the similarity of the
marks and the “nature and extent of any actual confu-
sion.” Then we conclude the legal analysis by balancing
the DuPont factors and assessing the likelihood of confu-
sion between the parties’ respective marks.
CITIGROUP v. CAPITAL CITY 6
I.
The T.T.A.B.’s factual findings regarding the similar-
ity of the marks and the “nature and extent of any actual
confusion” are supported by substantial record evidence.
Evidence is substantial if “a reasonable person might find
that the evidentiary record supports the agency’s conclu-
sion.” On-Line Careline, 229 F.3d at 1085. The T.T.A.B’s
finding may be supported by substantial evidence even if
two inconsistent conclusions can be drawn from the
evidence. Id. at 1086.
A.
The T.T.A.B. determined that the DuPont factor as-
sessing the “similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation, and
commercial impression” favored CCB. Citigroup, 94
U.S.P.Q.2d at 1664. Upon examination of the record as a
whole, we conclude that substantial evidence supports the
T.T.A.B.’s factual finding that CCB’s marks are not
similar to Citigroup’s marks. The evidentiary record
details the distinctive spellings of the marks at issue,
third-party usage of the phrase “City Bank” in the finan-
cial services industry, and the role of the word “Capital”
in distinguishing CCB’s marks from Citigroup’s marks.
We address each of these in turn.
CCB’s marks are spelled differently than Citigroup’s
marks. This court has found mark dissimilarity when the
words are spelled differently. See, e.g., Champagne Louis
Roederer, S.A. v. Delicato Vineyards, in which this court
found mark dissimilarity between CRISTAL and
CRYSTAL CREEK. 148 F.3d 1373, 1374-75 (Fed. Cir.
1998). Citigroup’s marks are single words and all feature
the C-I-T-I spelling. According to the record, CCB has
never displayed its marks with “City” spelled C-I-T-I or
with the words “City Bank” as a single compound word.
7
CITIGROUP v. CAPITAL CITY
J.A. 650. As the T.T.A.B. explained, “CAPITAL CITY
BANK does not share the characteristics of the
CITIBANK family of marks because (1) it starts with the
word ‘Capital,’ not CITIBANK, (2) ‘City Bank’ is two
words, not a compound word, and (3) applicant's ‘City’ is
spelled with a ‘y,’ not an ‘i.’” Citigroup, 94 U.S.P.Q.2d at
1657.
Similarly, in Citigroup Inc. v. City Holding Co., a dis-
trict court found that the “I/Y distinction is critical,
though the marks are aurally identical.” 171 F. Supp. 2d
333, 345 (S.D.N.Y. 2003). That court ruled that “the
distinctive quality [i.e., spelling] of the CITI mark, the
extent of usage of both marks, both in time and geography
. . . demonstrate that the aural identity is overcome by the
written differentiation.” Id. at 349. The district court
explained that the “I” misspelling is the foundation of the
CITI marks’ distinctiveness and the basis of Citigroup’s
trademark protection policy. Id. at 347. We agree with
the reasoning of that court.
Citigroup itself distinguishes its C-I-T-I spelling from
marks containing the word “City.” When seeking to
register the mark CitiMortgage in Ohio, Citigroup repre-
sented to the Ohio Secretary of State that “[t]he public
will understand that CitiMortgage, Inc. is associated with
and part of the Citigroup family.” Id. at 340-41. It also
maintained that “CitiMortgage” would not cause confu-
sion with the senior mark “City Mortgage.” Id. Citigroup
also noted that “because ‘City’ is a commonly used prefix
for financial services corporations, Citigroup and its many
subdivisions that bear the famous CITI prefix have coex-
isted with many ‘City’ entities for years in virtually every
jurisdiction.” Id.
CITIGROUP v. CAPITAL CITY 8
In addition to distinct spellings, the T.T.A.B. also re-
lied on the frequent usage of the phrase “City Bank” in
the banking industry. Citigroup, 94 U.S.P.Q.2d at 1664.
The Board found that consumers view CITY as either part
of a geographic name or as evoking a community bank.
Id. In Citigroup Inc., v. City Holding Co., the District
Court for the Southern District of New York listed over
twenty third-party banks using marks containing CITY
and BANK as evidence of third-party use in the field of
financial services. 171 F. Supp. 2d at 341-42. Citigroup
itself concedes that it does not pursue third-party uses of
marks containing the phrase “CITY BANK” that include a
distinguishing logo, designate a specific location, or occur
only within a single community. Appellants Br. 19.
In its opinion, the T.T.A.B. considered forty different
websites for banking entities whose names contained the
term “City Bank,” including Surf City Bank, Gate City
Bank, Lake City Bank, and Hastings City Bank. Citi-
group, 94 U.S.P.Q.2d at 1662-63. Several of these banks
present their “City Bank” marks with the words “City
Bank” on a separate line below the remainder of the
mark. The T.T.A.B. found that “[n]otwithstanding the
various uses of ‘City Bank,’ these uses do not diminish the
strength of [Citigroup]'s mark.” Id. at 1664.
Citigroup contends that registration of standard char-
acter marks containing the phrase “CITY BANK” could
make its efforts to police the federal registry and preserve
the strength of the CITIBANK mark more difficult.
Appellant’s Reply Br. 26. Citigroup does not object to
CCB registering “CAPITAL CITY” in standard characters.
Appellant’s Br. 4. Denying CCB’s registration would not
prevent CCB from achieving the same commercial effect.
If CCB obtained the mark CAPITAL CITY in standard
character form and combined it with the term BANK,
which the T.T.A.B. deemed generic, Citigroup, 94
9
CITIGROUP v. CAPITAL CITY
U.S.P.Q.2d at 1664, it could effectively achieve the stan-
dard character mark it seeks, CAPITAL CITY BANK.
Additionally, the federal registry is not free of third-party
standard character marks containing the phrase CITY
BANK. Surf City Bank’s standard character mark SURF
CITY BANK is federally registered as U.S. Reg. No.
3,240,918 (2007). 94 U.S.P.Q.2d at 1663. The only differ-
ence between the SURF CITY BANK mark and CAPITAL
CITY BANK is the substitution of the word CAPITAL.
The T.T.A.B. also examined the role of the word
“Capital” in distinguishing CCB’s marks from Citigroup’s
marks. As explained in Kangol Ltd. v. KangaROOS
U.S.A., Inc., “a particular feature of a mark may be more
obvious or dominant.” 974 F.2d 161, 163 (Fed. Cir. 1992).
The T.T.A.B. determined that “‘CAPITAL CITY’ is the
dominant element in creating the commercial impression
engendered by [CCB]’s marks” because it is located at the
beginning of the marks. Citigroup, 94 U.S.P.Q.2d at
1664. As the first word of the mark, the Board deter-
mined that “Capital” gives CCB’s marks a distinct look
and sound from Citigroup’s marks. Further, CCB’s appli-
cations disclaim BANK and when a mark consists of two
or more words, some of which are disclaimed, the word
not disclaimed is generally regarded as the dominant or
critical term. In re Dixie Rests. Inc., 105 F.3d 1405, 1407
(Fed. Cir. 1997) (finding “delta” the dominant part of the
mark “THE DELTA CAFÉ because CAFÉ was dis-
claimed”).
Although “Capital City” is the dominant part of the
mark, Citigroup argues that because “capital is a com-
monly understood financial term,” it “does little, if any-
thing to reduce the similarities between the marks” and
“[c]ustomers are likely to assume that capital . . . CITY
BANK is a financial service offered by Citigroup.” Appel-
CITIGROUP v. CAPITAL CITY 10
lant’s Br. 8-9. This argument is unpersuasive. “Capital”
is not merely a descriptive financial term—it has geo-
graphic connotations and, here, refers to Tallahassee, the
capital of Florida.
Citigroup cites In re Mighty Leaf Tea in support of its
argument that the presence of an additional term in a
mark, such as CAPITAL, does not necessarily eliminate
the likelihood of confusion. 601 F.3d 1342, 1348 (Fed. Cir.
2010). In Mighty Leaf Tea, this court affirmed the
T.T.A.B.’s rejection of Mighty Leaf Tea’s application for
registration of the mark “ML” in standard character form
for use with personal care and skin care products because
the mark “ML MARK LEES” was already registered for
skin care products. Id. In response to the rejection,
Mighty Leaf Tea argued that it sought to register the
mark ML in standard character form, as distinguished
from the already registered stylized mark, and contended
that “the existence of many similar marks showed the
weakness of the registered marks, such that consumers
would look to fine distinctions to distinguish the sources
of goods.” Id. at 1345. Mighty Leaf Tea submitted evi-
dence of several third-party registrations and pending
applications that included the letters “ML” along with
other letters. Id. This court held that the Board’s find-
ings that the goods were identical in part and that con-
sumer confusion was likely between ML and ML MARK
LEES were supported by substantial evidence. Id. at
1348. The third-party registrations including the letters
“ML” did “not render the marks so similar and weak that
the public would be alert to small differences,” particu-
larly when there was no evidence of third-party use of any
of the cited marks. Id. at 1346-47. Additionally, in that
case, “[a]pplicant’s mark would appear to prospective
purchasers to be a shortened form of registrants’ mark.”
Id. at 1348.
11
CITIGROUP v. CAPITAL CITY
The facts of Mighty Leaf Tea differ from this case in
some critical ways. In Mighty Leaf Tea, the exact same
“ML” mark was already in use, whereas here, CCB’s mark
is spelled differently, is not a compound word, and is not a
short or long form of Citigroup’s existing marks. Also,
here, third-party usage of marks ending in “City Bank”
suggests that the public is sensitive to differences in the
first word of the name of a bank.
Citigroup maintains that because a footnote in the
T.T.A.B.’s opinion noted that minimizing “CAPITAL” and
emphasizing “CITY BANK” is not a “reasonable manner”
of depicting CCB’s marks, the T.T.A.B. did not consider as
many variations of CCB’s marks as it should have. Citi-
group, 94 U.S.P.Q.2d at 1664. Both parties cite Phillips,
442 F.2d 1376, as the source of the doctrine that only
“reasonable” manners of depicting a standard character
mark are considered. In the Phillips case, Phillips op-
posed Webb’s typed mark 1 “CRC MARINE FORMULA 6-
66” for rust and corrosion inhibitors because it had al-
ready registered the mark “66” for marina services, clean-
ers, and lubricants. Id. at 1377. “In trying to visualize
what other forms the mark might appear in,” the court
was “aided by the specimens submitted with Webb’s
application as ‘illustrating the mark as actually used.’”
Id. Webb’s use depicted “the 6-66 portion of the mark
much more prominently than the CRC MARINE
FORMULA portion” with the first “6” at a different level
1 Until 2003, “standard character” marks were
known as “typed” marks. The United States Patent and
Trademark Office changed the nomenclature in 2003 to
conform to the Madrid Protocol. See Rules of Practice for
Trademark-Related Filings under the Madrid Protocol
Implementation Act, 68 Fed. Reg. 55,748, 55,755 (2003)
(explaining revisions to 37 C.F.R. § 2.52).
CITIGROUP v. CAPITAL CITY 12
from the later “66.” Id. The court concluded that “the
mark CRC MARINE FORMULA 6-66, in some forms at
least, so resembles ‘66’ that confusion, mistake or decep-
tion is likely” and reversed the T.T.A.B.’s decision dis-
missing the opposition. Id. at 1379.
Neither Phillips nor any other opinion of the United
States Court of Customs and Patent Appeals, our prede-
cessor court, or this court has endorsed the T.T.A.B.’s
“reasonable manner” limitation of variations evaluated in
the DuPont analysis. Although this court has never
adopted such a rule, the T.T.A.B. has applied it in numer-
ous proceedings. See, e.g., ProQuest Info. & Learning Co.
v. Jacques R. Island, 83 U.S.P.Q.2d 1351, 1359 (T.T.A.B.
2007) (“[W]hen a mark is presented in a typed or standard
character format, the Board must consider all reasonable
manners in which applicant could depict its mark.”);
Jockey Int’l Inc. v. Mallory & Church Corp., 25 U.S.P.Q.2d
1233, 1235 (T.T.A.B. 1992) (stating that the registration
of opposer’s mark in typed format “requires consideration
of all ordinary and reasonable manners in which its mark
could be depicted,” including in typical script form); INB
Nat’l Bank v. Metrohost Inc., 22 U.S.P.Q.2d 1585, 1588
(T.T.A.B. 1992) (“[W]hen applicant seeks a typed or block
letter registration of its word mark, then the Board must
consider all reasonable manners in which those words
could be depicted.”).
The T.T.A.B.’s “reasonable manner” standard limits
the range of marks considered in the DuPont analysis. If
the registrant complies with Section 2.52 of the Rules of
Practice in Trademark Cases and obtains a standard
character mark without claim to “any particular font
style, size or color,” the registrant is entitled to depictions
of the standard character mark regardless of font style,
size, or color, not merely “reasonable manners” of de-
picting its standard character mark. The consideration of
13
CITIGROUP v. CAPITAL CITY
only “reasonable” manners of depicting a standard char-
acter mark is unsupported by anything other than
T.T.A.B practice. The T.T.A.B. 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 T.T.A.B. 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.
As explained in Phillips, illustrations of the mark as
actually used may assist the T.T.A.B. in visualizing other
forms in which the mark might appear.
Citigroup also interprets the T.T.A.B.’s observation
that CCB’s past displays of its marks have not empha-
sized CITY BANK as indicating that the T.T.A.B. only
considered marks as they were previously used. In accor-
dance with Cunningham v. Laser Golf Corp., the T.T.A.B.
used current and past commercial displays of the applied-
for mark to inform but not to restrict its analysis of poten-
tial displays. 222 F.3d 943 (Fed. Cir. 2000). In Cunning-
ham, this court canceled the junior mark LASERSWING
for a golf practice device in light of the senior mark
LASER for golf clubs and golf balls. Id. at 950. This court
ruled that because the mark at issue is the mark as
registered, not as it is used, a respondent in a cancellation
proceeding could not argue that his typed mark is dissimi-
lar from petitioner’s based on his distinctive font, color,
logo, and accompanying house mark. Id. at 949-50.
The T.T.A.B.’s opinion addresses the range of marks
encompassed by the standard character format of the
marks in CCB’s application. Citigroup, 94 U.S.P.Q.2d at
1662-64. The T.T.A.B. determined that given the wide-
spread use of CITY BANK, BANK is a generic banking
term and CITY is part of a geographic name or identifies
CITIGROUP v. CAPITAL CITY 14
a community bank. Id. at 1664. Thus, it would not be
reasonable for CCB to present itself in a manner not
distinguishing itself from these third-party banks. Cf.
DuPont, 476 F.2d at 1362 (“It can be safely taken as
fundamental that reputable businessmen-users of valu-
able trademarks have no interest in causing public confu-
sion.”). Although the Board’s reference to “reasonable
manners” of depicting CCB’s marks in its opinion is
ambiguous and unduly narrow, substantial evidence
supports the T.T.A.B.’s finding that CCB’s marks are
dissimilar in appearance, sound, connotation, and com-
mercial impression from Citigroup’s marks.
B.
We next address the DuPont factor assessing the “na-
ture and extent of any actual confusion.” Substantial
evidence supports the T.T.A.B.’s factual finding of the
absence of actual confusion. As the T.T.A.B. noted, con-
current use in the same geographic markets since 1975
presented “a reasonable opportunity for confusion to have
occurred” but neither party is aware of any actual confu-
sion between the parties’ marks. Citigroup, 94
U.S.P.Q.2d at 1661. CCB and Citigroup have nineteen
bank branches near each other. Id. Additionally, market
research indicates that Citigroup’s renown extends na-
tionwide, even if it does not have branches in all geo-
graphic regions. The T.T.A.B. reasoned that
considering the widespread advertising of op-
poser’s marks and the identity of the services, if
the marks were similar then it is likely that there
would be some reported instances of confusion or
mistake as to source such as misdirected tele-
phone calls, visits, or requests for information or
other indicia of confusion in the marketplace.
Id. at 1664.
15
CITIGROUP v. CAPITAL CITY
In contrast, in Citibank, N.A. v. City Bank of San
Francisco, Citigroup asserted its Citibank International
San Francisco mark against the City Bank of San Fran-
cisco. 206 U.S.P.Q. at 1002. The court found it “ex-
tremely significant” that many instances of actual
confusion arose after less than one month of concurrent
use of the marks. Id. at 1009.
On appeal, Citigroup asserts that it has offered ser-
vices under the brand “CitiCapital” and, therefore, CCB’s
standard character marks could damage the value and
goodwill associated with its marks. Appellant’s Br. 9.
Although this argument could be considered waived, it
also lacks merit. The CITICAPITAL mark was not used
in commerce until November 2000, well after the 1995
priority dates of CCB’s applications. Also, Citigroup
offers no evidence of any confusion between the CitiCapi-
tal brand and CCB.
Citigroup argues that the significance of the absence
of actual confusion is negated because CCB has not used
all of the potential variations of the standard character
mark. Citigroup cites Nina Ricci, S.A.R.L. v. E.T.F.
Enterprises, Inc., 889 F.2d 1070, 1073-74 (Fed. Cir. 1989),
in support of its argument. But in Nina Ricci, the ab-
sence of actual confusion had no probative value because
no products bearing the mark had been sold and the
extent of usage of the mark was unknown. Unlike the
mark at issue in Nina Ricci, CCB’s marks have been used
commercially in overlapping markets.
Although the most potentially confusing form of
CCB’s marks, that is, a version deemphasizing “Capital”
and emphasizing “City Bank,” has not yet been used, the
critical words are all in use and there is no evidence of
actual confusion. Substantial evidence supports the
CITIGROUP v. CAPITAL CITY 16
T.T.A.B.’s analysis of the similarity of the marks and the
nature and extent of any actual confusion.
III.
After weighing the relevant DuPont factors, we con-
clude that the T.T.A.B. did not err in finding no likelihood
of confusion between the parties’ respective marks. Not
all of the DuPont factors are necessarily “relevant or of
equal weight in a given case, and any one of the factors
may control a particular case.” In re Majestic Distilling
Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003) (internal quota-
tion marks omitted).
Six of the thirteen DuPont factors are relevant to this
case:
(1) The similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connota-
tion and commercial impression.
(2) The similarity or dissimilarity and nature of
the goods or services as described in an applica-
tion or registration or in connection with which a
prior mark is in use.
(3) The similarity or dissimilarity of established,
likely-to-continue trade channels.
(4) The . . . buyers to whom sales are made.
(5) The fame of the prior mark (sales, advertising,
length of use). . . .
(7) The nature and extent of any actual confusion.
476 F.2d at 1361. The T.T.A.B. is not required to discuss
every DuPont factor and may find a single factor disposi-
tive. See, e.g., Kellogg Co. v. Pack’em Enters. Inc., 951
F.2d 330, 333 (Fed. Cir. 1991).
17
CITIGROUP v. CAPITAL CITY
The first DuPont factor assesses the fame of the
CITIBANK mark. A famous mark has “extensive public
recognition and renown.” Bose Corp. v. QSC Audio
Prod.’s Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002). Here,
the T.T.A.B. found that CITIBANK is a famous mark.
Citigroup, 94 U.S.P.Q.2d at 1658. As the T.T.A.B. noted,
“[f]ame, if it exists, plays a dominant role in the likelihood
of confusion analysis because famous marks enjoy a broad
scope of protection or exclusivity of use.” Id. at 1657;
accord Recot, 214 F.3d at 1327. The “fame of a mark may
be measured indirectly, among other things, by the vol-
ume of sales and advertising expenditures of the goods
traveling under the mark, and by the length of time those
indicia of commercial awareness have been evident.” Bose
Corp., 293 F.3d at 1371. The T.T.A.B. reviewed the press
coverage of Citibank, corporate studies tracking brand
awareness of the CITIBANK mark, and brand valuations
by independent research agencies. Citigroup,
94 U.S.P.Q.2d at 1658. Studies conducted in the 1990s
indicated that the CITIBANK mark had a 90-95% level of
unaided awareness. Id. Substantial evidence supports
the T.T.A.B’s finding that CITIBANK is a famous mark.
The second DuPont factor is the similarity and nature
of Citigroup’s services and the services described in CCB’s
applications. When trademarks would appear on virtu-
ally identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines. See Century 21 Real Estate Corp. v. Century Life
of Am., 970 F.2d 874, 877 (Fed. Cir. 1992). CCB seeks to
register marks for:
Brokerage and administration services in the
fields of securities, namely, mutual funds, stocks
and bonds, annuities, tax advantaged securities,
money market funds, and self directed retirement
CITIGROUP v. CAPITAL CITY 18
accounts, including IRA portfolio management,
401(k) portfolio management, Simple IRA, and
Roth IRA portfolio management.
Citigroup, 94 U.S.P.Q.2d at 1659.
The CITIBANK mark is registered for, inter alia, “se-
curities and mutual fund investment; brokerage and
trading services; investment advisory and consulting
services; securities brokerage and trading services.” Id.
Substantial evidence supports the T.T.A.B.’s finding that
the services in CCB’s applications are essentially identical
to Citigroup’s services. The second DuPont factor favors
Citigroup.
Because the parties’ trade channels and classes of
consumers are unrestricted, the third and fourth DuPont
factors also favor Citigroup. As this court explained in
Hewlett Packard Co. v. Packard Press, Inc., “absent re-
strictions in the application and registration, goods and
services are presumed to travel in the same channels of
trade to the same class of purchasers.” 281 F.3d 1261,
1268 (Fed. Cir. 2002). We agree with the T.T.A.B.’s
finding that the trade channels and classes of consumers
at issue are identical or nearly identical.
Citigroup argues that the T.T.A.B. incorrectly
weighed the DuPont factors. Citigroup’s approach of
mechanically tallying the DuPont factors addressed is
improper, as the factors have differing weights. Although
the T.T.A.B. deemed the CITIBANK mark famous, fame
is only one of the thirteen DuPont factors. CCB’s marks
do not employ the C-I-T-I spelling or compound word
structure, characteristics that contribute to the fame of
Citigroup’s marks. Because those characteristics are not
present in CCB’s marks, the fame factor is less persuasive
than it is typically. Pervasive third-party use of the
phrase “City Bank” in marks for financial services also
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CITIGROUP v. CAPITAL CITY
limits the protection afforded to the CITIBANK mark.
The dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impres-
sion strongly supports a finding of no likelihood of confu-
sion. Additionally, no instances of actual confusion have
been reported despite opportunities for confusion to have
occurred. But because a standard character registration
would cover potential variations of the CCB applications
that create a different commercial impression from CCB’s
past uses, the “actual confusion” factor has limited proba-
tive value in this case.
After considering the relevant DuPont factors favor-
ing Citigroup against those favoring CCB, we conclude
that CCB’s marks are not likely to cause confusion with
Citigroup’s marks.
CONCLUSION
We conclude that no likelihood of confusion would
arise from the registration of CCB’s marks for banking
and financial services and Citigroup’s marks for the same
services. We affirm the T.T.A.B.’s denial of Citigroup’s
opposition to the registration of CCB’s marks.
AFFIRM
COSTS
Each party shall bear its own costs.