For the years 1994 through 2000, Citigroup spent in excess of $3.0
billion domestically advertising and marketing its CITI services. During
the years 1974-1984, Citicorp spent over $100 million on advertising CITI
brand services throughout the United States. Citigroup and the CITI
family of marks have received extensive unsolicited media coverage for
In CIT Group, Inc. v. Citicorp, 20 F. Supp.2d 775 (D.N.J. 1998), CIT
Group challenged as trademark infringement and dilution CITIcorp's
proposed adoption of the mark CITIGROUP. In rejecting that challenge, the
court held that "CITIGROUP is one more addition to the family of CITI
names which, through extensive use and advertising have become
internationally famous." Id. at 793; see also Citibank, N.A. v. Citibanc
Group, Inc., 724 F.2d 1540, 1547-48 (11th Cir. 1984) (affirming district
court finding that CITIBANK is a strong mark); Citibank, N.A. v. City
Bank of San Francisco, 206 U.S.P.Q. at 1004 (finding that the "CITIBANK"
mark "has now become world famous").
As of December 31, 2000, there were 22 marks in the CITI family that were
incontestible, and thus, as noted, presumed distinctive for trademark
It must be concluded therefore that CITI is a strong and distinctive
mark, and it has been held to be so as indicated by the authorities cited
What next must be considered is the similarity between the CITI and CITY
marks which are identical aurally.
Citicorp's marks have the distinguishing second "I" in "CITI" and many
of them are one word marks, compound words with a CITI prefix. Its
enforcement efforts for many years have centered on marks which have the
distinctive second "I," or which appropriate another characteristic
typical of their family of marks, such as Citi or City immediately prior
to "Bank"; or Citi or City made into a prefix in a compound single word
mark denoting a financial service, such as "CITYBROKER."
In assessing the similarity factor, conflicting marks must be compared
in their entireties; likelihood of confusion should not be predicated on
the dissection of marks. Keebler Company v. Murray Bakery Products,
866 F.2d 1386, 1390 (Fed. Cir. 1989). See also 3 McCarthy on Trademarks
§ 23:41, p. 23-112.
Citicorp has contended that "the I/Y difference between the parties'
marks is insignificant[,]" going on to cite eleven cases where variants
of marks have been held to infringe the original. However, none of those
cases deal with a third party use of the variant in question. Here "the
I/Y difference" has long been a predicate of Citicorp's own trademark
protection policy. Implicit in that protection history is the admission
that "City" is distinguishable from "Citi".
Although Citicorp has urged that City Holding has used "CITY" as a
service mark in itself, its marketing director has stated that City does
not use and does not intent to use "City" alone as a trademark. While
some of his statements, and those of the president in a press release and
certain passages in speeches and annual reports may use CITY as
shorthand, the inference must be drawn in City Holding's favor and
against the use of CITY as a service mark.
Both parties have on occasion used logos where "CITI" or "CITY" have been
enlarged. Such treatment seeks to identify the family of marks by that
word, but it must be noted that "CITY" has not been used alone.
The entire look of the marks, including "logos, typefaces and package
they appear in the marketplace, must also be considered. WWW
Pharmaceuticals, Inc. v. The Gillette Co., 984 F.2d 567, 572 (2d Cir.
1993). The respective logos and typefaces are different. City Holding's
logos, to the extent that they do emphasize "City," emphasizing the
difference between the "Y" and the "I" formulations by the typeface
In appearance the marks are significantly different.
In terms of proximity of services, the marks are generically close and
geographically disparate. Proximity has been said to address (i) whether
and to what extent the two services compete, and (ii) the nature of the
services and market structure. See Morningside Group Ltd., 182 F.3d at
140 (finding proximity where both parties provided financial services);
Hasbro, Inc., 858 F.2d at 77 (finding proximity for manufacturers of
action figures); Nikon Inc., 987 F.2d at 95 (finding proximity where both
parties sold cameras); Lane Capital Mgmt., Inc., 15 F. Supp.2d at 398-99
(finding proximity where parties provided overlapping financial
Citigroup and City Holding offer comparable lines of banking and
financial services as described in Citigroup's 2000 Annual Report and
Form 10K with the comparable disclosure made by City Holding in its 1999
Annual Report and Form 10K.
"Bridging the Gap" refers to whether the senior user is likely to enter
the junior user's market. See Morningside Group Ltd., 182 F.3d at 141.
This factor recognizes "the senior user's interest in preserving avenues
of expansion and entering into related fields." Id. (citation omitted).
"Bridging the gap" is likely when, as here, the parties are already in
the same business. See Nikon Inc., 987 F.2d at 95; Consolidated Cigar
Corp., 58 F. Supp.2d at 198.
The proximity of the services offered and the concomitant probability of
bridging any gap between the offerings of the parties is offset by the
economic and geographic realities. Citicorp has no bricks and mortar in
West Virginia — its business is national and worldwide — and
City Holding has almost 60 branches in West Virginia and has abandoned
its effort at a national mortgage business. Further, of course, the
objective test of proximity and bridging the gap is the existence of
actual confusion in the marketplace. From the absence of any evidence of
confusion, it is concluded that the markets in which the parties are
operating are ships passing in the night, one for customers seeking
national and international banking services and one for financial
accommodations in West Virginia.
If consumers have been exposed to two allegedly
similar marks in the marketplace for an adequate
period of time and no actual confusion is detected
either by a survey or in actual reported instances of
confusion, that can be [a] powerful indication that
the junior trademark does not cause a meaningful
likelihood of confusion.
Nabisco, Inc. v. PF Brands, Inc.,