Citibank, N.A. v. Citibanc Group, Inc.

724 F.2d 1540, 222 U.S.P.Q. (BNA) 292, 1984 U.S. App. LEXIS 25416

• Court: Court of Appeals for the Eleventh Circuit
• Decided: February 16, 1984
• Docket: 82-7214
• Status: Published

Opinions

JAMES C. HILL, Circuit Judge:

Citibanc Group, Inc., and eight of its subsidiaries, defendants in the district court (Citibanc or defendants) appeal from the judgment of that court in favor of plaintiff Citibank, N.A. (Citibank or plaintiff). Plaintiff sued defendants for infringement of its federally-registered trademark and service mark “Citibank,” seeking an order prohibiting defendants from doing business as “Citibanc.” The district court held plaintiff’s mark valid and plaintiff’s right to use the mark to be superior to any right that defendants might have in the mark. The court decided that neither laches nor estop-pel bars plaintiff from relief and, finding that defendants had infringed plaintiff’s mark, granted the requested relief. We find no error in the result reached by the district court.

Plaintiff, a wholly owned subsidiary of Citicorp, is a chartered national banking association with its principal office in New York City. Defendant Citibanc Group, Inc., is a bank holding company with its principal place of business in Alabama. Citibanc Group or its majority shareholders own in whole or in part the other eight defendants in this case, which, with one exception, are named “Citibanc of (name of town)”.¹ The eighth subsidiary is Citibanc Computer Systems, Inc. With the exception of the computer company, which performs services for the banks, the subsidiaries engage in normal banking operations in various cities in Alabama.

Plaintiff bases its suit on its claim of ownership of the trademark and service mark “Citibank,” arguing that defendants’ use of “Citibanc” infringes its rights. At trial, the defendants denied these allegations and asserted that laches and estoppel bar plaintiff from relief. Defendants also counterclaimed contending that plaintiff’s mark is invalid for various reasons. On appeal, defendants have raised specific points of error, and we will discuss the facts necessary to our decision of each specific point below. Helpful to a basic understanding of the case, however, is a review of the name history underlying the contentions of both plaintiff and defendants.

Plaintiff first employed a derivative of the name “City Bank” when it was chartered as The City Bank of New York in 1812. In 1865, when the National Banking Act was adopted, the bank became nationally chartered and changed its name to The National City Bank of New York. Plaintiff used the name City Bank or a variation of the name for various purposes through the 1800’s and into the 1900’s. In 1955, the plaintiff merged with the First National Bank of New York to become The First National City Bank of New York. In 1962, plaintiff changed its name to First National City Bank. In 1960, plaintiff registered the mark Citibank for use in connection with banking services, and, in 1976, again changed its name, this time to Citibank, N.A.

The name history of the defendants begins in 1955 when the partnership of Wil-banks and Wilbanks purchased the controlling interest in The Peoples Trust & Savings Bank of Goodwater, Alabama. Subsequently, the partnership acquired controlling interests in the City Bank of Tuskeegee (1967), City Bank & Trust Company of Roanoke (1967), The Farmers and Merchants Bank of Lineville (1968) and the Covington County Bank of Andalusia (1969). The use of the term City Bank by the Roanoke bank began when it was incorporated in 1931; this use predates the use of any other defendant. Except for the City Bank of Tuskeegee, incorporated in 1933, no other predecessor to any defendant used the term in its name before 1969. During the 1960’s, the other two banks changed their names to incorporate the term City Bank.

In 1972, Citibanc Group, Inc., was incorporated and approved by the Federal Reserve System as a bank holding company. The holding company exchanged its stock for the bank stock of the Wilbanks’ partnership. During the next few years, the holding company acquired a majority interest in the other defendant banks and created the computer subsidiary. On January 23, 1977, the board of the holding company decided that each subsidiary should adopt a similar name using the terminology Citibanc of (name of town), and the various banks did so in February, 1977.

I. THE VALIDITY OF THE PLAINTIFF’S RIGHTS

A. The Common Law and the Lanham Act.

Defendants argue that plaintiff cannot assert its rights under the Lanham Act because defendants’ common law rights predate both the plaintiff’s 1960 registration and the 1947 passage of the Act; thus, argue defendants, their rights are preserved by section 33(b)(5) of the Act, 15 U.S.C. § 1115(b)(5) (1976), section 15 of the Act, 15 U.S.C. § 1065 (1976), or section 2(d) of the Act, 15 U.S.C. § 1052(d) (1976). The defendants contend that the name of each bank in Alabama can be traced to the names of the two Alabama banks using the term City Bank prior to 1947. Defendants argue that, because Citibanc is a mere variation of City Bank, they may “tack on” to the rights of those two banks and use Citi-banc throughout the state of Alabama.

The plaintiff maintains that defendants’ common law rights to City Bank were frozen at the time of the registration in 1960 because plaintiff was the senior user of the mark. The defendants, according to the plaintiff, thus could use “City Bank” only in two relatively small towns in Alabama. Not willing to concede this use to the defendants, however, the plaintiff argues that by changing their names to Citibanc the defendants wrongly changed their names “closer” to the registered mark Citibank and abandoned any rights they possessed in the two-word version of the name. The district court substantially adopted the plaintiff’s argument.

The various arguments set forth by both parties are complex, and, to a large degree, they focus on issues we need not address to decide this case. The issue before us is whether defendants can use the term Citibanc in Alabama. We need not decide whether the defendants would be able to use the term City Bank in Alabama except to the extent that use of this term allows defendants to use Citibanc under one of the various grandfather provisions of the Lanham Act. We, however, do not perceive this issue to be of great difficulty. Assuming for the moment that plaintiffs validly registered and obtained trademark rights to Citibank in 1960, defendants, regardless of their right to use the term City Bank, could not in 1967 adopt the term Citibanc. See Holiday Inns, Inc. v. Holiday Inn, 364 F.Supp. 775 (D.S.C.1973), aff’d mem. 498 F.2d 1397 (4th Cir.1974).

In Holiday Inns, the defendant had acquired local rights to use the mark “Holiday Inn” before the plaintiff’s Lanham Act registration. After the registration, however, the defendant embarked on a campaign to associate itself with the plaintiff in the public eye. For example, defendant constructed and installed a sign virtually identical to plaintiff’s well-known, nationally-used sign. 364 F.Supp. at 783. The court enjoined this action by the defendant. Id. at 786-87. We think this case presents substantially the same problem as the Holiday Inns case. Defendants have adopted a mark — Citibanc—substantially more similar to plaintiff’s mark than the two-word version—City Bank. We are mindful that the two versions sound alike, but we perceive a difference between the two terms. Citibanc and Citibank are “manufactured” words. They are “not to be found in the dictionary.” See Sweetarts v. Sunline, Inc., 380 F.2d 923, 927 (8th Cir.1967) (discussing term “Sweetarts”). We do not decide that the two affected defendants could have continued to use the term City Bank in the two Alabama towns, nor is the issue now before us as to the right of the other defendants to incorporate such term in their names. It is clear that defendant has run afoul of the principle stated in Holiday Inns by adopting a term much closer to plaintiff’s registered trademark than the term it previously used.

B. Fraud in the Registration.

Defendants contend that plaintiff may not rely on the 1960 registration because that registration is invalid. Defendants argue principally that plaintiff, in obtaining registration of the mark Citibank, fraudulently misrepresented to the Patent and Trademark Office that no other banks were using City Bank as part of their names. Defendants also argue that plaintiff misrepresented that its services were “banking services” when the services were in actuality a “Ready-Credit loan plan” and that plaintiff fraudulently filed section 8 and section 15 continuous use affidavits when plaintiff had not continuously used the mark for five years.

In reviewing defendants’ claims, we review findings by the district court that plaintiff did not commit fraud; these findings are findings of fact and the clearly erroneous standard of Federal Rule of Civil Procedure 52(a) applies. For defendants to have proven fraud, they must necessarily have proven a false, material statement by the plaintiff of a fact that would have constituted grounds for denial of the registration had the truth been known. See, e.g., Giant Food, Inc. v. Malone & Hyde, Inc., 522 F.2d 1386 (C.C.P.A.1975); Hollowform, Inc. v. AEH, 515 F.2d 1174 (C.C.P.A. 1975).²

As to the first claim of defendants, “[i]n the absence of a showing that there is a prior third-party use, any common law rights resulting from an innocent subsequent use ...” are not material to the application. Giant Food, 522 F.2d at 1394; Rosso & Mastracco, Inc. v. Giant Food, Inc., 720 F.2d 1263 (Fed.Cir.1983). The district court specifically found that “[w]hen plaintiff filed its application, ... no other firm, bank or otherwise, was using ‘Citibank’ as a trade name, trademark, or service mark.” Thus, plaintiff was under no obligation to disclose anything to the trademark office. Assuming without deciding that plaintiff should have disclosed all material uses of City Bank does not change our conclusion. The evidence shows plaintiff also to be the senior use of this term.

We also find defendants’ second and third contentions to be without merit. The district court could properly conclude that it is not fraudulent to represent a loan plan as a banking service. There is also adequate evidence in the record to support that court’s conclusion that plaintiff continually used the “Citibank” mark for five years; thus, the plaintiff’s section 8 and section 15 affidavits were not fraudulent. We have reviewed the record and have determined that the district court properly rejected the other allegations of fraud set forth by the defendants; thus, we must reject defendants’ contention that plaintiff’s registration should be cancelled.

C. The Generic or Descriptive Characteristics of the Citibank Mark.

Defendants next contend that plaintiff has no right to prevent them from using the term Citibanc because it is generic or descriptive. See generally Vision Center v. Opticks, Inc., 596 F.2d 111 (5th Cir. 1979). A generic term is one that describes a class to which the individual service belongs; a descriptive term “identifies a characteristic or quality of an article or service .... ” Id. at 115. The district court held the term not descriptive, and we agree with that conclusion. The term “Citi” does not describe a class of banking services or a characteristic of banking services. As the district court stated, “[t]he most that can be said for City Bank is that it suggests a modern or urban bank.” Slip op. at 49 (emphasis in original). To paraphrase Professor McCarthy, we find that Citibank indicates not a type of service, but a provider of that service. See J. McCarthy, Trademarks and Unfair Competition, § 12.2 at 407-08.³

D. Abandonment.

Defendants next contend that plaintiff, even if it once had rights to Citibank, abandoned those rights by failing to use the mark. In order to prove abandonment, defendants must show that plaintiff actually abandoned the use of the mark, and, also, that plaintiff intended to abandon the mark. See United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 138 (3d Cir.1981). The Lanham Act provides that failure to use a mark for two years constitutes “prima facie abandonment.” 15 U.S.C. § 1127 (1976). In this case, however, the district court correctly concluded that defendants failed to meet the strict burden of proof applicable to abandonment claims. See American Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619, 625 (5th Cir.1963). Although the plaintiff admittedly used Citibank only sporadically before 1976, the use was fairly continuous and clearly sufficient to justify the district court’s finding that plaintiff never intended to discontinue using the name.

II. PLAINTIFF’S ABILITY TO ENFORCE ITS RIGHTS

Defendants contend that, even if plaintiff once had the right successfully to bring suit for infringement, it has forfeited that right.

A. Preclusive Effect of the Federal Reserve Board's Decision.

In 1972, the Federal Reserve Board (FRB) approved the use of Citibanc Group, Inc., for the defendant holding company even though plaintiff objected to that decision. Defendants contend that because plaintiff did not appeal from that decision it is now binding on this court. It is true that, under 12 U.S.C. § 1842(c) (1976), the FRB must consider anticompetitive effects when approving a merger or consolidation of banks. We are not prepared, however, to leap to the conclusion that the FRB’s actions are conclusive in a subsequent trademark infringement action.

Defendants cite only two cases in support of their argument; neither case supports the proposition asserted. In Fund for Gov’t Investors, Inc. v. Gov’t Investment Trust, 215 U.S.P.Q. 54 (E.D.Va.1981), the court supported its conclusion that the defendants’ names were not confusingly similar to the plaintiff’s name by noting that the Securities and Exchange Commission had reached the same conclusion. In North Dakota v. Merchants National Bank & Trust Co., 634 F.2d 368 (8th Cir.1980), the court dealt with the preemption of state unfair competition law by the National Bank Act, 12 U.S.C. § 30 (1976). We can find no indication that Congress intended that the decision of the FRB bind this court or that section 1842 should preempt the Lanham Act. Although the FRB considers the trade implications of its decisions before approving a merger, it does not necessarily conduct the complex trademark analysis required in this case.

To give the weight to the FRB decision urged by the defendants would create an anomalous situation. In the well known case of Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir.1959), the court held that plaintiff could not enjoin defendants’ use of a trademark absent a “present likelihood that plaintiff will expand its retail use of the mark into defendant’s market area .... ” Id. at 360. The court noted, however, that if the plaintiff later expanded into the defendant’s area, it could obtain an injunction against defendants’ use of the trademark. Id. Assuming without deciding that plaintiff was not doing business in Alabama in 1972 when the FRB acted, applying conclusive effect to the FRB’s decision would nullify the Dawn holding. We are not prepared to give such weight to a FRB decision.

B. Laches.

Defendants contend that the doctrine of laches bars plaintiff’s suit because plaintiff should have known that defendants were using City Bank prior to 1960, but did not file suit until 1979.⁴ After reviewing the facts and the findings of the district court, we hold plaintiff not to be barred by laches in this case. When plaintiff first learned of defendants’ adoption of Citibanc as the name of its holding company in 1972, plaintiff wrote letters warning that it regarded the use of Citibanc as an infringement of plaintiff’s rights. Plaintiff sent several other letters over the next few years. In 1977, the defendant banks changed their names to include Citibanc. Two years later, plaintiff filed suit in New York.

In Environmental Defense Fund v. Alexander, 614 F.2d 474 (5th Cir.1980), cert. denied, 449 U.S. 919, 101 S.Ct. 316, 66 L.Ed.2d 146 (1980), the court set forth the elements of laches. The defendant must show: “(1) a delay in asserting a right or a claim; (2) that the delay was not excusable;” and (3) that the delay caused defendant undue prejudice. Id. at 478. In addition, in a trademark case, the plaintiff’s rights must be protectible. See Johanna Farms, Inc. v. Citrus Bowl, Inc., 468 F.Supp. 866, 881 (E.D.N.Y.1978). In other words, the owner of the mark must have expanded into the infringer’s territory such that an action can be maintained. See Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir.1959).

The test for determining laches is a flexible one: the court must examine both the amount of delay and the prejudice caused by that delay. In this case, plaintiff notified defendants of a possible infringement problem before defendants adopted Citibanc. Within a short period of time after plaintiff began widespread use of Citibank in 1976, defendants broadened their usage to Citibanc. During the entire period, defendants knew of plaintiff’s objections but nevertheless proceeded to enlarge their use of the term. These actions were taken “with the complete realization that the plaintiff disputed their use and did not intend to acquiesce in it.” Finance Co. of America v. Bankamerica Corp., 502 F.Supp. 593, 596-97 (D.Md.1980); see also Clinton Detergent Co. v. Procter & Gamble Co., 302 F.2d 745, 49 C.C.P.A. 1146 (1962). Defendants have not relied on the delay of plaintiffs in expanding their use of the mark; indeed, they have expanded their use while asserting their right to do so, in the face of plaintiff’s constant complaints. The district court correctly concluded that plaintiff has not been guilty of laches.

III. LIKELIHOOD OF CONFUSION

Defendants contend that the district court erred in finding a likelihood of confusion between Citibank and Citibanc. We disagree. In reaching its decision, the district court properly analyzed the following factors: the similarity of design, the similarity of product, type of mark at issue, identity of customers, similarity of advertising media, defendant’s intent, and actual confusion. See Safeway Stores, Inc. v. Safeway Discount Drugs, 675 F.2d 1160, 1164 (11th Cir.1982); Sun Banks of Florida v. Sun Fed. Savings & Loan Assoc., 651 F.2d 311, 314 (5th Cir.1981). The presumption of validity afforded plaintiff’s mark under the Lanham Act is not material to this decision. See American Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619 (5th Cir. 1963). In the absence of indications that the district court misapprehended the law, however, we review its conclusion under the clearly erroneous standard of Federal Rule of Civil Procedure 52(a). Safeway, 675 F.2d at 1163; Sun Banks, 651 F.2d at 314-15. The clearly erroneous standard applies here.

Of the multiple factors, we need not discuss the findings of the district court that plaintiff failed to prove actual confusion, that the similarity of advertising media factor weighs only slightly in favor of plaintiffs, that the identity of service facilities and customers is not dispositive, and that the marks are of virtually identical design.⁵ We have carefully reviewed these findings and conclude that the district court reached the proper result in each instance.

Defendants contend that the district court erred by according too much weight to plaintiff’s mark after finding it “suggestive, ... not ... coined or ... arbitrary ..., and thus comparatively weak .... ” Slip op. at 50. The district court found Citibank more distinctive than City Bank, but weaker than “Sun Bank,” the mark at issue in the Sun Banks case. Defendants argue that, since the mark in Sun Banks was fatally weak, Citibank must also be fatally weak. We disagree with this reading of the case. In Sun Banks, there was substantial evidence of third party use, and the defendant’s mark, “Sun Federal Savings & Loan,” was much less similar to Sun Bank than Citibank is to Citibanc. See 651 F.2d at 313-17; see also Safeway, 675 F.2d at 1165. Defendants argue that the district court failed to consider the numerous usages of City Bank by various banks, but we think the district court correctly noted that Citibank is stronger than, and different from, City Bank. We need not consider whether the district court intended to characterize Citibank as very weak, or simply weak relative to an arbitrary mark. The test is a multiple factor test, and the mark is certainly strong enough, when combined with the other factors, to support the district court’s decision.

Defendants next contend that the district court erred in relying on the timing of the defendants’ adoption of widespread use of Citibanc in finding an intent to capitalize on plaintiff’s mark. The district court did not expressly make such a finding. The court stated that “there is no evidence, other than that, if any, which can be inferred from the similarity of the names, that defendants have intended to trade upon plaintiff’s good will.” Slip op. at 22. The court nevertheless indicated that this factor should be “balanced in the plaintiff’s favor” because “an inference can be raised of an intent to cause confusion.” Slip op. at 53. The district court could properly draw such an inference, and, in weighing the factors, properly balanced this factor with the other factors. The key aspect of this factor is the tendency to show confusion; this is adequately demonstrated by the similarity of the names even without direct evidence of intent. The opinion demonstrates that the district court analyzed the factors with this in mind.

Finally, defendants argue that the district court erred in finding that the plaintiff and defendants offer similar services. The district court noted the obvious similarity of services and correctly realized that direct competition is not required to prove confusion. See Safeway, 675 F.2d at 1166; Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609 (7th Cir.1965). In this case, both parties are banks, and this adds substantially to the likelihood of confusion. The danger of confusion that would compromise plaintiff’s reputation exists even though the parties may not directly compete for deposit customers. See J. McCarthy, Trademarks & Unfair Competition, § 26.6. at 213-17. In addition, there is evidence that plaintiff and defendants compete in the areas of credit card sales and loans. Thus, the district court properly afforded substantial weight to this factor.

We have carefully weighed the factors and find no error in the district court’s conclusions as to confusion.

The judgment is

AFFIRMED.

1 . We will refer collectively to all defendants as Citibanc.

2 . This is true even if, as defendants contend, actual fraud need not be shown to cancel the service mark under 15 U.S.C. § 1120 (1976). Thus, we need not decide the applicability of that section to the case before us.

3 . Because we find Citibank not to be descriptive or generic, we need not address plaintiffs contention that section 33(b) of the Act prevents defendants from raising this claim.

4 . This suit was brought in New York and dismissed for lack of personal jurisdiction. Plaintiff subsequently filed this action in Alabama.

5 . The respective marks are obviously very similar.