Citigroup Gets First Loss In Trademark Suit Against AT&T For Saying 'Thanks'

from the you're-welcome dept

A couple of months back, I brought to you a trademark suit initiated by Citigroup against AT&T that amost perfectly distilled both how ridiculously litigious trademark law has become and exactly how facepalm-inducingly lax the standards for trademark approval are with our friends over at the USPTO. The summary of the lawsuit can be described thusly: Citigroup has sued AT&T because the latter has branded messaging that says "thanks" and "thank you," and Citigroup has a trademark on the term "thankyou." And if your forehead hasn't smacked your desk yet, you have a stronger constitution than this author.

Included within Citigroup's hilarious filing was a request for an injunction by the court barring AT&T from continuing any of this gratitude towards its customers over the immense harm it was doing to the bank. Well, the court has ruled on that request by refusing to issue the injunction, all while patiently laying out within the court document all of the reasons why the court will almost certainly eventually dismiss this suit entirely.

U.S. District Judge Katherine Forrest was perhaps politer to Citigroup than expected. Instead of just saying, “No, you cannot lay claim to the word ‘thanks,’ it is part of civil conversation, and you can’t own it. Next case,” Forrest actually took time to explain why Citigroup can’t own the word “thanks” and “thank you.” In a 30-page decision, she explained to Citigroup that “the law does not allow one company to own the word ‘thanks.'”

Within the filing itself (pdf), Forrest goes on in a point-by-point and entirely too patient exposé on how little evidence there is for any customer confusion, why a company simply saying thank you to its customers doesn't warrant an injunction, and even details by color, font and size the differences between the messaging between the two companies. And, while the court takes pains within the document to note that the ruling on the injunction is not the place to rule on wider questions of the validity of the trademark as a whole or to make full determinations as to the likelihood of customer confusion, passages such as the following should give Citigroup a hint of what it's up against.

AT&T has advanced evidence indicating that, both before Citigroup first began using its THANKYOU mark and since that time, there are and have been dozens upon dozens of goods, services, and entities that made use of variations on the words “thanks” and “thank you,” including by registering their marks with state and federal registers. (ECF No. 38 ¶¶ 35-43.) A number of these are explicitly registered as loyalty or reward programs. (See id.) Such evidence undermines the argument for distinctiveness. Estee Lauder, 108 F.3d at 1511. Indeed, Citigroup acknowledged that other corporations made use of the “common term” THANK YOU in its trademark prosecution, but argued at the time that consumers “can readily distinguish between such marks without confusion.” (ECF No. 39 Exh. 2 at 4.)

The present evidentiary record does not permit the Court to draw firm conclusions regarding acquired distinctiveness. Citigroup’s loyalty programs are well-established, but seems to exist in a marketplace in which names similar to the THANKYOU marks are used by other producers, thus undercutting their distinctiveness.

The court goes on to explain the difference between the telecom and banking industries to Citigroup, too, as well as to remind it that just because the bank did some co-branding with AT&T in the past, the fact that AT&T plastered its name and logo all over the "thanks" branding in question doesn't suddenly not differentiate the originator of the message for the consuming public.

And if that feels like entirely too much effort to have gone into a single ruling within a broader scope of a trademark suit that is essentially over the ownership of the term "thank you" for business purposes, well, you're not alone. But it seems like we'll have to wait a bit longer for the full ruling and, hopefully, the eventual disbanding of Citigroup's insane "thankyou" trademark entirely.

Filed Under: injunction, thank you, thanks, trademark
Companies: at&t, citigroup


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  • identicon
    Spica, 17 Aug 2016 @ 4:34am

    Disbanding

    ... hopefully, the eventual disbanding of Citigroup's insane "thankyou" trademark entirely.

    How about disbanding the USPTO? They seem to be the source of a lot of the problem.

    Thank you.
    (please don't sue me)

    reply to this | link to this | view in chronology ]

  • identicon
    David, 17 Aug 2016 @ 4:41am

    AT&T's real nemesis

    I expect AT&T to be in much deeper trouble for their "Thank you" operation by whoever currently holds the patent on sarcasm.

    reply to this | link to this | view in chronology ]

  • icon
    TRX (profile), 17 Aug 2016 @ 5:30am

    I don't necessarily blame the lawyers; they're guns for hire, no matter how stupid their clients are.

    But the people who filed the suit... it's not something one executive can do on his own. Probably, not even just one board or committee. And then their own in-house legal counsel either went along with it or were overridden. I figure at least a dozen very senior people would have been needed.

    Things like this tend not to be one problem; they're the result of a cascade of problems caused by an institutional culture of "stupid."

    The thing that amazes me is not that some companies finally go under, but that they last as long as they do.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 17 Aug 2016 @ 5:43am

      Re:

      I don't necessarily blame the lawyers; they're guns for hire, no matter how stupid their clients are.

      A lawyer should give their clients advice about the law, but then they make less money if they give accurate advice, so their is a conflict between doing their job as lawyers and making money.

      reply to this | link to this | view in chronology ]

      • icon
        Tanner Andrews (profile), 23 Aug 2016 @ 6:00am

        Re: Re:

        they make less money if they give accurate advice

        That conflict was resolved long ago. The lawyer's duty is to the client. Lawyers are expected to warn clients that proposed actions are losers.

        Also, however, they should distinguish sure losers from likely losers. There may be some reason to fight where loss is likely but not certain.

        reply to this | link to this | view in chronology ]

    • icon
      JoeCool (profile), 17 Aug 2016 @ 10:38am

      Re:

      I DO blame the lawyers. Look at the problems in society today and there's a team of lawyers at the root of every one. That combined with business schools teaching "greed is good" and "everything must be owned" and you can explain every ill seen in the last couple decades.

      reply to this | link to this | view in chronology ]

  • identicon
    Mark Wing, 17 Aug 2016 @ 5:31am

    Everyone wins when two awful companies turn on each other.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 17 Aug 2016 @ 6:23am

      Re:

      Everyone except the employees, shareholders, pensioners, others in the community and sometimes the taxpayers.

      reply to this | link to this | view in chronology ]

    • icon
      MDT (profile), 17 Aug 2016 @ 6:29am

      In a Perfect World

      This would be litigated for a decade, taking 4 or 5 years at the district level, then two years for an appeal, then the supreme court would get involved.

      After 10 years, the Supreme court would remand it back to the circuit court, who'd then take a few months, and remand it back to the district court.

      The district court would then spend two years retrying it.

      The appeal would then go to the circuit, then to the supremem court, who'd finally dismiss the case with prejudice. Then the court would remand back to the circuit as to whether both sides should be sanctioned for conduct in the case and wasting the courts time. Also considered would be sanctions against the lawyers for failing to perform their duty to their clients.

      This would then wend it's way through the courts for a decade, ending up with both companies being fined another 100 million for wasting the courts time on frivolous lawsuits. The lawyers on both sides would be sanctioned for the entireity of their ill-gotten gains, and be referred to the BAR for disciplinary action, and eventually disbarred.

      The final result being to have spent hundreds of millions on each side to litigate this case, the lawyers ending up disbarred and unenriched, and the windfall going to the court to pay for additional judges to work on the backlog created by stupid lawsuits like this one.

      reply to this | link to this | view in chronology ]

      • icon
        John85851 (profile), 17 Aug 2016 @ 6:53am

        Re: In a Perfect World

        Yes, but who pays for all these filings? The companies aren't going to use their own profits: they'll raise the fees they charge customers or they'll make up new fees. I can easily see a new line item on the AT&T bill: "Mandatory legal recovery fee for defending 'thank you': $10 per customer".

        reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Aug 2016 @ 7:02am

    What about attorney fees?

    How is Citigroup not getting ordered to pay attorney fees for AT&T? Seriously, this lawsuit is so baseless it should just be laughed out of court, and Citigroup made an example of for so blatantly trying to be a 'trademark troll'.

    While AT&T has plenty of money to spare, imagine how much such a frivolous lawsuit could ruin a small business even if they win.

    reply to this | link to this | view in chronology ]

    • icon
      James Burkhardt (profile), 17 Aug 2016 @ 9:11am

      Re: What about attorney fees?

      Mainly because it is too early for that motion. First there is the injunction as part of the initial filing, then the motion to dismiss, THEN the motion for attorney's fees. And that's assuming the obvious dismissal occurs. You cant file for attorney's fees before the case is over.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Aug 2016 @ 8:01am

    This is how citigroup uses taxpayer dollars? I seem to remember them standing in line for bailout money from our ever benevolent government. To big to fail indeed. AT&T smells ripe to me also, let us hope that people open their eyes and see these nefarious gangster organizations for what they are, organized criminals.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Aug 2016 @ 8:08am

    Consumer Advocate: "Did they thank you?"
    Consumer: "Yes they did, but I just really wish I could figure out why that it is my butt hurts."

    reply to this | link to this | view in chronology ]

  • icon
    Anonymous Anonymous Coward (profile), 17 Aug 2016 @ 9:03am

    Commonality in the real world

    Xerox lost their trademark when the term became synonymous with making a copy. This seems to be the reverse, the words Thanks and Thank You were commonplace to begin with, and attempting to acquire trademark over those words ignores the commonality.

    The USPTO should be ashamed of themselves for not tossing the application in the round file to begin with.

    reply to this | link to this | view in chronology ]

    • identicon
      Elfen Fud, 17 Aug 2016 @ 10:06am

      Re: Commonality in the real world

      "Xerox lost their trademark when the term became synonymous with making a copy."

      No, Xerox has not lost their trademark any more than Coke has, their lawyers still send nasty letters objecting to generic use. Presumably the owners of "dumpster", "memory stick", "plexiglass", "ping pong", "superglue", "velcro" and "vasoline" do the same.

      On the other hand, "heroin", "aspirin" (in the US), "escalator", "dry ice", "trampoline", "videotape", "linoleum" and "thermos" all met that fate.

      "Thank you" should never have been issued. That's what happens when the USPTO gets paid for issuing, not for rejecting.

      reply to this | link to this | view in chronology ]

  • identicon
    David, 17 Aug 2016 @ 12:05pm

    Who would have thought:

    "Thanks a million" is not a price tag.

    reply to this | link to this | view in chronology ]


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