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.