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.
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Filed Under: injunction, thank you, thanks, trademark
Companies: at&t, citigroup
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Disbanding
How about disbanding the USPTO? They seem to be the source of a lot of the problem.
Thank you.
(please don't sue me)
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AT&T's real nemesis
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Re: AT&T's real nemesis
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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.
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Re:
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.
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Re: Re:
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.
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In a Perfect World
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.
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Re: In a Perfect World
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What about attorney fees?
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.
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Re: What about attorney fees?
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Consumer: "Yes they did, but I just really wish I could figure out why that it is my butt hurts."
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Commonality in the real world
The USPTO should be ashamed of themselves for not tossing the application in the round file to begin with.
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Re: Commonality in the real world
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.
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Who would have thought:
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