And Just Like That, The Dumbest Trademark Suit Over Saying 'Thank You' Disappears

from the you're-welcome dept

It is with mostly pleasure, but a little bit of sadness, that I am here to inform you, dear reader, that the idiotic trademark lawsuit brought by Citigroup against AT&T because it dared to say "thank you" to its customers is dead. Yes, what started only a couple of months ago as an unintentional test to see just how far a large corporation could twist trademark law out of its useful intentions has been dropped by both parties with prejudice, meaning that no further legal action can be taken on the matter.

At issue was AT&T including the phrase "thank you" in some of its messaging and branding. Citigroup, as it turns out, somehow got the USPTO to approve a trademark for the phrase "thankyou" and declared that, largely because the two companies had done some co-branding work in the past, customers might be confused by an AT&T ad thanking them for their business into thinking that it has something to do with Citigroup. I read the argument Citigroup made in its filing as to why this confusion was likely, but my brain came to a screeching halt every few sentences, distracted by questions like, "How much can a bank's lawyers drink during the day?" and "Precisely how many peyote buttons would I have to swallow before 'thank you' equalled 'Citigroup' in my addled mind?"

Yet the end of this lawsuit was easily predicted after the court refused Citigroup's initial request for an injunction against AT&T. That court opinion went further in explaining to Citigroup the flimsy nature of its position than it had to, almost as a warning not to pursue this any further. And, this week, the banking company relented.

Citigroup Inc (C.N) and AT&T Inc (T.N) have ended a court battle over whether the "AT&T thanks" customer loyalty program infringed Citigroup's trademark in the phrase "thankyou." The resolution may help preserve a relationship between Citigroup and AT&T dating to 1998 that includes 1.7 million U.S. customers with co-branded credit cards.

"We have decided not to pursue this matter any further and look forward to continuing to work with AT&T," Citigroup spokeswoman Jennifer Bombardier said in a statement.

I'm sure AT&T appreciates Citigroup dropping the suit, but it's probably searching for an allowable phrase to express that kind of gratitude. What this may have more to do with is AT&T's defense that basically consisted of pointing out the ridiculousness of a single company being able to trademark a common phrase like "thank you," or iterations of it, for any category of anything ever. The end of the suit likely means the end of AT&T's challenge to the trademark, which is unfortunate.

We'll have to see if Citigroup has learned its lesson, or if it will choose to bring legal action against any other thankful companies in the future.

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

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

Citigroup Sues AT&T For Saying 'Thanks' To Customers

from the you're-welcome dept

Whenver we discuss a particularly egregious case of trademark abuse, usually centered around the trademarking of some insanely common word or phrase, there's always at least one instance of "that joke" in the comments. You know the joke I'm talking about: well, I'll just trademark X and sue everyone, where X=super-common word or phrase. For example: "I'll just trademark "trademark" and sue anyone who uses a trademark!", or, "I'll just trademark "the" and sue everyone who uses it!" These jokes play on the common problem of generic terms being granted trademarks, but of course they are examples so ridiculous that it couldn't happen for those specific words and terms. Still, to our lovely commenters, we say, "Thank you."

Or not, because it appears Citigroup has a trademark on "THANKYOU" and is currently using it to sue AT&T for using "Thanks".

Who knew? Banking giant Citigroup has trademarked "THANKYOU" and is now suing technology giant AT&T for how it says thanks to its own loyal customers. This is "unlawful conduct" amounting to wanton trademark infringement, Citigroup claims in its federal lawsuit.

You can close your calendar app on your phone down, it isnt April 1st, and this ain't no joke. The filing by Citigroup is very real and hilarious in its content and claims. First, the filing establishes just how connected "THANKYOU" is to Citigroup.

For many years, Citigroup has used trademarks consisting of and/or containing the term THANKYOU, including THANKYOU, CITI THANKYOU, CITIBUSINESS THANKYOU. THANKYOU FROM CITI, and THANKYOU YOUR WAY, in connection with a variety of customer loyalty, reward, incentive, and redemption programs (collectively, the “THANKYOU Marks”). As a result of Citigroup’s longstanding, extensive, and widespread use, marketing, and promotion of its THANKYOU Marks and services, Citigroup’s THANKYOU Marks are widely recognized by the general consuming public as a designation of source for Citigroup’s high quality financial services and customer loyalty, reward, incentive, and redemption programs.

In other words, everyone knows that when a business says "thank you" it's talking about Citigroup loyalty rewards. Duh. As per usual, the first folks to blame over this idiocy are at the USPTO, which granted a trademark on the term "THANKYOU". Why would you do that, USPTO? Have you lost complete control over your mental faculties? There was literally zero chance that this exact kind of dispute wouldn't be raised.

Which doesn't mean we can't point out that Citigroup is being an asshat here. You're probably thinking that there's no way Citigroup is actually suing AT&T for being gracious in its branding, but you'd be exactly wrong. Again, from the filing:

Despite actual knowledge of Citigroup’s substantial use of and exclusive rights in the THANKYOU Marks, Citigroup’s use of the marks in connection with AT&T co-branded credit cards, and Citigroup’s concerns regarding AT&T’s proposed trademarks, AT&T launched a customer loyalty program under the trademarks “thanks” and “AT&T thanks” on or about June 2, 2016. 4. AT&T’s use of the “thanks” and “AT&T thanks” trademarks is likely to cause consumer confusion and constitutes trademark infringement, false designation of origin, and unfair competition in violation of Citigroup’s rights. 5. Citigroup therefore seeks to enjoin AT&T’s infringing conduct and to recover damages based on the injury AT&T’s conduct has caused to Citigroup as well as AT&T’s unjust enrichment.

What. The. Hell. The notion that the use of the term "AT&T Thanks" will cause confusion for the customer is so blatantly insane that it's hard to know where to begin. I mean, it's got "AT&T" right there in the words, Citigroup. As for trademarking "THANKYOU" and suing over the use of the word "Thanks"? Hell no. There's no way that should have ever been allowed and I'd be shocked if AT&T doesn't immediately petition to have the trademarked expunged. And I'd be shocked if that petition wasn't approved with haste.

But then again, it got approved in the first place. Than-, er, great job, USPTO.

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

New Year's Message: Optimism On The Cusp Of Big Changes

from the make-it-so dept

While Techdirt started back in 1997 (yikes), since 2008 I've had an end of the year tradition in which I use the final post of the year to reflect a bit more generally on the topic of optimism. It kicked off after I received some comments from people questioning how I didn't go crazy after writing about all of these negative things -- and I noted that I'm actually quite optimistic and happy. The frustration comes from all of the efforts to hold back the pace of progress, but I'm quite excited about all the progress that is happening. In 2009, I focused more on the power of creativity and innovation, and followed that up in 2010 by noting that innovation can help turn pessimism to optimism. In 2011, I pointed out that we could then take that innovation and optimism and finally start to make a real difference, because the power was now in our hands. That turned out to be prescient, because 2012 was a year where we started to see real change, as people spoke up and actually made a huge difference around things like SOPA and ACTA.

For this year, that trend continues in a big way. The accomplishments of the past have only resulted in continued pressure to change things for the better in the future. The story of the year, without question, is the revelations about the surveillance state (thank you Ed Snowden), a story that is still just beginning, but has already had tremendous impact around the globe and will continue to drive efforts towards real, lasting and important changes. It's interesting to see that the infrastructure that came together around SOPA starting in 2011 is continuing to operate today on issues related to privacy and surveillance. Yes, there's a big fight ahead, and it may not go perfectly (nothing ever does), but to suggest that change is not coming is naive in the extreme.

This kind of change is not just possible, it's becoming probable. In the past, it was nearly impossible for the public and a loose coalition of folks nowhere near the centers of power to effect change. But that's been altered in a big, big way over the past few years, and it's only going to continue. It's easy to be cynical about all of this, but we're already seeing the beginnings of change and it will continue so long as people continue to speak out, speak up and push for basic freedoms and rights.

And, of course, we're seeing similar things happen beyond the issue of surveillance, in other areas that we normally talk about. After years of pushing copyright law to be ever expanded, Congress has now started a (long) process towards comprehensive copyright reform, in which it's clear they're paying attention to what the wider public thinks, rather than just focusing on what one legacy industry thinks. Again, this is the earliest stage of this process, but just the fact that Congress is open to comprehensive reform -- something most thought to be impossible just a few months ago -- is a sign of how far we've come.

Similarly, on the issue of patent reform, Congress is poised to pass significant legislation to try to limit patent trolling. The legislation doesn't go nearly far enough, but a year ago it was laughable to think that Congress would even take up the issue, since it had passed (basically useless) patent reform in 2011 and pretended that it had solved all of the problems. The fact that Congress was willing to go back and revisit the issue so quickly -- and this time to actually look at the problems -- is a sign that when people really speak out about these problems, it is possible to create change. There's still more to be done, but things are moving forward.

Yes, there's much to be cynical about. And there is tremendous frustration in bad laws, bad rulings, clueless policy, dumb decisions and lawsuits. But if you go back just a few years and look at where we are today, you're being willfully blind if you haven't seen the somewhat astounding progress. Two years ago, you'd be laughed at if you said that at the close of 2013 we'd be talking about significant reforms to surveillance, copyright and patents. Yet we're right on the cusp of all of those things.

That's an amazing statement of the power to create change in important ways.

We can and should be frustrated that this change happens as slowly as it does, and at the efforts to dilute or limit the change. We should be furious at the steps backwards that inevitably happen in this process. But we should be energized by the power to create change that we've seen over the past few years, much of it driven by large groups of people gathering together and speaking out. The amazing ability of the internet to bring together and amplify those voices and to drive home the message that these changes aren't just desired, but necessary, should not be discounted.

2014 is going to be quite an interesting year in so many ways, and each and every one of you should pat yourselves on the back for helping to get us this far... while gearing up to continue the fight.

Once again, I want to put forth a massive thank you to everyone who is a part of the Techdirt community -- whether you comment, lurk, read, share, submit stories, discuss elsewhere, tell others about us or just drop in occasionally. We even appreciate those of you who feel it's your job to disagree with nearly everything we write. For many years we've pointed out what an amazing community this is. It challenges me to think through a variety of issues each and every day in new and different ways.

We're looking forward to 2014 and additional efforts we're making to do even more for the community here.

I've been writing here for over 16 years and it remains an absolute joy and pleasure every day to share this space with all of you, to learn from you and to discuss and debate with you. You continue to inspire me, each and every day, to see what we can do not just to make this a better place for the community, but to look at ways that we might, in whatever little ways we can, make this a better world for everyone. Thank you again, for being a part of this effort.

Filed Under: change, copyright, new year's message, optimism, patents, progress, surveillance, thank you

Thank Twitter For Standing Up For User Rights

from the they-earned-it dept

We recently wrote about Twitter's decision to stand up for a user in court, fighting against a court ruling that said that a user has no proprietary interest in their own tweets and info, such that those users cannot contest a government attempt to subpoena information from Twitter. This is not the first time that Twitter has aggressively stood up for its users' rights against government excess -- in a world where that's quite rare. When the government comes calling, most companies roll right over. In response to this, the folks over at Fight for the Future have put together a petition page, asking people to sign up to thank Twitter. If they get 50,000 people to sign, they'll present Twitter with a medal for defending the internet (these medals are awesome).

Given that internet petitions are often done in protest of something or against something, I really like this idea of effectively getting people to sign on for something positive and celebrate a company that does its best to protect the interests of its users. If you agree, head on over and sign up to thank Twitter.

Filed Under: medal, petition, subpoena, thank you
Companies: twitter