Citigroup Inc.v.Capital City Bank Group, Inc.

Trademark Trial and Appeal Board

Feb 16, 2010

No. 91177415 (T.T.A.B. Feb. 16, 2010)

Hearing: Mailed:
October 14, 2009 February 16, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Citigroup Inc.
v.
Capital City Bank Group, Inc.
_____

Opposition No. 91177415
to application Serial No. 78906010
filed on June 12, 2006

to application Serial No. 78909113
filed on June 15, 2006

to application Serial No. 78930103
filed on July 14, 2006

to application Serial No. 78934941
filed on July 21, 2006
_____

Kenneth A. Plevan of Skadden, Arps, Slate, Meagher & Flom
LLP for Citigroup Inc.

Joseph W. Berenato of Berenato, White & Stavish, LLC for
Capital City Bank Group, Inc.
______

Before Hairston, Rogers and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Capital City Bank Group, Inc. (“applicant”) filed the
following applications:
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91177415
2
1. A use-based application on the Principal Register
for the mark CAPITAL CITY BANK, in standard character form,
for the following services:
Banking services; credit and cash card
services; electronic payment, namely,
electronic processing and transmission
of bill payment data; brokerage and
administration services in the field of
securities, namely, mutual funds, stocks
and bonds, annuities, tax advantaged
securities, money market funds, self
directed retirement accounts, including
IRA portfolio management, 401(k)
portfolio management, simply (sic) IRA
and Roth portfolio management; brokerage
of life insurance and long term care
insurance; mortgage banking services,
namely, origination, acquisition,
servicing, securitization and brokerage
of mortgage loans; home equity loans;
financing services; commercial and
consumer lending services; financial
information provided by electronic
means; real estate and mortgage
brokerage services; estate trust
management; estate planning;
administration of employee pension
plans; administration services in the
field of banking, namely, correspondent
services, data process, and account
servicing, in Class 36.1

2. An intent-to-use application on the Principal
Register for the mark CAPITAL CITY BANK INVESTMENTS, in
standard character form, for the following services:
Brokerage and administration services in
the fields of securities, namely, mutual
funds, stocks and bonds, annuities, tax
advantaged securities, money market

1 Serial No. 78906010, filed June 12, 2006. Applicant claimed
January 1, 1996 as its date of first use of the mark anywhere and
January 1, 2006 as its date of first use of the mark in commerce.
Applicant disclaimed the exclusive right to use the word “Bank.”
Opposition No. 91177415
3
funds, and self directed retirement
accounts, including IRA portfolio
management, 401(k) portfolio management,
Simple IRA, and Roth IRA portfolio
management; brokerage of life insurance
and long-term care insurance, in Class
36.2

3. An intent-to-use application on the Principal
Register for the mark CAPITAL CITY BANK GROWING BUSINESS, in
standard character form, for “banking services; online
banking services,” in Class 36.3
4. An intent-to-use application on the Principal
Register for the mark CAPITAL CITY BANC INVESTMENTS, in
standard character form, for the following services:
Brokerage and administration services in
the fields of securities, namely, mutual
funds, stocks and bonds, annuities, tax
advantaged securities, money market
funds, and self directed retirement
accounts, including IRA portfolio
management, 401(k) portfolio management,
Simple IRA, and Roth IRA portfolio
management; brokerage of life insurance
and long-term care insurance, in Class
36.4

In each application, applicant claimed ownership of the
three registrations set forth below for banking services in
Class 36:

2 Serial No. 78909113, filed June 15, 2006. Applicant disclaimed
the exclusive right to use the words “Bank Investments.”
3 Serial No. 78930103, filed July 14, 2006. Applicant disclaimed
the exclusive right to use the word “Bank.”
4 Serial No. 78934941, filed July 21, 2006. Applicant disclaimed
the exclusive right to use the words “Banc Investments.”
Opposition No. 91177415
4
1. Registration No. 2007889 for the mark CAPITAL CITY
BANK and design, shown below.5

2. Registration No. 2165466 for the mark CAPITAL CITY
BANK and design, shown below.6

3. Registration No. 2283071 for the mark CAPITAL CITY
BANK ATM and design, shown below.7

5 Issued October 15, 1996; Sections 8 and 15 affidavits accepted
and acknowledged; renewed.
6 Issued June 16, 1998; Sections 8 and 15 affidavits accepted and
acknowledged; renewed. The drawing of the mark is lined for the
colors red and blue.
7 Issued October 5, 1999; Sections 8 and 15 affidavits accepted
and acknowledged; renewed.
Opposition No. 91177415
5
Citigroup Inc. (“opposer”) filed a notice of opposition
against the registration of applicant’s marks on the ground
of priority of use and likelihood of confusion pursuant to
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), and dilution pursuant to Section 43(c) of the
Trademark Act of 1946, 15 U.S.C. § 1125(c). Opposer alleged
that it is the owner of a famous family of CITIBANK service
marks for financial services, that opposer has registered
numerous CITIBANK marks, and that applicant’s marks so
resemble opposer’s CITIBANK marks that applicant’s marks are
likely to cause confusion with opposer’s marks and to dilute
the distinctiveness of the CITIBANK marks. Opposer
specifically alleged ownership of the following
registrations:
1. Registration No. 0691815 for the mark CITIBANK, in
typed drawing form, for “banking services,” in Class 36;8
2. Registration No. 1016844 for the mark CITIBANK, in
typed drawing form, for “periodical publications for inhouse
(sic) and public distribution concerning matters of interest
to employees, bankers, and to customers,” in Class 16;9
3. Registration No. 2402872 for the mark CITIBANK
EVERYTHING THAT COUNTS, in typed drawing form, for

8 Issued January 19, 1960; Sections 8 and 15 affidavits accepted
and acknowledged; second renewal.
9 Issued July 29, 1975; Sections 8 and 15 affidavits accepted and
acknowledged; second renewal.
Opposition No. 91177415
6
“financial services, namely, banking services,” in Class
36;10
4. Registration No. 2512302 for the mark CITIBANK
FAMILYTECH, in typed drawing form, for “charitable services,
namely, a program providing computers and computer skills to
students, families and teachers,” in Class 42;11 and,
5. Registration No. 3230656 for the mark CITIBANK
CLEAR CARD, in standard character form, for “promoting the
goods and services of others through credit card customer
incentive, loyalty and reward programs,” in Class 35.12
Applicant, in its answer, denied all of the allegations
in the notice of opposition and asserted laches as an
affirmative defense.
The opposition was fully briefed and an oral hearing
was held on October 14, 2009.
Preliminary Issue
Opposer alleged that “[t]he CITIBANK Marks became
famous prior to the date Applicant filed the applications.”
(Notice of Opposition ¶10). Paragraph No. 10 is sufficient
to state a dilution claim against the intent-to-use
applications. However, it does not properly state a
dilution claim against applicant’s use-based application

10 Issued November 7, 2000; Sections 8 and 15 affidavits accepted
and acknowledged.
11 Issued November 21, 2001; Sections 8 and 15 affidavits accepted
and acknowledged.
12 Issued April 17, 2007.
Opposition No. 91177415
7
because opposer did not allege that the “CITIBANK Marks”
became famous prior to applicant’s use of the mark CAPITAL
CITY BANK. Toro Co. v. ToroHead Inc., 561 USPQ2d 1164, 1174
n.9 (TTAB 2001) (“In a use-based application under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), the party
alleging fame must show that the mark had become famous
prior to the applicant’s use of the mark”). Section
43(c)(1) provides that “the owner of a famous mark … shall
be entitled to an injunction against another who, at any
time after the owner’s mark has become famous, commences use
of a mark or trade name in commerce that is likely to cause
dilution.” (Emphasis added). Because a date of first use
alleged in an application is subject to proof, a plaintiff
claiming dilution need not necessarily allege acquisition of
fame prior to the particular use date asserted in a use-
based application, but must allege acquisition of fame prior
to “the applicant’s use of the mark,” whenever that use may
be shown, at trial, to have occurred. In any event, because
applicant did not move to strike the dilution claim for
failure to state a claim and, in its brief, treated the
dilution claim as if it were properly pleaded, we deem the
dilution claim against the use-based application to have
been properly pleaded. In other words, we deem the dilution
claim to allege that opposer’s “CITIBANK Marks” became
Opposition No. 91177415
8
famous prior to applicant’s use of the mark CAPITAL CITY
BANK.
The technical distinction noted above between the
requirements for pleading dilution against use-based and
intent-to-use applications is, however, inconsequential in
this case, where the record shows that applicant began using
CAPITAL CITY BANK prior to the filing date of the intent-to-
use applications. Opposer’s dilution claim relates to
applicant’s use of the CAPITAL CITY BANK per se, and as a
portion of the various other applied-for marks. Therefore,
opposer must show that its marks became famous prior to
applicant’s use of CAPITAL CITY BANK, not merely prior to
the filing dates of the intent-to-use applications. In
other words, because applicant is relying on its use of
CAPITAL CITY BANK as a defense to opposer’s dilution claim,
applicant’s date of first use of CAPITAL CITY BANK, not the
filing dates of its intent-to-use applications, is the
operative date for determining the fame of opposer’s marks.
In this respect, a dilution claim is different from a
likelihood of confusion claim.
In defending against a likelihood of confusion claim
based on assertion of prior use of CAPITAL CITY BANK,
applicant would have to show that CAPITAL CITY BANK and the
marks in the intent-to-use applications are the same or
essentially the same marks. In contrast, in defending
Opposition No. 91177415
9
against the dilution claim, because the distinctiveness of
opposer’s CITIBANK marks is just as likely to be impaired by
applicant’s use of CAPITAL CITY BANK as it would be by
applicant’s proposed use of CAPITAL CITY BANK INVESTMENTS or
CAPITAL CITY BANK GROWING BUSINESS, applicant does not have
to show the marks to be the same or essentially the same.
Put another way, if applicant’s use of CAPITAL CITY BANK is
not likely to dilute opposer’s CITIBANK marks, then
applicant’s proposed use of CAPITAL CITY BANK in connection
with any other words and/or designs is not likely to dilute
opposer’s marks, and it does not matter whether the marks
are the same or essentially the same. Thus, in our
determination of the date by which opposer must establish
the acquisition of fame in its marks, opposer’s focus on
CAPITAL CITY BANK, with or without other words, as
assertedly diluting of opposer’s marks, effectively fixes
the date of first use of CAPITAL CITY BANK as the time by
which the fame of opposer’s mark must be found to exist.
See Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d
1002, 72 USPQ2d 1078, 1084 (9th Cir. 2004), cert. denied,
544 U.S. 974 (2005).
Because this case involves both a use-based application
and intent-to-use applications, as discussed above, opposer
has been on notice that it must prove that its mark became
famous prior to applicant’s first use of CAPITAL CITY BANK,
Opposition No. 91177415
10
a mark in use by applicant, and applicant was not required
to specifically plead use prior to opposer’s establishment
of fame. Moreover, as discussed below, we have found that
applicant may tack its use-based application for CAPITAL
CITY BANK onto its prior use of CAPITAL CITY BANK GROUP, to
establish its asserted priority date, because this issue was
tried by implied consent. In sum, for both likelihood of
confusion and dilution, opposer was on notice that it must
prove that its mark became famous prior to applicant’s first
use of CAPITAL CITY BANK and that applicant would be relying
on its use of CAPITAL CITY BANK GROUP.13
The Record
By rule, the record includes applicant’s application
files and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
following testimony:
A. Opposer’s testimony.
1. The testimony deposition of Mary Anne Villanueva,
opposer’s Vice President of Global Branding and Identity.

13 If only intent-to-use applications were at issue in this case,
applicant would have been required to plead as an affirmative
defense that it began using the CAPITAL CITY BANK portion of its
marks prior to the time that opposer’s marks became famous. Cf.
H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008)
(“Mere denial by applicant of opposer's allegation of priority of
use is sufficient to put opposer on notice that it must prove its
pleaded priority, but it is insufficient to put opposer on notice
that any priority opposer will attempt to prove will have to
predate the priority that applicant will attempt to prove through
tacking”).

Opposition No. 91177415
11
2. The testimony deposition of Anne Moses, opposer’s
Senior Counsel for the Technology and Intellectual Property
Group, with attached exhibits.
3. The testimony deposition of Anthony Michelini,
opposer’s Vice President of Global Consumer Insights, with
attached exhibits.
4. The testimony deposition of Marie Veltre,
opposer’s former Manager for Marketing, Advertising and
Communications, with attached exhibits.
B. Applicant’s testimony.
1. The testimony deposition of Brooke Hallock,
applicant’s Vice President and Director of Marketing, with
attached exhibits.
2. The testimony deposition of Joan Heffelbower, the
Senior Vice President and Chief Financial Officer of
Hastings City Bank, with attached exhibits.
3. The testimony deposition of Gregory K. Noren, Vice
President of Marketing for City Bank of Lynwood, with
attached exhibits.
4. The testimony deposition of Kirstin Pruitt, Senior
Vice President and General Counsel of Lake City Bank, with
attached exhibits.
5. The testimony deposition of Janess Sveet,
Assistant Vice President and Marketing Manager for Gate City
Bank, with attached exhibits.
Opposition No. 91177415
12
6. The testimony deposition of Flecia L. Braswell,
applicant’s Chief Brand Officer, with attached exhibits.
7. The declaration of William C. Schrot, a member of
the law firm representing applicant, with attached
exhibits.14
Standing
“Any person who believes that he would be damaged by
the registration of a mark upon the principal register . . .
may, file an opposition . . . stating the grounds therefor.”
Section 13 of the Trademark Act of 1946, 15 U.S.C.
§ 1063(a). See also Section 14 of the Trademark Act of
1946, 15 U.S.C. § 1064 in regard to cancellation
proceedings. Thus, a party has standing to oppose or
petition to cancel if it can demonstrate a real interest in
the proceeding. Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). “The
purpose in requiring standing is to prevent litigation where
there is no real controversy between the parties, where a
plaintiff, petitioner or opposer, is no more than an
intermeddler.” Id. To establish a reasonable basis for a
belief that one is damaged by the mark sought to be
registered, a plaintiff may assert a likelihood of confusion
which is not wholly without merit. Id.

14 The parties stipulated that applicant “may submit as testimony
evidence the Declaration of William C. Schrot … and the exhibits
attached thereto.”
Opposition No. 91177415
13
Anne Moses testified that opposer “officially made use”
of CITIBANK as a service mark in connection with banking
services in 195915 and it has since continuously made use of
the mark. This testimony is sufficient to demonstrate that
opposer has a real interest in this proceeding and,
therefore, has standing. Id.
Prior Registration Defense
With respect to opposer’s standing, applicant argued
that because it is the owner of three incontestable
registrations incorporating the term “Capital City Bank” for
banking services, opposer cannot be damaged by the
registration of the applications at issue.16 Applicant
correctly explained the basis for the defense as follows:
The laches defense, also known as the
prior registration defense, stems from
Morehouse Mfg. Corp. v. J. Strickland &
Co., 407 F.2d 881, 160 U.S.P.Q. 715
(C.C.P.A. 1969). “The prior
registration or Morehouse defense is an
equitable defense, to the effect that if
the opposer cannot be further injured
because there already exists an
injurious registration, the opposer
cannot object to an additional
registration that does not add to the
injury.” O-M Bread Inc. v. United
States Olympic Comm., 65 F3d 933, 938,
36 U.S.P.Q.2d 1041, 1045 (Fed. Cir.
1995).17

15 Moses Dep., pp. 24-25. Anne Moses documented the continuous
use of the CITIBANK mark in her deposition.
16 Applicant’s Brief, pp. 5-6 and 44-47.
17 Applicant’s Brief, p. 44 n.5.
Opposition No. 91177415
14
This defense applies where an applicant owns a prior
registration for essentially the same mark identifying
essentially the same goods or services that are the subject
of the proposed application. Morehouse Mfg. Corp. v. J.
Strickland & Co., 160 USPQ at 717; Green Spot (Thailand)
Ltd. v. Vitasoy International Holding Ltd., 86 USPQ2d 1283,
1285 (TTAB 2008).
“Insofar as the marks are concerned, the question in a
situation such as this is whether the registered marks are,
in fact, substantially the same marks so that they project
the same image and symbolize a single and continuing
commercial impression.” S & L Acquisition Co. v. Helen
Arpels Inc., 9 USPQ2d 1221, 1226 (TTAB 1987); see also O-M
Bread Inc. v. United States Olympic Committee, 65 F.3d 933,
36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (the prior and
proposed marks must be essentially the same). In other
words, a change that does not alter the distinctive
characteristics of a mark represents a continuity of
trademark rights. If the distinctive character of the mark
is not changed, the mark is, in effect the same and the
rights obtained by virtue of the earlier registration should
inure to the benefit of the pending application. See Humble
Oil & Refining Company v. Seksui Chemical Company Ltd. of
Japan, 165 USPQ 597, 603 (TTAB 1970).
Opposition No. 91177415
15
The applicability of the prior registration defense
depends upon whether the marks in the applications are
substantially the same as the registered marks. That
determination is based on applicant’s display of the term
“Capital City Bank” in its registered marks as shown below.

Opposer correctly notes that applicant focuses its
prior registration defense entirely on the term “Capital
City Bank” rather than the mark in its entirety.
[Applicant’s] design mark Registrations,
in addition to all featuring the Star
Logo, also imposed an additional, and
very material, constraint on
[applicant], namely that the words
“CAPITAL CITY” both appear on the same
line, and appear above (i.e., on a
different line than) “BANK.” This form
of registration presents the brand as
“CAPITAL CITY,” as opposed to a “CITY
BANK” brand with “CAPITAL” as a mere
financial descriptor. . . . There are no
such restrictions attendant to a word
mark registration [presented in standard
character form]. (Emphasis in the
original).18

Because the applications are in standard character
form, this means that applicant’s rights in the words,
specifically “Capital City Bank,” are not limited to any

18 Opposer’s Reply Brief, p. 4.
Opposition No. 91177415
16
special form; it encompasses all reasonable manners in which
the term “Capital City Bank” could be depicted. Fossil Inc.
v. Fossil Group, 49 USPQ2d 1451, 1454 (TTAB 1998). By way
of example, applicant theoretically could present “Capital
City Bank” as set forth below.
Capital
CITY BANK
On the other hand, the marks in applicant’s registrations
are limited to the display shown in the registration and do
not afford applicant rights in any other form. Id. We find
that the mark CAPITAL CITY BANK, in standard character form,
could create a different commercial impression than the mark
in applicant’s prior registrations. Accordingly, the marks
displayed in applicant’s registrations and applications do
not form the same and continuing commercial impression and,
therefore, are not essentially the same marks for purposes
of the prior registration defense.
Further, with the exception of the application for the
mark CAPITAL CITY BANK GROWING BUSINESS for “banking
services; online banking services” (Serial No. 78930103),
the services in applicant’s registered marks (“banking
services”) are not substantially identical to the services
in the applications. The recitation of services in
Application Serial No. 78906010 for the mark CAPITAL CITY
BANK includes, inter alia, electronic payment, namely,
Opposition No. 91177415
17
electronic processing and transmission of bill payment data;
brokerage and administration services in the field of
securities, namely, mutual funds, stocks and bonds,
annuities, tax advantaged securities, money market funds,
self directed retirement accounts, including IRA portfolio
management, 401(k) portfolio management, IRA and Roth
portfolio management; and brokerage of life insurance and
long term care insurance. The recitation of services for
Application Serial No. 78909113 for the mark CAPITAL CITY
BANK INVESTMENTS and Application Serial No. 78934941 for the
mark CAPITAL CITY BANC INVESTMENTS are for “brokerage and
administration services in the fields of securities, namely,
mutual funds, stocks and bonds, annuities, tax advantaged
securities, money market funds, and self directed retirement
accounts, including IRA portfolio management, 401(k)
portfolio management, Simple IRA, and Roth IRA portfolio
management; brokerage of life insurance and long-term care
insurance.” While all the activities in the applications
and registrations may fall under the broad umbrella of
financial services, the applications include services
different from the banking services listed in the
registrations.19

19 We note that the recitation of services in application Serial
No. 78906010 for the mark CAPITAL CITY BANK also includes
“banking services” as a separate and distinct service. This
belies applicant’s assertion that financial services are
substantially identical to banking services. If banking services
Opposition No. 91177415
18
Because the marks and services in applicant’s prior
registrations and pending applications are not essentially
the same, applicant’s prior registration defense is not
applicable.
Priority

A. Opposer’s individual pleaded registrations.
If an opposer introduces into evidence its pleaded
registrations, Section 2(d) priority is not an issue in such
a case. King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). Trademark Rule
2.122(d) provides the following methods for opposer to
introduce its pleaded registrations into evidence:
1. Opposer may attach to the notice of opposition
copies of the registrations prepared and issued by the
United States Patent and Trademark Office (“USPTO”) showing
both the current status and current title to the
registrations, or a current printout of information from the
electronic database records for the USPTO showing the
current status and title of the registrations.20
2. During its testimony period, opposer may file a
notice of reliance on copies of the registrations prepared

encompassed all financial services, there would be no need for
applicant to recite anything other than banking services.
Furthermore, there is no evidence in the record regarding the
relationship between banking services and financial services and
when banks expanded beyond traditional banking services and began
rendering other types of financial services.
20 Trademark Rule 2.122(d)(1).
Opposition No. 91177415
19
by the USPTO showing both the current status and current
title to the registrations;21 or a notice of reliance on a
current printout of information from the electronic database
records for the USPTO showing the current status and title
of the registrations.22
3. During its testimony period, opposer may introduce
registrations through the testimony of a witness by
appropriate identification.23 The witness must testify that
the registrations are still subsisting, and are owned by the
opposer. Cadence Industries Corp. v. Kerr, 225 USPQ 331,
332 n.2 (TTAB 1985) (no probative value where testimony
established opposer’s ownership of the registration, but not
the current status); Sheller-Globe Corp. V. Scott Paper Co.,
204 USPQ 329, 331 n.2 (TTAB 1979) (registration may be
introduced as an exhibit to the testimony of a witness shown
to have knowledge of the status and title of the
registration).
Opposer introduced its pleaded registrations into
evidence through the testimony of Anne Moses, opposer’s
Senior Counsel in the Technology and Intellectual Property
Group. Her testimony regarding the registrations raises two
issues. First, Ms. Moses did not expressly testify that the

21 Trademark Rule 2.122(d)(2).
22 Research In Motion Limited v. NBOR Corporation, 92 USPQ2d 1926,
1928 (TTAB 2009).
23 Trademark Rule 2.122(d)(2).
Opposition No. 91177415
20
registrations are owned by opposer and that they are
currently subsisting. Second, in addition to the pleaded
registrations, opposer, through Ms. Moses, introduced seven
additional registrations. The additional registrations are
set forth below.
1. Registration No. 0982066 for the mark CITICORP, in
typed drawing form, for inter alia the following services:
Consumer finance company services;
industrial loan company services;
factoring services; credit card
servicing and the purchasing and
servicing of consumer receivables
associated therewith; commercial
lending; servicing loans and extensions
of credit; real estate lending; mortgage
financing and mortgage servicing;
investment advisory and financial
advisory services; venture capital
investments; making equity and debt
investments in corporations or projects
designed primarily to promote community
welfare, in Class 36.24

2. Registration No. 1181467 for the mark CITI, in
typed drawing form, for the following services:
Financial services, namely, extending
consumer and industrial loans to others;
factoring services; credit card
servicing and the purchasing and
servicing of consumer receivables
associated therewith; commercial
lending; servicing loans and extensions
of credit; real estate lending; mortgage
financing and mortgage servicing;
investment advisory and financial

24 Moses Dep., Exhibit 7; issued April 9, 1974; Sections 8 and 15
affidavits accepted and acknowledged; second renewal.
Opposition No. 91177415
21
advisory services; providing venture
capital to others, in Class 36.25

3. Registration No. 1104470 for the mark CITI NEVER
SLEEPS, in typed drawing form, for “financial services –
namely, electronic banking services,” in Class 36.26
4. Registration No. 1048704 for the mark CITIBANK and
design, shown below, for “banking services,” in Class 36.27

5. Registration No. 2636299 for the mark CITIBANK and
design, shown below, for the following services:
Financial services; namely, banking;
credit card services; electronic credit
card transactions; commercial and
consumer lending and financing; real
estate and mortgage brokerage; trust,
estate, and fiduciary management,
planning and consulting; securities and
mutual fund investment; brokerage and
trading services; investment advisory
and consulting services; securities
brokerage and trading services;
providing secure financial transactions
in the nature of electronic cash
transactions; electronic credit card
transactions, electronic debit
transactions, electronic check
processing transactions and electronic
transmission of bill payment data via a
global computer network; insurance
services, namely, underwriting and
brokerage of property, casualty and life
insurance policies and annuity

25 Moses Dep., Exhibit 8; issued December 8, 1981; Sections 8 and
15 affidavits accepted and acknowledged; renewed.
26 Moses Dep., Exhibit 9; issued October 7, 1981; Sections 8 and
15 affidavits accepted and acknowledged; renewed.
27 Moses Dep., Exhibit 11; issued September 21, 1976; Sections 8
and 15 affidavits accepted and acknowledged; second renewal.
Opposition No. 91177415
22
contracts; providing financial news and
information via websites on a global
computer network, in Class 36.28

6. Registration No. 2245102 for the mark CITIBANK
CAMPUS, in typed drawing form, for “financial services,
namely, checking and savings accounts, loans, and credit
card services; financial consulting and information
services,” in Class 36.29
7. Registration No. 3155853 for the mark CITIBANK ON
CAMPUS, in standard character form, for the following
services:
Financial services, namely, checking and
saving accounts, credit card services,
loan services in the nature of loan
financing, student loan services and
temporary loans; financial consulting
and providing information in the field
of financial services, in Class 36.30

While Ms. Moses did not expressly testify regarding the
ownership and status of the registrations, we can infer a
claim that opposer is the owner of the registrations because
of the nature of the testimony. For example, Ms. Moses
testified that “Citibank is our oldest and most, I would

28 Moses Dep., Exhibit 12; issued October 15, 2002; Sections 8 and
15 affidavits accepted and acknowledged.
29 Moses Dep., Exhibit 13; issued May 11, 1999; Section 8
affidavit filed on November 11, 2005.
30 Moses Dep., Exhibit 17; issued October 17, 2006.
Opposition No. 91177415
23
say, famous brand, it’s the foundation off of which all of
the other Citi marks are based. . . . So Citi, I would say,
is our uber brand.”31
With respect to current status of the registrations,
opposer’s counsel said, “Now the, next series of exhibits,
Exhibits 10 – 17, I believe, are the currently registered
Citibank marks.”32 However, applicant did not contest
opposer’s ownership of the registrations, nor questioned
whether they were still in force. In fact, in its brief,
applicant acknowledged that “Citigroup lists several
registrations at page 7 of its Trial Brief”, without any
indication that it believed the registrations were not
properly of record.33 At page 7 of its brief, opposer
specifically referenced all five pleaded registrations and
four unpleaded registrations, as well as referencing
Exhibits 6 and 10-17 (pleaded and unpleaded registrations).
Accordingly, we treat the current status and title of the
registrations as having been stipulated, that the unpleaded
registrations have been tried by implied consent pursuant to
Fed. R. Civ. P. 15(b), and that the notice of opposition is
deemed amended to conform to the evidence.

31 Moses Dep., p. 23.
32 Moses Dep., p. 24. This is counsel’s statement, not the
testimony of the witness, and Ms. Moses did not affirm counsel’s
statement.
33 Applicant’s Brief, p. 10
Opposition No. 91177415
24
In view of the foregoing, priority vis-à-vis opposer’s
registrations is not an issue in this case. King Candy Co.
v. Eunice King’s Kitchen, Inc., 182 USPQ 108.
B. Opposer’s family of marks.
To establish a family of marks, opposer must prove
that, prior to applicant’s first use of its mark, opposer
established its family of marks. Blansett Pharmacal Co.,
Inc. v. Carmrick Laboratories Inc., 25 USPQ2d 1473, 1477
(TTAB 1992); Marion Laboratories v. Biochemical/Diagnostics,
6 USPQ2d 1215, 1218 (TTAB 1988); Plus Products v. Medical
Modalities Associates, Inc., 217 USPQ 464, 465 n.8 (TTAB
1983) (the family of marks doctrine is applicable “where a
plaintiff asserts that prior to defendant’s first use of its
mark in question, plaintiff established a family of marks
that share a certain characteristic”). With respect to the
applicability of the family of marks doctrine, we need to
determine whether opposer established its family of CITIBANK
marks prior to applicant’s use of CAPITAL CITY BANK.
1. Applicant’s use of CAPITAL CITY BANK.
Applicant was originally chartered as “Capital City
Bank” in 1895 and it operated as CAPITAL CITY BANK until
1945. Applicant was rechartered as CAPITAL CITY NATIONAL
BANK, a national banking association, in December 1945. The
CAPITAL CITY BANK GROUP was formed in 1975 as a holding
company for applicant’s different banking entities. Since
Opposition No. 91177415
25
the formation of the CAPITAL CITY BANK GROUP, applicant has
advertised the banking services of the individual banks
forming the “Capital City Bank Group” under the mark CAPITAL
CITY BANK GROUP.34 For example, the advertisement shown
below from the August 21, 1978 issue of the Tallahassee
Democrat is representative of applicant’s advertising
through 1995.35

In 1982, Capital City Bank Group, Inc. holding company
was formed. In 1995, all the banks in the Capital City Bank
Group became CAPITAL CITY BANK,36 and applicant began
promoting its services under that mark. For example, Ms.
Braswell identified the 1995 “marketing piece” set forth
below advertising applicant’s locations.37

34 Braswell Dep., p. 30. See also Braswell Exhibit 84. Exhibit
84 is applicant’s 1995 Annual Report containing a history of
applicant. Flecia Braswell testified that she had reviewed the
history and that it was accurate. (Braswell Dep., p. 96). See
also Braswell Exhibit 76, applicant’s website, with a history of
applicant, which Ms. Braswell testified that she had read and
that it was accurate. (Braswell Dep., p. 79).
35 Braswell Dep., Exhibit 71.
36 Braswell Dep., pp. 29-30, Exhibit 70 (Document No. 10590).
37 Braswell Dep., p. 34; Exhibit 70 (Document No. 10606).
Opposition No. 91177415
26

The first issue presented by applicant’s attempt to
rely on its use of CAPITAL CITY BANK GROUP to defeat
opposer’s family of marks claim is that applicant did not
plead as an affirmative defense use of CAPITAL CITY BANK
GROUP prior to opposer’s establishment of its family of
CITIBANK marks. Applicant’s mere denial that “Opposer was
and is the famous financial services company that owns a
famous family of CITIBANK service marks and trademarks”38 is
not sufficient to put opposer on notice that the date that
opposer will have to prove to establish its family of marks
will have to predate applicant’s first use of CAPITAL CITY
BANK GROUP, a mark that is not the same as the marks for
which registration is sought. Cf. H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d at 1720.
Because applicant may not rely on an unpleaded defense,
we must determine whether applicant’s attempt to tack its

38 Amended Notice of Opposition ¶1.
Opposition No. 91177415
27
use of CAPITAL CITY BANK onto CAPITAL CITY BANK GROUP was
tried by implied consent.
Implied consent to the trial of an
unpleaded issue can be found only where
the nonoffering party (1) raised no
objection to the introduction of the
issue, and (2) was fairly apprised that
the evidence was being offered in
support of the issue.

TBMP §507.03(b)(2nd ed. rev. 2004); see also H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d at 1721; Boise Cascade Corp. v.
Cascade Coach Co., 168 USPQ 795, 797 (TTAB 1970) (“Generally
speaking, there is an implied consent to contest an issue if
there is no objection to the introduction of evidence on the
unpleaded issue, as long as the adverse party was fairly
informed that the evidence went to the unpleaded issue”).
Opposer did not lodge an objection to any evidence or
testimony introduced by applicant, including the documents
introduced by Flecia Braswell to establish the use of
CAPITAL CITY BANK from the date it was established39 and her
testimony that “Capital City Bank Group was a well-known
entity in our community” since at least the late 70’s.40
Q. And did we ask you to look for
historical documents establishing
the use of Capital City Bank from
when the bank was established?

A. Yes.

Q. And did you look for those
documents?

39 Braswell Dep., p. 11.
40 Braswell Dep., p. 8.
Opposition No. 91177415
28
A. Yes.

Q. And you’ve produced them for use
today?

A. Yes.41

We find that opposer was fairly apprised that applicant
intended to prove that it had continually used CAPITAL CITY
BANK since the founding of applicant. As part of this
proffer of proof, applicant introduced exhibits chronicling
applicant’s historical use of CAPITAL CITY BANK including,
CAPITAL CITY BANK GROUP, as well as CAPITAL CITY NATIONAL
BANK. In view of the foregoing, we find that applicant’s
tacking of CAPITAL CITY BANK onto CAPITAL CITY BANK GROUP
was tried by implied consent in accordance with Fed.R.Civ.P.
15(b) and applicant’s amended answer is deemed amended to
conform to the evidence.
To establish its first use of CAPITAL CITY BANK through
its use of CAPITAL CITY BANK GROUP, “[t]he previously used
mark [CAPITAL CITY BANK GROUP] must be the legal equivalent
of the mark in question [CAPITAL CITY BANK] or
indistinguishable therefrom, and the consumer should
consider both as the same mark.” Van Dyne-Crotty, Inc. v.
Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed.
Cir. 1991). In other words, CAPITAL CITY BANK must create
the same, continuing commercial impression as CAPITAL CITY

41 Braswell Dep., p. 11.

Opposition No. 91177415
29
BANK GROUP. Ilco Corp. v. Ideal Security Hardware Corp.,
527 F.2d 1221, 188 USPQ 485, 487 (CCPA 1976).
CAPITAL CITY BANK GROUP and CAPITAL CITY BANK engender
the same continuing commercial impression. The word “group”
means “1. any collection or assemblage of persons or
things; aggregation: a group of protestors; a remarkable
group of paintings. 2. a number of persons or things
ranged or considered together as being related in some
way.”42 The commercial impression engendered by CAPITAL
CITY BANK GROUP is merely a collection of CAPITAL CITY
BANKS. The word “Group” adds nothing to the origin-
indicating significance of CAPITAL CITY BANK and, therefore,
CAPITAL CITY BANK and CAPITAL CITY BANK GROUP are
essentially the same marks. See American Security Bank v.
American Security and Trust Co., 571 F.2d 564, 197 USPQ 65,
66-67 (CCPA 1978) (AMERICAN SECURITY is the legal equivalent
to AMERICAN SECURITY BANK). In view of the foregoing, we
find that applicant may rely on its use of CAPITAL CITY BANK
GROUP to establish its priority date and that applicant has
been using CAPITAL CITY BANK GROUP since 1975, the year
CAPITAL CITY BANK GROUP was formed.

42 The Random House Dictionary of the English Language
(Unabridged), p. 844 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91177415
30
2. Opposer’s family of CITIBANK marks.
In its brief, opposer did not address when it
established its family of marks. The earliest evidence of
opposer promoting multiple “Citibank” marks together is a
November 13, 2000 press release.43 On this record,
applicant was using CAPITAL CITY BANK GROUP prior to the
earliest possible date on which opposer could be viewed as
having established a family of CITIBANK marks.44 In view
thereof, opposer has not established that it had a family of
marks prior to applicant’s first use of its mark.
Therefore, the likelihood of confusion analysis will be
based solely on the use of the individual marks in opposer’s
registrations.

Likelihood of Confusion

43 Moses Dep., Exhibit 33. Ms. Moses testified that she was aware
that press releases have been distributed and published through
the Internet and in print publications. (Moses Dep., p. 38).
44 Even if CAPITAL CITY BANK GROUP and CAPITAL CITY BANK are not
considered to be substantially the same, applicant’s use of
CAPITAL CITY BANK in 1995 still precedes opposer’s earliest
evidence of its family of CITIBANK marks. Moreover, consumers
will not perceive CAPITAL CITY BANK to be a member of the
CITIBANK family of marks. Opposer pled and argued that it has a
family of CITIBANK marks, not a family of “Citi” marks. Based on
the evidence of record, opposer’s family of marks is
characterized by the name CITIBANK as the first or only word of
the mark (e.g., CITIBANK CAMPUS, CITIBANK and Compass Rose
Design). Furthermore, the name CITIBANK is the combination of
the terms “Citi” and “Bank” with the letter “i” substituted for
the letter “y” in “City.” CAPITAL CITY BANK does not share the
characteristics of the CITIBANK family of marks because (1) it
starts with the word “Capital,” not CITIBANK, (2) “City Bank” is
Opposition No. 91177415
31
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s CITIBANK marks.

This du Pont factor requires us to consider the fame of
opposer’s marks. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,” by
widespread critical assessments and notice by independent
sources of the products identified by the marks, as well as

two words, not a compound word, and (3) applicant’s “City” is
Opposition No. 91177415
32
by the general reputation of the products and services.
Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-
1306 and 1309. Although raw numbers of product sales and
advertising expenses may have sufficed in the past to prove
fame of a mark, raw numbers alone may be misleading. Some
context in which to place raw statistics may be necessary
(e.g., the substantiality of the sales or advertising
figures for comparable types of products or services). Bose
Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
Opposer has made long and extensive use of the term
CITIBANK in one form or another since 1812. Formed in 1812
as City Bank of New York,45 opposer first began using the
name CITIBANK as its cable address as early as 1897.46
Customers shortened or abbreviated opposer’s previous formal
names (City Bank of New York, National City Bank and First
National City Bank) to CITIBANK or CITY BANK, and, in 1959,
opposer officially used CITIBANK as a service mark.47 Its
legal name was changed to CITIBANK, N.A. in 1976.48
An article in the March 1, 1976 “Business & Finance”
section of an unidentified newspaper reported that “[t]he
nation’s second largest commercial bank has announced an

spelled with a “y,” not an “i.”
45 Moses Dep., p. 15.
46 Moses Dep., p. 22; Exhibit 5.
47 Moses Dep. p. 21.
48 Moses Dep., p. 22.
Opposition No. 91177415
33
official name change to Citibank.”49 The article quoted
opposer’s president who explained that “the change came
because over its 164-year history customers preferred to
call the bank Citibank.”
Ms. Moses testified that by 1967, opposer had become
“the largest banking presence in the world.”50 An article
in the January 5, 1981 issue of New Yorker magazine referred
to opposer as “the second-largest bank in the world.”51 The
article also reports that “[by] the nature of its
undertakings, Citibank has a business interest in just about
everything that happens, militarily, politically, and
economically, almost everywhere in the world.”
An article in the April 12, 1982 issue of Barron’s
magazine referenced “the seismic role Citibank is widely
perceived to be playing” in the implementation of automated
teller machines.52 In noting how opposer has climbed from
third to number one among U.S. banks in earnings, the
Barron’s author stated the following:
Indeed, Citi’s public stature has less
to do with its financial performance
(which has been decidedly uneven over

49 Moses Dep., Exhibit 26. All of the articles referenced in this
decision are to show how the authors perceive opposer as set
forth in the articles, not that what the authors write is true.
50 Moses Dep., p. 16. We note that opposer’s Exhibit 24, an
article in the November 16, 1968 issue of Business Week, refers
to opposer as “the nation’s third largest bank.” We do not try
to reconcile how “the largest banking presence in the world” can
be “the nation’s third largest bank,” except to note that either
statistic implies a significant presence.
51 Moses Dep., p. 13; Exhibit 2.
52 Moses Dep., Exhibit 27.
Opposition No. 91177415
34
the last decade) than the perception of
it as the banking industry’s dauntless
pioneer.

A 1984 internal newsletter CITIBANK NEWS reported that
opposer had customers in all fifty states with relationships
with 11.7 million households or one out of seven households
in the United States.53
Ms. Moses testified that “[a]lmost on a daily basis
some part of Citigroup is mentioned in the press.”54 In
further support of opposer’s renown, Ms. Moses pointed out
that opposer was the subject of two parodies on Saturday
Night Live.55
In the regular course of business, opposer authorized
corporate image tracking studies to measure the brand
awareness of opposer’s CITIBANK mark.56 Anthony Michellini
testified that the corporate image tracking studies show
that, in 1983, CITIBANK had a 68% level of unaided awareness
that grew to 90-95 percent in the studies done in the
1990s.57 According to Mr. Michellini, this data shows that
since 1990, CITIBANK has been a famous mark.58 However,

53 Moses Dep., pp. 13-14; Exhibit 3.
54 Moses Dep., p. 34.
55 Moses Dep., pp. 39-40. No dates were provided.
56 Moses Dep., Exhibits 45-54; Michellini Dep., pp. 14-15.
57 Michellini Dep., pp. 13, 33-34. Unaided awareness is a
respondent’s unprompted response (e.g., in the financial field,
which brands come to mind?) (Michellini Dep., p. 13).
58 Michellini Dep., pp. 16, 32-34 and 38. Mr. Michellini used the
term “iconic” brand rather than famous mark. He defined an
“iconic brand” as one that is “known by . . . most people . . .
it would have very high awareness.” (Michellini Dep., p. 11).
Opposition No. 91177415
35
Moses testified that CITIBANK has been famous since at least
the early 1980s.59
The August 2001, 2002, 2003, and 2004 BusinessWeek
magazine brand valuation by its consultant Interbrand ranked
CITIBANK as the 13th most valuable brand with a brand value
estimated in excess of 13 billion dollars.60 In the
comments column in the 2001 evaluation, the author wrote the
following: “World’s biggest bank. The sun never sets on
Sandy Weil’s ever-expanding empire.”
MillwardBrown ranked CITIBANK as the ninth most
valuable brand with a value in excess of $31 billion in its
2006 BrandZ “Top 100 Brand Ranking.”61 MillwardBrown is an
independent third party that conducts brand evaluations on
their own behalf and then sells the results.62 In the
financial sector, CITIBANK is the highest ranking brand.
The MillwardBrown Optimor 2008 and 2009 BrandZ studies
demonstrate a high level of brand awareness for the CITIBANK
mark.63 The 2008 report shows that “Citibank, Chase and
BofA, Bank of America, are in the top tier of banking brands

59 Moses Dep., p. 29.
60 Moses Dep., Exhibits 55-58.
61 Michellini Dep., pp. 20-21; Exhibit 98.
62 Michellini Dep., p. 17.
63 Michellini Dep., Exhibits 96 and 97.
Opposition No. 91177415
36
nationally with, you know, in the 90, approximately 90
percent level of unaided plus aided awareness.”64
In view of the foregoing, we find that CITIBANK is a
famous mark.
B. The similarity or dissimilarity and nature of opposer’s
services and the services described in the application.

1. Serial No. 78906010 for the mark CAPITAL CITY
BANK.

The table below shows that the services recited in the
CAPITAL CITY BANK application are in part identical to the
services recited in two of opposer’s registrations.
CAPITAL CITY BANK CITIBANK (Reg. No. 0691815)
Banking services Banking services
CAPITAL CITY BANK

Credit and cash card services Credit card services
Brokerage and administration
services in the field of
securities, namely, mutual
funds, stocks and bonds,
annuities, tax advantaged
securities, money market funds,
self directed retirement
accounts, including IRA
portfolio management, 401(k)
portfolio management, simply
(sic) IRA and Roth portfolio
management
Securities and mutual fund
investment; brokerage and
trading services; investment
advisory and consulting
services; securities brokerage
and trading services
Commercial and consumer lending
services
Commercial and consumer lending
and financing
Real estate and mortgage
brokerage services
Real estate and mortgage
brokerage
Brokerage of life insurance and
long term care insurance
Insurance services, namely,
underwriting and brokerage of
property, casualty and life
insurance policies and annuity

64 Mihcellini Dep., p. 19. “Aided awareness” is presenting the
repondent with the name of the brand and asking whether the
respondent has heard of the brand. (Michellini Dep., p. 12).
Opposition No. 91177415
37
contracts
Electronic processing and
transmission of bill payment
data
Electronic transmission of bill
payment data via a global
computer network
Estate trust management; estate
planning
Trust, estate, and fiduciary
management, planning and
consulting
Opposition No. 91177415
38
2. Application Serial No. 78909113 for the mark
CAPITAL CITY BANK INVESTMENTS and Serial No.
78934941 for the mark CAPITAL CITY BANC
INVESTMENTS.

Applicant is seeking to register these marks for the
following services:
Brokerage and administration services in
the fields of securities, namely, mutual
funds, stocks and bonds, annuities, tax
advantaged securities, money market
funds, and self directed retirement
accounts, including IRA portfolio
management, 401(k) portfolio management,
Simple IRA, and Roth IRA portfolio
management.

As indicated above, opposer’s mark is
registered for, inter alia, the following services:
Securities and mutual fund investment;
brokerage and trading services;
investment advisory and consulting
services; securities brokerage and
trading services.

Accordingly, we find that the services in the applications
are essentially identical to opposer’s services.
3. Application Serial No. 78930103 for the mark
CAPITAL CITY BANK GROWING BUSINESS.

Applicant is seeking to Register CAPITAL CITY BANK
GROWING BUSINESS for banking services and online banking
services. Opposer’s Registration No. 0691815 for the mark
CITIBANK is registered for banking services. Thus, the
services in the application and the registration are legally
identical.
Opposition No. 91177415
39
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because we have found that the parties’ services are in
part identical, and the description of services lack any
restrictions as to channels of trade and classes of
consumers, we must presume that the channels of trade and
classes of purchasers are the same. Hewlett Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002) (“[A]bsent restrictions in the application
and registration, goods and services are presumed to travel
in the same channels of trade to the same class of
purchasers”); Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) (“[I]n the absence of
specific limitations in the registration, [the issue of
likelihood of confusion is resolved] on the basis of all
normal and usual channels of trade and methods of
distribution”); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part (sic) identical and in-part
(sic) related nature of the parties’ goods, and the lack of
any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
Opposition No. 91177415
40
same channels of trade, and be sold to the same class of
purchasers”).
D. The nature and extent of any actual confusion.
Because there is no evidence of any reported instances
of actual confusion,65 applicant argued that this is
“powerful” evidence that there is no likelihood of
confusion.66 Opposer argued to the contrary that because
applicant’s “Star Logo registrations differ so greatly from
its pending word mark Applications” and because there is a
lack of any significant concurrent geographic use, the lack
of any reported instances of actual confusion is not
probative.67
The absence of any reported instances of confusion is
meaningful only if the record indicates appreciable and
continuous use by applicant of its mark for a significant
period of time in the same markets as those served by
opposer under its marks. Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words,
for the absence of actual confusion to be probative, there
must have been a reasonable opportunity for confusion to
have occurred. Barbara’s Bakery Inc. v. Landesman, 82
USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the

65 Opposer’s response to applicant’s interrogatory No. 6; Moses
Dep., p. 76; Braswell Dep., pp. 40, 93
66 Applicant’s Brief, p. 35.
67 Opposer’s Brief, pp. 23-24; Opposer’s Reply Brief, p. 18.
Opposition No. 91177415
41
absence of actual confusion depends upon there being a
significant opportunity for actual confusion to have
occurred); Red Carpet Corp. v. Johnstown American
Enterprises Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988);
Central Soya Co., Inc. v. North American Plant Breeders, 212
USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion
over a reasonable period of time might well suggest that the
likelihood of confusion is only a remote possibility with
little probability of occurring”).
In the Nina Ricci case, discussed by both parties, the
Court of Appeals for the Federal Circuit noted that the
absence of any reported instances of actual confusion was
not probative because the record failed to establish that
there was a reasonable opportunity for confusion to have
occurred. Nina Ricci S.A.R.L. v. E.T.F. Enterprises, Inc.,
889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989).
The absence of any showing of actual
confusion is of very little, if any
probative value here because (1) no
evidence was presented as to the extent
of ETF’s use of the VITTORIO RICCI mark
on the merchandise in question in prior
years, and (2) the Board specifically
found that ETF was not selling such
merchandise at the time of the
opposition proceeding in its own stores
or elsewhere.

Id.
We do not agree with opposer’s assertion that
applicant’s “Star logo registrations differ so greatly from
Opposition No. 91177415
42
[applicant’s] pending word mark Applications” that the lack
of any reported instances of any actual confusion is not
probative. The dominant portion of applicant’s “Star logo
registrations” is the name CAPITAL CITY BANK because it is
that portion of the mark that consumers will use to refer to
applicant. CBS Inc. v. Morrow, 708 F.2d 1579, 218 UPSQ 198,
200 (Fed. Cir. 1983). Moreover, it is the word portion of
applicant’s mark that opposer objects. While the marks that
applicant now seeks to register are different from its
previously-registered marks, the commercial impression
engendered by applicant’s “Star logo registrations” is based
on the name CAPITAL CITY BANK and the concurrent use of
applicant’s logo marks and opposer’s CITIBANK marks has
presented a reasonable opportunity for confusion to have
occurred.68
As indicated above, opposer contends that the lack of
any reported instances of actual confusion has no probative
value because there is no geographic overlap between
opposer’s bank branches and applicant’s bank branches.69

68 Our finding here is not inconsistent with our denial of
applicant’s prior registration defense. In the prior
registration defense, we were required to determine whether the
marks in the applications are essentially the same as the marks
applicant previously registered. In determining whether there
has been a reasonable opportunity for confusion to have occurred,
we are not required to find that applicant’s use of its mark in
another form is essentially the same as the marks at issue. It
is sufficient that applicant’s marks engender the same commercial
impression. Cf. In re 1st USA Realty Professionals Inc., 84
USPQ2d 1581, 1588 (TTAB 2007).
69 Moses Dep., pp. 76-77.
Opposition No. 91177415
43
Opposer’s contention is contradicted by the research of
William Schrot, one of applicant’s attorneys, who presented
his findings in a declaration. Mr. Schrot testified that
the parties have branches near each other. Mr. Schrot used
the “Find Citi Locations” application on opposer’s website
“to determine whether Opposer has Citibank locations in or
near the cities in which Applicant’s branches are
located.”70 Mr. Schrot summarized his research in a table
reproduced below.71
TABLE V
# CITY, STATE NO OF
APPLICANT
LOCATIONS
NO. OF CITIBANK
LOCATIONS
CITIBANK
LOCATIONS NEARBY
1 Alachua, Florida 2 1 YES ( 1.83 miles)
2 Gainesville, Florida 5 14 YES ( 0.84 miles)
3 High Springs, Florida 1 - YES ( 8.52 miles)
4 Jonesville, Florida 1 - YES ( 1.70 miles)
5 Newberry, Florida 2 1 YES ( 7.07 miles)
6 Crystal River, Florida 1 2 YES ( 1.96 miles)
7 Citrus Springs, Florida 1 - YES ( 6.13 miles)
8 Floral City, Florida 1 - YES ( 7.11 miles)
9 Inverness, Florida 1 1 YES ( 0.91 miles)
10 Havana, Florida 1 - YES ( 7.07 miles)
11 Spring Hill, Florida 2 8 YES ( 0.14 miles)
12 Tallahassee, Florida 18 12 YES (1.60 miles)
13 Inglis, Florida 1 - YES ( 11.86 miles)
14 Williston, Florida 1 - YES ( 7.23 miles)
15 Port Richey, Florida 1 3 YES ( 1.12. miles)

70 Schrot Declaration ¶13.
71 Schrot Declaration ¶13.
Opposition No. 91177415
44
# CITY, STATE NO OF
APPLICANT
LOCATIONS
NO. OF CITIBANK
LOCATIONS
CITIBANK
LOCATIONS NEARBY
16 Palatka, Florida 2 1 YES ( 2.18 miles)
17 Hastings, Florida 1 - YES ( 10.85 miles)
18 Macon, Georgia 5 2 YES ( 3.5 miles)
19 Thomnasville, Georgia 1 1 YES ( 2.07 miles)

Further, opposer’s national advertising encompasses
areas where it does not have branch locations.
Q. And you understand that the
Citibank branches are in certain
regions in the country?

A. Yes, of course.

Q. And we’re talking now about
national advertising that goes
across the country, not just in the
bank trading areas.

A. Exactly. So we do regional through
cable and through regional
publications, but we also do
national advertising that goes
across the country.

Q. Now, why does Citibank advertise in
areas across the country where it
doesn’t have branches?

A. Well, it’s very important to keep
up our presence and continue
communicating what we stand for
because we have a very large credit
card base, credit card customer
base that goes beyond the bank
trading areas, and so we need to
maintain that presence.72

72 Villanueva Dep., pp. 14-15.
Opposition No. 91177415
45
Furthermore, opposer’s renown extends nationwide. Not
only is opposer’s mark famous for purposes of determining
likelihood of confusion, but it has met the more rigorous
standard of fame for purposes of dilution.73 In this
regard, opposer has proven that CITIBANK is so well-known
that it has a national presence even if it does not have
branches in a particular geographic region.
Q. And so in areas where there’s not a
physical branch location, is it
your opinion that Citibank does not
have a presence there?

A. No, no. We have - - we have
presence nationally. As you can
see in the BrandZ study that we
were looking at a little bit ago,
our brand has presence nationally.

Q. And so Citibank would have a
presence in the same markets as all
of these third-party banks we’ve
discussed already, is that right?

A. I would think so, yes.74

73 Fame for dilution requires a more stringent showing. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
73 USQP2d at 1694; Toro Co. v. ToroHead Inc., 61 USPQ2d at 1170.
A mark, therefore, may have acquired sufficient public
recognition and renown to be famous for purposes of likelihood of
confusion without meeting the more stringent requirement for
dilution fame. Toro Co. v. ToroHead Inc., 61 USPQ2d at 1170,
citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47
USPQ2d 1225, 1239 (1st Cir. 1998) (“[T]he standard for fame and
distinctiveness required to obtain anti-dilution protection is
more rigorous than that required to seek infringement
protection”).
74 Michellini Dep., pp. 55-56.
Opposition No. 91177415
46
In fact, Mr. Michellini and Ms. Villanueva both
testified that CITIBANK is a nationally-known brand.75 Mr.
Michellini testified that CITIBANK has been a famous mark
since 1990,76 while Ms. Moses testified that CITIBANK has
been famous since as early as the 1980’s.77
Ms. Braswell testified that applicant has been a well-
known community bank since the late 1970s.78 Applicant has
69 branch locations in Florida, Georgia and Alabama. There
are only two branches in Alabama, the rest are in Florida
and Georgia. In addition, applicant provides offsite ATM
machines.79
Finally, both parties assert that they have customers
in all fifty states.80
Based on this evidence, we find that there has been a
reasonable opportunity for confusion to have occurred and
that the lack of any reported instances of confusion weighs
against finding that there is a likelihood of confusion.

75 Michellini Dep., p. 16; Villanueva Dep., pp. 26-27. Mr.
Michellini and Ms. Villanueva testified that marketing people
refer to famous marks as iconic brands. According to Ms.
Villaneuva, “An iconic brand refers to a brand that’s a household
name that, if you would ask individuals across the nation
generally, most people would know about that brand.” (Villanueva
Dep., p. 27). See also Michellini Dep., p. 11.
76 Michellini Dep., pp. 16, 34 and 38.
77 Moses Dep., p. 29.
78 Braswell Dep., p. 8
79 Hallock Dep., pp. 11-12 and 72.
80 Moses Dep., pp. 13-14 and Exhibit 3; Hallock Dep., p. 11;
Braswell Dep., p. 109.
Opposition No. 91177415
47
E. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988).
A major part of applicant’s argument that CAPITAL CITY
BANK is not similar to CITIBANK is the inherent weakness of
the term “City Bank.” To support its position that the
marks are not similar, applicant introduced evidence that
the term “City Bank” is commonly used in connection with
banking services. In other words, applicant contends that
CITIBANK is inherently weak and entitled to only a narrow
scope of protection or exclusivity of use despite its
marketplace renown. William Schrot introduced into evidence
40 different websites for entities purporting to render
banking services that include the term “City Bank” in their
names, including CITY BANK (Missouri), CITYBANK
(Washington),81 and CITY BANK (Texas), as well as the

81 The “City Bank of Lynwood” is discussed below.
Opposition No. 91177415
48
websites for CITY BANK NEW MEXICO, CITY BANK OF HARTFORD,
CITY BANK & TRUST (Nebraska) and CITY BANK & TRUST
(Louisiana).82 In addition, Mr. Schrot introduced a copy of
the website for CITY NATIONAL BANK purporting to have
offices in West Virginia, Ohio and Kentucky. The bank
displays its mark as set forth below:

There was also a FIRST CITY BANK in Columbus, Ohio and a
First City Bank in five locations in Florida. With the
exception of CITY NATIONAL BANK, the third-party banks are
community banks or located within one state.83
Furthermore, based on the information in the third-
party websites and from opposer’s “Find Citi Locations”
website application, Mr. Schrot compared the locations of
the third-party banks with Citibank locations to determine
proximity (e.g., CITY BANK (Missouri) was within 20 miles of
opposer, CITYBANK (Washington) was within 3 miles of
opposer, CITY BANK NEW MEXICO was within 67 miles of
opposer).
Mr. Schrot also introduced into evidence a copy of
Registration No. 3240918 for the mark SURF CITY BANK for

82 Schrot Declaration ¶5. Applicant introduced more evidence of
third-party use than discussed in the decision. We discuss the
evidence that we found most relevant.
Opposition No. 91177415
49
“banking services and financial services in the field of
money lending” registered on the Supplemental Register,84 as
well as copies of the following registrations for marks
incorporating the term “Cities Bank” for banking services:
1. Registration No. 3121171 for the mark UNITED
CITIES BANK;

2. Registration No. 2393231 for the mark RIVER CITIES
BANK; and

3. Registration No. 2452119 for the mark BAY CITIES
BANK.

Finally, applicant took the testimony depositions of
officers from four third-party “City Banks”: Hastings City
Bank, City Bank of Lynwood, Lake City Bank, and Gate City
Bank. The testimony from the third-party witnesses is
summarized below:
1. Hastings City Bank is a Michigan community bank
with five branches. It has been using the name Hastings
City Bank since 1886. The name Hastings City Bank is
displayed with an HCB logo.85
2. City Bank of Lynwood is a Washington state
community bank with eight branches. It was founded in 1974.

83 A “community” bank is a bank with “a local presence.” Its
focus is on the community where it is located. (Heffelbower
Dep., p. 22; Pruitt Dep., p. 28)
84 Registration on the Supplemental Register is an admission by
the registrant that the term was merely descriptive of its
services, at least at the time of registration. Quaker State Oil
Refining Corporation v. Quaker Oil Corporation, 453 F.2d 1296,
172 USPQ 361, 363 (CCPA 1972); In re Central Soya Company, Inc.,
220 USPQ 914, 916 (TTAB 1984).
85 Heffelbower Dep.
Opposition No. 91177415
50
The phones at the bank are answered “City Bank.” The bank’s
logo displays the name “City Bank” as one word: CITYBANK.86
3. Lake City Bank is an Indiana community bank with
43 branches. It was founded in approximately 1871.
Although all its branches are in Indiana, the bank has
customers in a majority of the states. Lake City Bank is a
full service financial institution offering consumer and
commercial deposits and loans, a trust department and a
retail brokerage department. The bank’s logo includes the
design of a sail boat.87
4. Gate City Bank is a mutual financial institution
with 28 branches in Montana and two branches in North
Dakota.88 It was founded in 1923 as Gate City Federal
Savings Bank and it became Gate City Bank in 2000. Gate
City Bank has customers in every state. The bank’s logo
features a circular design.89
Opposer contends that applicant’s evidence of third-
party use has little, if any, probative value because
opposer has rigorously policed the use of the name “City
Bank” by third parties. Opposer identified its criteria for
analyzing third-party use of the term “City Bank” as
follows:

86 Noren Dep.
87 Pruitt Dep.
88 A “mutual financial institution” is depositor owned. (Sveet
Dep., p. 42).
89 Sveet Dep.
Opposition No. 91177415
51
Opposer did not and does not object to
uses of CITY BANK which are (i)
geographically descriptive, (ii) local
in geographical reach, and/or (iii) used
with distinctive logos of graphical
presentations. Further, Opposer makes a
distinction in policing decisions
between third party (sic) use of CITY
BANK marks, as opposed to attempted
federal registration of such marks.
(Emphasis in original – internal
citations omitted).90

The frequent adoption and third-party use of the term
“City Bank” suggests that third parties use the word “Bank”
in the term “City Bank” as a generic designation for banking
services while the word “City” is used as part of a
geographic name (e.g., Lake City – bank, Hastings City –
bank) or, in the alternative, as a designation for a
community bank (e.g., City Bank of Lynwood or First City
Bank). Accordingly, while opposer may have the exclusive
right to use CITIBANK, the term “City Bank” is used by
others to convey the alternative meanings described above.
Notwithstanding the various uses of “City Bank,” these uses
do not diminish the strength of opposer’s mark.
With respect to the marks at issue, applicant’s marks
are superficially similar to opposer’s marks to the extent
applicant’s marks include the term “City Bank” while opposer
has used and registered the term “Citibank.” However,
because applicant’s marks start with the word “Capital,” the

90 Opposer’s Brief, pp. 24-25, citing Moses Dep., pp. 56-57, 144-
147, and 158.
Opposition No. 91177415
52
commercial impression engendered by applicant’s marks is
entirely different. Applicant’s marks will be perceived as
CAPITAL CITY . . . bank, not as CAPITAL . . . CITY BANK. In
applicant’s CAPITAL CITY BANK marks, the term “Capital City”
is perceived as a geographic designation and “Bank” is a
generic designation. As such, we note that applicant’s
marks fall outside of opposer’s own criteria for identifying
similar marks likely to cause confusion with opposer’s
CITIBANK marks.91
Our finding that the term “Capital City” is the
dominant element in creating the commercial impression
engendered by applicant’s marks is supported by its location
as the beginning of applicant’s marks. Presto Products Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely
to be impressed upon the mind of a purchaser and
remembered”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005)(“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the
mark and the first word to appear on the label); Century 21

91 In the prior registration defense discussion, we noted that
applicant could theoretically present CAPITAL CITY BANK in such a
way as to emphasize “CITY BANK” and minimize the word “capital.”
However, in light of the fame of opposer’s marks and applicant’s
historical use of its mark, we do not consider this a reasonable
manner in which applicant’s mark could be depicted.
Opposition No. 91177415
53
Real Estate Corp. v. Century Life of America, 23 USPQ2d at
1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers must first notice the identical lead word).
Since the commercial impression of applicant’s marks is
the geographic designation CAPITAL CITY and the generic term
“Bank,” applicant’s marks are not similar in appearance,
sound or meaning with opposer’s CITIBANK marks. The absence
of any reported instances of actual confusion lends credence
to this finding because, considering the widespread
advertising of opposer’s marks and the identity of the
services, if the marks were similar then it is likely that
there would be some reported instances of confusion or
mistake as to source such as misdirected telephone calls,
visits, or requests for information, or other indicia of
confusion in the marketplace.
In view of the foregoing, we find that applicant’s
marks are not similar to opposer’s marks.
D. Balancing the factors.
We have reviewed all of the evidence of record and
considered all of the arguments by the parties, including
evidence and arguments not specifically discussed in the
opinion, regarding the du Pont likelihood of confusion
factors. On the one hand, opposer’s CITIBANK marks are
famous and the services of the parties are in part identical
and, therefore, we presume that they move in the same
Opposition No. 91177415
54
channels of trade and are rendered to the same classes of
consumers. On the other hand, we find that the marks are
not similar and that there have not been any reported
instances of actual confusion despite significant
opportunity for confusion to have occurred. Moreover, the
third-party use of “City Bank” demonstrates that the public
will interpret the word “Bank” in applicant’s mark as a
generic designation and the word “City” as a part of a
geographic name or, in the alternative, as identifying a
community bank.
We find that the significant differences between
applicant’s CAPITAL CITY BANK marks and opposer’s CITIBANK
marks outweigh the fame of opposer’s marks. We are not
persuaded that opposer’s CITIBANK marks would be associated
with applicant’s CAPITAL CITY BANK marks and, therefore, we
find that applicant’s CAPITAL CITY BANK marks used in
connection with banking and financial services are not
likely to cause confusion with opposer’s CITIBANK marks for
the same services.
Dilution
In addition to its Section 2(d) claim, opposer has
asserted a dilution claim. The Lanham Act provides for a
cause of action for the dilution of famous marks. Sections
13 and 43(c) of the Lanham Act, 15 U.S.C. §§ 1063 and
1125(c).
Opposition No. 91177415
55
The Lanham Act provides as follows:
Subject to the principles of equity, the
owner of a famous mark that is
distinctive, inherently or through
acquired distinctiveness, shall be
entitled to an injunction against
another person who, at any time after
the owner's mark has become famous,
commences use of a mark or trade name in
commerce that is likely to cause
dilution by blurring or dilution by
tarnishment of the famous mark,
regardless of the presence or absence of
actual or likely confusion, of
competition, or of actual economic
injury.

Opposer contends that applicant’s marks will “blur” the
distinctiveness of opposer’s marks.92 The Lanham Act
defines dilution by blurring as follows:
"dilution by blurring" is association
arising from the similarity between a
mark or trade name and a famous mark

that impairs the distinctiveness of the
famous mark.93

With respect to fame, the dilution analysis requires
consideration of the following issues:
1. Whether CITIBANK is a famous mark;

2. Whether CITIBANK became famous prior to
applicant’s use of CAPITAL CITY BANK; and,

3. Whether CAPITAL CITY BANK is likely to cause
dilution by blurring of the distinctiveness of
CITIBANK.

92 Opposer’s Brief, p. 30.
93 Section 43(c)(2)(B) of the Lanham Act, 15 U.S.C.
§1125(c)(2)(B).
Opposition No. 91177415
56
A. Whether opposer’s mark became famous prior to
applicant’s use of CAPITAL CITY BANK?

We have already determined that opposer’s CITIBANK
marks have achieved the high standard of fame required to
establish dilution. However, opposer mistakenly contends
that it must prove that its CITIBANK marks have become
famous prior to the filing date of applicant’s applications.
As we noted in footnote 8, “[i]n a use-based application
under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(a), the party alleging fame must show that the mark
had become famous prior to the applicant’s use of the mark.”
Toro Co. v. ToroHead Inc., 56 USPQ2d at 1174 n.9. Since the
CAPITAL CITY BANK application is a use-based application,
opposer must prove that its CITIBANK mark became famous
prior to applicant’s first use of CAPITAL CITY BANK.
In the family of marks discussion, we found that
applicant established that it began using CAPITAL CITY BANK
in 1975. Also, we determined that, based on the record
before us, opposer’s marks were famous as of 1983. Opposer
argued, however, that “[t]he fame of the CITIBANK Marks was
confirmed by, inter alia, at least one federal court
decision as early as 1979,” citing Citibank, N.A. v. City
Bank of San Francisco, 206 USPQ 997, 1004 (N.D.Cal. 1980).94

94 Opposer’s Brief, p. 40.
Opposition No. 91177415
57
The decision by another court based upon a different
record is not evidence in this proceeding. Section 17(a) of
the Trademark Act of 1946, 15 U.S.C. § 1067(a), gives the
Board the authority and duty to decide the right to
registration in an opposition. This duty may not be
delegated by the adoption of conclusions reached by another
court on a different record. Suffice it to say that an
opposition must be decided on the evidence of record. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at
1691 (likelihood of confusion is a legal conclusion based on
case-specific factual underpinnings); cf. In re Sunmarks
Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).
The doctrine of stare decisis may be defined as the
policy of courts to stand by precedent and not to disturb a
settled point. Black’s Law Dictionary (8th ed. 2004).
Essentially, this doctrine provides
that, when a court has once laid down a
principle of law as applicable to a
certain set of facts, it will adhere to
that principle, and apply it to all
future cases, where the facts are
substantially the same, regardless of
whether the parties and properties are
the same. … It is clear, however, that
this doctrine is one of policy and
whether a previous holding of the court
shall be adhered to, modified, or
overruled is within the court's
discretion under the circumstances of
the case before it.

In re Johanna Farms Inc., 8 USPQ2d 1408, 1410 (TTAB 1988)
(internal citations omitted).
Opposition No. 91177415
58
With respect to the doctrine of stare decisis, it has
been held that findings of fact in an opposition between
opposer and a third party cannot be used against applicant
because applicant had no opportunity to cross-examine the
witnesses offered by opposer in the prior proceeding. Hyde
Park Footwear Company, Inc. v. Hampshire-Designers, Inc.,
197 USPQ 639, 641 (TTAB 1977); Sales Analysis Institute,
Inc. v. Sales Training, Inc., 181 USPQ 341, 341 n.1 (TTAB
1973). For exactly the same reason -- the absence of an
opportunity to cross-examine witnesses or offer rebuttal
testimony -- as well as another reason -- that the facts
presented in a case decided in 1980 were not introduced into
this record -- applicant cannot be bound by the findings of
fact by another court that were not duplicated in this
proceeding.
Based on this record, opposer’s marks became famous in
1983, while applicant first used its CAPITAL CITY BANK mark
in another form in 1975. Accordingly, because opposer did
not prove that its CITIBANK marks became famous prior to
applicant’s first use of its mark, opposer’s dilution claim
fails.
B. Dilution by blurring.
In addition, we have considered whether the mark
CAPITAL CITY BANK is likely to dilute opposer’s CITIBANK
marks.
Opposition No. 91177415
59
“Dilution diminishes the ‘selling power that a
distinctive mark or name with favorable associations has
engendered for a product in the mind of the consuming
public.’” Toro Co. v. ToroHead Inc., 61 USPQ2d at 1182,
quoting Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621,
624-25, 217 USPQ 658, 661 (2nd Cir. 1983). Dilution by
blurring occurs when a substantial percentage of consumers,
upon seeing the junior party’s use of a mark on its services
[in this case CAPITAL CITY BANK used in connection with
banking and financial services], are immediately reminded of
the famous mark [in this case CITIBANK] and associate the
junior party’s use with the owner of the famous mark, even
if they do not believe that the services emanated from the
famous mark’s owner. Toro Co. v. ToroHead Inc., 61 USPQ2d
at 1183.
The Board may look to all relevant facts in determining
whether applicant’s CAPITAL CITY BANK service mark will blur
the distinctiveness of opposer’s CITIBANK marks. The
Trademark Act provides the following guidance:
In determining whether a mark or trade
name is likely to cause dilution by
blurring, the court may consider all
relevant factors, including the
following:

(i) The degree of similarity between the
mark or trade name and the famous mark.

(ii) The degree of inherent or acquired
distinctiveness of the famous mark.

Opposition No. 91177415
60
(iii) The extent to which the owner of
the famous mark is engaging in
substantially exclusive use of the mark.

(iv) The degree of recognition of the
famous mark.

(v) Whether the user of the mark or
trade name intended to create an
association with the famous mark.

(vi) Any actual association between the
mark or trade name and the famous mark.

1. The degree of similarity between the mark or trade
name and the famous mark.

For purposes of dilution, a party must prove more than
confusing similarity; it must show that the marks are
“identical or very substantially similar.” Carefirst of
Maryland Inc. v. FirstHealth of the Carolinas Inc.,
77 USPQ2d at 1514, quoting Toro Co. v. ToroHead, Inc.,
61 USPQ2d at 1183. As the Board explained in Toro Co. v.
ToroHead, Inc.:
The test for blurring is not the same as
for determining whether two marks are
confusingly similar for likelihood of
confusion purposes. “To support an
action for dilution by blurring, ‘the
marks must be similar enough that a
significant segment of the target group
sees the two marks as essentially the
same.’” Luigino’s, Inc., 170 F.3d at
832, 50 USPQ2d at 105195 (quoting 2
McCarthy on Trademarks and Unfair
Competition, §24:90.1 (4th ed. 1998).
Therefore, differences between the marks
are often significant. Mead Data (LEXUS

95 Luigino’s , Inc. v. Stouffer Corp., 170 F.3d 827, 50 USPQ2d
1047 (8th Cir. 1999).
Opposition No. 91177415
61
for cars did not dilute LEXIS for
database services).96

Toro Co. v. ToroHead, Inc., 61 USPQ2d at 1183 (TORO and
ToroMR and Design are not substantially similar for dilution
purposes). But see Starbucks Corp. v. Wolfe’s Borough
Coffee Inc., 588 F.3d 97, 92 USPQ2d 1769, 1775-1776
(2nd Cir. 2009) (“Consideration of a ‘degree’ of similarity
as a factor in determining the likelihood of dilution does
not lend itself to a requirement that the similarity between
the subject marks must be ‘substantial’ for a dilution claim
to succeed” and, therefore, “the District Court erred to the
extent it focused on the absence of ‘substantial similarity’
between the Charbucks Marks and the Starbucks Marks to
dispose of Starbucks’ dilution claim”). Nevertheless, we
adhere to the substantially similar standard articulated
above because for dilution to occur the marks must at least
be similar enough that a significant segment of the target
group of customers sees the two marks as essentially the
same. See Century 21 Real Estate LLC v. Century Surety Co.,
2007 WL 433579 (D. Ariz. 2007), aff’d., 300 Fed. Appx. 527,
2008 WL 4946336 (9th Cir. 2008) (substantial similarity is
necessary to support a federal dilution claim); McCarthy on
Trademarks and Unfair Competition §24:117 (4th ed. 2009);
see also Jet, Inc. v. Sewage Aeration Systems, 65 F.3d 419,

96 Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc.,
875 F.2d 1065, 10 USPQ2d 1961 (2nd Cir. 1989).
Opposition No. 91177415
62
49 USPQ2d 1355, 1399 (6th Cir. 1999) (“The purpose of anti-
dilution laws is to provide a narrow remedy when the
similarity between two marks is great enough that even a
noncompeting, nonconfusing use is harmful to the senior user
… The degree of similarity required for a dilution claim
must be greater than that which is required to show
likelihood of confusion”). In other words, dilution is
defined by identical or substantially similar marks.
However, “[t]he statutory factor referring to the ‘degree of
similarity’ between the conflicting marks indicates that the
exact identity is not required by the statute itself for
blurring to be likely, but … without identity or near
identity, the injury of blurring is unlikely.” McCarthy on
Trademarks and Unfair Competition §24:117. This
interpretation is consistent with the requirement that we
also consider the degree of inherent or acquired
distinctiveness of the famous mark and the degree of
recognition of the famous mark even though the plaintiff’s
mark must be famous as a prerequisite for bringing a
dilution claim.
Section 43(c) of the Trademark Act lists six non-
exhaustive factors for the courts and the Board to consider
in determining whether there is dilution by blurring, but
there is no requirement that each factor must be weighed
equally in each case. The requirement is to consider each
Opposition No. 91177415
63
factor. The Second Circuit statement in Starbucks that “to
the extent that [the District Court] required ‘substantial’
similarity between the marks … the court may also have
placed undue significance on the similarity factor in
determining the likelihood of dilution” can be read to
suggest a general rule that all the factors should be given
equal weight, unless a disparate weighting is “due” by the
circumstances. Starbucks Corp. v. Wolfe’s Borough Coffee
Inc., 92 USPQ2d at 1775. Therefore, the weight given to
each of the statutory factors is dependent upon the evidence
introduced into the record. Each factor may vary in weight
from case to case depending on the facts. The Court of
Appeals for the Federal Circuit, when applying the
likelihood of confusion factors established by the Court of
Customs and Patent Appeals, held that in a particular case
even a single du Pont factor may be dispositive. Kellogg
Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 UPSQ2d
1142, 1145 (Fed. Cir. 1991). We find this approach to the
weighing of factors equally applicable to our consideration
of the statutory dilution factors (i.e., the weight given to
each of the statutory factors is dependent upon the evidence
made of record). Thus, there is no prohibition to giving
the statutory dilution factors more or less weight depending
on the facts.

Opposition No. 91177415
64
In discussing likelihood of confusion, we found that
CAPITAL CITY BANK and CITIBANK are not similar because
applicant’s CAPITAL CITY BANK engenders a different
commercial impression from opposer’s CITIBANK mark. We find
the marks of the parties are not essentially the same and,
therefore, in the context of dilution, we also find that the
marks are not substantially similar. Therefore, the
similarity, or in this case, dissimilarity of the marks
heavily favors applicant. Carefirst of Maryland Inc. v.
FirstHealth of the Carolinas Inc., 77 USPQ2d at 1514 (TTAB
2005) (dilution claim dismissed because the marks CAREFIRST
and FIRSTCAROLINACARE are so dissimilar that consumers will
not associate the marks).
2. The degree of inherent or acquired distinctiveness
of the famous mark.

This factor requires us to analyze how distinctive or
“unique” the mark is to the public. The inquiry is made
even when it is undisputed that opposer’s mark is registered
on the Principal Register. NASDAQ Stock Market Inc. v.
Antartica S.r.l., 69 USPQ2d 1718, 1735 (TTAB 2003); Toro Co.
v. ToroHead Inc., 61 USPQ2d at 1176. “The more inherently
distinctive and memorable the mark, the more it is likely to
be blurred by the use of other identical or similar marks.
The more descriptive the mark, the less likely it is to be
blurred by uses of identical or similar marks.” Testimony
of Anne Gundelfinger, President, International Trademark
Opposition No. 91177415
65
Association, before House Subcommittee on Courts, the
Internet and Intellectual Property, Committee on the
Judiciary, February 17, 2005 (109th Cong., 1st Sess.), 2005
WL 408425.
Registration No. 0691815 for the mark CITIBANK, in
typed drawing form, is registered on the Principal Register
without any claim of acquired distinctiveness. CITIBANK is
a coined term derived from the combination of “City” and
“Bank” from opposer’s early use of “City Bank of New York.”
Although opposer is the only entity using the name
“Citibank,” third-parties use the term “City Bank” where the
word “City” is part of a geographic designation (e.g., Lake
City Bank, Hastings City Bank) or where “City Bank”
identifies a community bank (e.g., City Bank of Lynwood,
First City Bank). We find that CITIBANK, although
inherently distinctive, is suggestive. Thus, this factor
favors opposer.
3. The extent to which the owner of the famous mark
is engaging in substantially exclusive use of the
mark.

As indicated above, although opposer is the sole user
of CITIBANK, the term “City Bank” frequently has been
adopted and used by third parties. In essence, to the
extent that opposer is correct in arguing that the mere use
of the words “City Bank” in another mark would dilute
opposer’s mark, such mark has already been diluted and the
Opposition No. 91177415
66
registration of applicant’s marks is not likely to cause any
additional blurring of CITIBANK. Moreover, opposer’s own
enforcement policy contemplates uses that should be diluting
under opposer’s argument, so long as the user does not seek
federal registration.97
4. The degree of recognition of the famous mark.

This Congressionally mandated factor seems redundant in
view of the fact that opposer must establish that its mark
is famous as a prerequisite for establishing a dilution
claim. Nevertheless, it is a factor that we must consider
in order to give meaning to the words in the statute. We
conclude, therefore, that the degree of recognition of the
famous mark requires us to determine the level of fame
acquired by the famous mark. In other words, once the mark
is determined to be famous as a prerequisite for dilution
protection, we must apply a sliding scale to determine the
extent of that protection (i.e., the more famous the mark,
the more likely there will be an association between the
famous mark and the defendant’s mark).
As indicated in our previous discussion regarding the
fame of opposer’s CITIBANK marks, we find that opposer’s
CITIBANK marks have achieved a high degree of recognition

97 Opposer’s Brief, pp. 24-25, citing Moses Dep., pp. 56-57, 144-
147, and 158.

Opposition No. 91177415
67
relative to other famous marks. Accordingly, we find that
this dilution factor favors opposer.
5. Whether the user of the mark or trade name
intended to create an association with the famous
mark.

There is no evidence that applicant intended to create
an association with opposer’s CITIBANK service marks. In
view thereof, this dilution factor favors applicant.
6. Any actual association between the mark or trade
name and the famous mark.

There is no evidence of any actual association between
applicant’s CAPITAL CITY BANK service mark and opposer’s
CITIBANK marks. Since we have no evidence on which to
conclude that potential customers of applicant’s services
would make any association between the parties’ marks when
used in connection with their respective services, this
dilution factor favors applicant.
7. Balancing the factors.
We have found that the marks are not substantially
similar, that there are numerous third-party users of the
term “City Bank,” that there is no evidence demonstrating
any association between the parties’ marks, and that there
is no evidence that applicant intended to create an
association with opposer’s marks outweigh the fame and
distinctiveness of the CITIBANK marks. Based on the record
before us, opposer has not demonstrated that the

Opposition No. 91177415
68
registration of applicant’s marks will dilute its CITIBANK
marks.
Decision: The opposition to the registration of
applicant’s marks is dismissed.