Lu Sorov.Citigroup, Inc.

Trademark Trial and Appeal Board

Jul 25, 2006

No. 92031572 (T.T.A.B. Jul. 25, 2006)

Goodman

Mailed: July 25, 2006

Cancellation No. 92031572

LU SORO

v.

CITIGROUP

Before Quinn, Rogers and Cataldo1, Administrative Trademark
Judges.

By the Board:

Now before the Board is petitioner’s request for
reconsideration of the Board’s order granting summary
judgment for respondent on April 25, 2006.
In support of its motion, petitioner argues that he has
a “gargantuan legitimate interest” in the CITIGROUP mark
sufficient to establish his standing and respondent does not
have any rights in petitioner’s CITIGROUP name; that
petitioner “prevailed in the lower [district] court, but a
misinterpretation has occurred”; that the district court
decision finding that petitioner infringed respondent’s
CITICORP trademark, violated a prior court order (a
permanent injunction), and did not have priority of use of

1 Administrative Judge Cataldo has been substituted for
Administrative Judge Walters.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92031572
2
the CITIGROUP mark was clearly erroneous and an abuse of
discretion, and that the district court’s opinion should be
reversed; and that the Board should cancel the involved
CITIGROUP registration as “fraudulently registered.”
Petitioner has also submitted a "statement of facts" and
provided additional arguments regarding his priority of use
of the CITIGROUP mark.
In response, respondent argues that petitioner's
current motion is “simply a rehash of his previous
arguments”; that petitioner’s argument “that the federal
district opinions were wrong” is not a basis for
reconsideration; and that petitioner’s motion should be
denied.
In reply, petitioner asserts that the Board’s finding
that he has no standing was in error since petitioner has a
legitimate commercial interest in the CITIGROUP mark by
virtue of his 30 years of prior use of CITIGROUP in
connection with mortgage loans.
A request for reconsideration under Trademark Rule
2.127(b) provides an opportunity for a party to point out
any error the Board may have made in considering the matter
initially. It is not to be a reargument of the points
presented in the original motion or response thereto, nor is
it to be used to raise new arguments or introduce additional
evidence. Rather, the motion should be limited to a
Cancellation No. 92031572
3
demonstration that based on the facts before it and the
applicable law, the Board's ruling is in error and requires
appropriate change. TBMP § 518 (2d. ed. rev. 2004).
We have carefully reviewed this matter, and we find no
error in our April 25, 2006 decision.
Petitioner is rearguing points previously made, or
advancing new facts, issues or arguments, or is pointing to
evidence that could have been offered at the time the motion
for summary judgment was briefed. All of this is improper,
as explained above, and petitioner’s request for
reconsideration is denied on this basis.
To the extent that petitioner is asking the Board to
reverse the final decision of the district court that served
as the basis for the Board's grant of summary judgment for
respondent, this also is not a proper basis for
reconsideration.
The Board is an administrative tribunal with limited
jurisdiction over the issue of registrability. See TBMP §
102.01. To the extent that a civil action in a Federal
district court involves issues in common with those in a
proceeding before the Board, the decision of the Federal
district court is binding upon the Board, while any decision
of the Board is not binding upon the court. See TBMP §
510.02(a).
Cancellation No. 92031572
4
In this case, proceedings were suspended pending
disposition of the civil contempt proceeding between the
parties. The district court decision in the contempt
proceeding established that respondent had priority of the
CITIGROUP mark or trade name and that petitioner is
prohibited by the terms of the permanent injunction from
using CITICORP or any mark or trade name confusingly
similar, which includes the mark or trade name CITIGROUP.
Due to the commonality of issues in both proceedings, this
ruling, which was a final adjudication2, is binding on the
Board.
Accordingly, the Board has no authority to supplant or
reverse the district court decision. As a result, there was
no error in the Board’s finding that in view of the
permanent injunction prohibiting use by petitioner of the
CITIGROUP mark, petitioner, as a matter of law, has no
legitimate commercial interest in the CITIGROUP mark or
reasonable belief in damage, and therefore, no standing to
maintain the cancellation.
Inasmuch as petitioner has provided no basis for
revisiting the Board's April 25, 2006 decision granting
summary judgment for respondent, petitioner’s motion for

2 As respondent noted, petitioner sought review of the district
court decision, and the district court decision was affirmed at
the appellate level and denied further review by the United
States Supreme Court.

Cancellation No. 92031572
5
reconsideration is denied.
The Board’s April 25, 2006 order stands as issued.