Friday 1 July 2016

US: Citigroup sued AT&T for infringing its Trade mark ‘Thank You’

As the saying goes, it costs nothing to say thank you, but not in the case of telecom company AT&T Inc. who was sued by US Bank, Citi group for trade mark infringement of the word 'thank you'.

On June 10, 2016, Citigroup filed a case against AT&T, in U.S District Court (for the Southern District of New York), for infringing its trade mark ‘Thankyou’. According to Citigroup, AT&T’s new loyalty program, namely ‘AT&T Thanks’, is likely to cause confusion among customers. Suit filed by the Citigroup states that, the design also has similar font and word placement. Citigroup also alleged that, AT&T was aware of Citi’s trade mark, as AT&T are its technology partner for a long time, and hence there is a willful trade mark infringement by them. Citigroup in its suit demanded, inter-alia permanent injunction, restraining AT&T from using ‘Thanks, Thank you, etc.’ for commercial purpose.

Citigroup contended that, it has been using ‘Thankyou’ since 2004, in promoting its own customer loyalty and reward programs, including credit cards co-branded with AT&T. Citigroup has also registered ‘Thankyou’, as a trade mark, in USPTO. AT&T has also filed an application, in USPTO, for registration of trade mark ‘AT&T Thanks’. Some other companies has also registered ‘Thankyou’ as a trade mark, for various goods. Details of these trademarks applications is as follows;


The present trade mark infringement suit, filed by Citigroup, may affect the relationship between these two companies, which Citigroup said dates to at least 1998 when they launched the AT&T Universal Card.

The Citigroup’s Trade mark ‘Thankyou’, may be contended as a generic name and may be liable for cancelation under section 14(3) of U.S. Trade mark Law which states that;

“§14 (15 U.S.C. §1064).  Cancellation

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of  the  prescribed  fee,  be  filed  as  follows  by  any  person  who  believes  that  he  is  or  will be damaged,  including  as  a  result  of  a  likelihood  of  dilution  by  blurring  or  dilution  by  tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:

……

(3) At any time if the registered mark becomes the generic name for the goods or services, or a  portion  thereof,  for  which  it  is  registered,  or  is  functional,  or  has  been  abandoned,  or  its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such said prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If  the  registered  mark  becomes  the  generic  name  for  less  than  all  of  the  goods  or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The  primary  significance  of  the  registered  mark  to  the  relevant  public  rather  than purchaser  motivation  shall  be  the  test  for  determining  whether  the  registered  mark  has become  the  generic  name of  goods  or  services  on  or  in  connection  with  which  it  has  been used.

……”


AT&T has not yet filed any statement in the court. It will really be interesting to see further developments in this case.

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