United States Court of Appeals 

for the Federal Circuit 

__________________________ 

(Opposition No. 91177415) 

CITIGROUP INC., 

Appellant, 

v. 

CAPITAL CITY BANK GROUP, INC., 

Appellee. 

__________________________ 

2010-1369 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board. 

______________________ 

Decided: March 28, 2011 

______________________ 

 MICHAEL F CLAYTON, Morgan, Lewis & Bockius LLP, 

of Washington, DC, argued for appellant. With him on 

the brief were J. KEVIN FEE and DANIEL S. MARKS. 

JOSEPH W. BERENATO, III, Berenato & White, LLC, of 

Bethesda, Maryland argued for appellee. With him on the 

brief was DAVID S. TAYLOR. 

__________________________ 
CITIGROUP v. CAPITAL CITY 2

Before RADER, Chief Judge, GAJARSA, and PROST, Circuit 

Judges. 

GAJARSA, Circuit Judge. 

This is an appeal from a final decision of the Trademark Trial and Appeal Board (“T.T.A.B” or “Board”) 

denying the opposition by Citigroup Inc. (“Citigroup”) to 

four standard character service mark applications filed by 

Capital City Bank (“CCB”). Citigroup Inc. v. Capital City 

Bank Grp., Inc., 94 U.S.P.Q.2d 1645 (T.T.A.B. 2010). For 

the reasons discussed below, we affirm the T.T.A.B.’s 

denial of Citigroup’s opposition to the registration of 

CCB’s service mark. 

BACKGROUND

Appellant Citigroup provides commercial and consumer financial services. Citigroup owns multiple 

federally registered marks for financial services containing the CITI prefix, many of which are incontestable 

under 15 U.S.C. § 1065. See, e.g., CITI, U.S. Reg. No. 

1,181,467 (1981); CITICORP, U.S. Reg. No. 982,066 

(1974); CITIBANK, U.S. Reg. No. 691,815 (1960). Citigroup began using the name Citibank in 1897, although 

its official names from the 1800s through the late 1970s 

included City Bank of New York, National City Bank, and 

First National City Bank. J.A. 32. In 1976, Citigroup 

legally changed its name from First National City Bank to 

Citibank, N.A. 

Third-party brand valuation surveys, including by Interbrand and Millward Brown, indicate that the 

CITIBANK brand is one of the most valuable brands in 

the world. Citigroup, 94 U.S.P.Q.2d at 1658. Courts have 

deemed the CITIBANK mark “famous” for trademark 

analysis purposes. See, e.g., Citibank, N.A. v. City Bank 

of San Francisco, 206 U.S.P.Q. 997, 1004 (N.D. Cal. 1980). 
3 

CITIGROUP v. CAPITAL CITY

Citigroup seeks to keep the federal registry and marketplace free of marks it considers confusingly similar to its 

marks through cease-and-desist letters, opposition proceedings, negotiations, and lawsuits. 

Appellee CCB was formed in 1895 in Florida’s state 

capital, Tallahassee. CCB has a multi-state presence 

including sixty-nine branches in Florida, Georgia, and 

Alabama; automated teller machines; and a website that 

serves customers in all fifty states. In 1995, CCB filed 

three service mark applications for banking services. 

Each contained the phrase “CAPITAL CITY BANK” along 

with a design consisting of a five-pointed star inside of a 

circle. See, e.g., U.S. Reg. No. 2,007,889 (1996):

Beginning in June 2006, CCB filed a series of four 

new applications: CAPITAL CITY BANK, Serial No. 

78/906,010 (filed June 12, 2006); CAPITAL CITY BANK 

INVESTMENTS, Serial No. 78/909,113 (filed June 15, 

2006); CAPITAL CITY BANK GROWING BUSINESS, 

Serial No. 78/930,103 (filed July 14, 2006); and CAPITAL 

CITY BANC INVESTMENTS, Serial No. 78/934,941 (filed 

July 21, 2006). Unlike the prior applications, these 

applications contained standard character drawings and 

were, therefore, not limited to any particular font style, 

size, color, or design element. On May 21, 2007, Citigroup 

filed a timely Notice of Opposition with the T.T.A.B. 

against each of CCB’s standard character applications. 

Citigroup based its opposition on two grounds: the likelihood of confusion between CCB’s applications and Citigroup’s marks and the likelihood of dilution by blurring. 

CCB denied all of the claims alleged by Citigroup. 
CITIGROUP v. CAPITAL CITY 4

In its opinion, the T.T.A.B. treated all four applications as one and evaluated the likelihood of confusion 

under the thirteen factors listed in Application of E.I. 

DuPont De Nemours & Co., 476 F.2d 1357, 1362 (CCPA 

1973) (“DuPont”). Citigroup, 94 U.S.P.Q.2d at 1657-65. 

The T.T.A.B. found that four of the six relevant likelihood 

of confusion factors favored Citigroup: (1) the fame of the 

CITIBANK mark; (2) the similarity of Citigroup’s services 

and the services described in the applications; (3) the

similarity of Citigroup and CCB’s trade channels; and (4) 

the similarity of their consumers. Id. at 1657-60. The 

T.T.A.B. found that two of the DuPont factors favored 

CCB: (1) the nature and extent of any actual confusion 

and (2) the similarity of the marks. Id. at 1660-65. After 

weighing the factors, the T.T.A.B. determined that neither a likelihood of confusion nor dilution would arise 

from the registration of CCB’s marks and dismissed 

Citigroup’s opposition. Id. at 1664-69. 

On appeal, Citigroup does not address any dilution issues because it contends that “proper consideration of all 

the reasonable manners of display demonstrates a clear 

likelihood of confusion” and “this Court need not consider 

the issue of dilution to reverse the Board’s dismissal 

below.” Appellant’s Br. 11. This court, therefore, will 

consider only the issue of likelihood of confusion between 

CCB’s applications and Citigroup’s marks. We have 

jurisdiction over the timely filed appeal pursuant to 15 

U.S.C. § 1071(a) and 28 U.S.C. § 1295(a)(4)(B).

DISCUSSION

We must affirm the T.T.A.B.’s factual determinations 

unless they are arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence. Recot Inc. v. 

M.C. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). The 

T.T.A.B.’s ultimate conclusion in a Lanham Act section 
5 

CITIGROUP v. CAPITAL CITY

2(d) (15 U.S.C. § 1052(d)) analysis of whether a likelihood 

of confusion exists is an issue of law based on the underlying facts and is reviewed de novo by this court. In re Save 

Venice New York Inc., 259 F.3d 1346, 1351-52 (Fed. Cir. 

2001).

Under section 2(d) of the Lanham Act, registration of 

a mark must be refused if it 

so resembles a mark registered in the Patent and 

Trademark Office, or a mark or trade name previously used in the United States by another and 

not abandoned, as to be likely, when used on or in 

connection with the goods of the applicant, to 

cause confusion, or to cause mistake, or to deceive. 

15 U.S.C. § 1052(d). “Standard character” or “typed” 

registrations are federal mark registrations that make no 

claim to any particular font style, color, or size of display 

and, thus, are not limited to any particular presentation. 

See, e.g., 37 C.F.R. § 2.52; Phillips Petroleum Co. v. C.J. 

Webb, Inc., 442 F.2d 1376, 1378 (CCPA 1971). Whether a 

likelihood of confusion exists between an applied-for mark 

and a previously registered mark is determined on a caseby-case basis, aided by application of the DuPont factors. 

On-Line Careline v. Am. Online, 229 F.3d 1080, 1085 

(Fed. Cir. 2000). 

First, we examine the T.T.A.B.’s analysis of the two 

DuPont factors contested on appeal: the similarity of the 

marks and the “nature and extent of any actual confusion.” Then we conclude the legal analysis by balancing 

the DuPont factors and assessing the likelihood of confusion between the parties’ respective marks. 
CITIGROUP v. CAPITAL CITY 6

I. 

The T.T.A.B.’s factual findings regarding the similarity of the marks and the “nature and extent of any actual 

confusion” are supported by substantial record evidence. 

Evidence is substantial if “a reasonable person might find 

that the evidentiary record supports the agency’s conclusion.” On-Line Careline, 229 F.3d at 1085. The T.T.A.B’s 

finding may be supported by substantial evidence even if 

two inconsistent conclusions can be drawn from the 

evidence. Id. at 1086. 

A. 

The T.T.A.B. determined that the DuPont factor assessing the “similarity or dissimilarity of the marks in 

their entireties as to appearance, sound, connotation, and 

commercial impression” favored CCB. Citigroup, 94 

U.S.P.Q.2d at 1664. Upon examination of the record as a 

whole, we conclude that substantial evidence supports the 

T.T.A.B.’s factual finding that CCB’s marks are not 

similar to Citigroup’s marks. The evidentiary record 

details the distinctive spellings of the marks at issue, 

third-party usage of the phrase “City Bank” in the financial services industry, and the role of the word “Capital” 

in distinguishing CCB’s marks from Citigroup’s marks. 

We address each of these in turn. 

CCB’s marks are spelled differently than Citigroup’s 

marks. This court has found mark dissimilarity when the 

words are spelled differently. See, e.g., Champagne Louis 

Roederer, S.A. v. Delicato Vineyards, in which this court 

found mark dissimilarity between CRISTAL and 

CRYSTAL CREEK. 148 F.3d 1373, 1374-75 (Fed. Cir. 

1998). Citigroup’s marks are single words and all feature 

the C-I-T-I spelling. According to the record, CCB has 

never displayed its marks with “City” spelled C-I-T-I or 

with the words “City Bank” as a single compound word. 
7 

CITIGROUP v. CAPITAL CITY

J.A. 650. As the T.T.A.B. explained, “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 two 

words, not a compound word, and (3) applicant's ‘City’ is 

spelled with a ‘y,’ not an ‘i.’” Citigroup, 94 U.S.P.Q.2d at 

1657. 

Similarly, in Citigroup Inc. v. City Holding Co., a district court found that the “I/Y distinction is critical, 

though the marks are aurally identical.” 171 F. Supp. 2d 

333, 345 (S.D.N.Y. 2003). That court ruled that “the 

distinctive quality [i.e., spelling] of the CITI mark, the 

extent of usage of both marks, both in time and geography 

. . . demonstrate that the aural identity is overcome by the 

written differentiation.” Id. at 349. The district court 

explained that the “I” misspelling is the foundation of the 

CITI marks’ distinctiveness and the basis of Citigroup’s 

trademark protection policy. Id. at 347. We agree with 

the reasoning of that court. 

Citigroup itself distinguishes its C-I-T-I spelling from 

marks containing the word “City.” When seeking to 

register the mark CitiMortgage in Ohio, Citigroup represented to the Ohio Secretary of State that “[t]he public 

will understand that CitiMortgage, Inc. is associated with 

and part of the Citigroup family.” Id. at 340-41. It also 

maintained that “CitiMortgage” would not cause confusion with the senior mark “City Mortgage.” Id. Citigroup 

also noted that “because ‘City’ is a commonly used prefix 

for financial services corporations, Citigroup and its many 

subdivisions that bear the famous CITI prefix have coexisted with many ‘City’ entities for years in virtually every 

jurisdiction.” Id. 
CITIGROUP v. CAPITAL CITY 8

In addition to distinct spellings, the T.T.A.B. also relied on the frequent usage of the phrase “City Bank” in 

the banking industry. Citigroup, 94 U.S.P.Q.2d at 1664. 

The Board found that consumers view CITY as either part 

of a geographic name or as evoking a community bank. 

Id. In Citigroup Inc., v. City Holding Co., the District 

Court for the Southern District of New York listed over 

twenty third-party banks using marks containing CITY 

and BANK as evidence of third-party use in the field of 

financial services. 171 F. Supp. 2d at 341-42. Citigroup 

itself concedes that it does not pursue third-party uses of 

marks containing the phrase “CITY BANK” that include a 

distinguishing logo, designate a specific location, or occur 

only within a single community. Appellants Br. 19. 

In its opinion, the T.T.A.B. considered forty different 

websites for banking entities whose names contained the 

term “City Bank,” including Surf City Bank, Gate City 

Bank, Lake City Bank, and Hastings City Bank. Citigroup, 94 U.S.P.Q.2d at 1662-63. Several of these banks 

present their “City Bank” marks with the words “City 

Bank” on a separate line below the remainder of the 

mark. The T.T.A.B. found that “[n]otwithstanding the 

various uses of ‘City Bank,’ these uses do not diminish the 

strength of [Citigroup]'s mark.” Id. at 1664. 

Citigroup contends that registration of standard character marks containing the phrase “CITY BANK” could 

make its efforts to police the federal registry and preserve 

the strength of the CITIBANK mark more difficult. 

Appellant’s Reply Br. 26. Citigroup does not object to 

CCB registering “CAPITAL CITY” in standard characters. 

Appellant’s Br. 4. Denying CCB’s registration would not 

prevent CCB from achieving the same commercial effect. 

If CCB obtained the mark CAPITAL CITY in standard 

character form and combined it with the term BANK, 

which the T.T.A.B. deemed generic, Citigroup, 94 
9 

CITIGROUP v. CAPITAL CITY

U.S.P.Q.2d at 1664, it could effectively achieve the standard character mark it seeks, CAPITAL CITY BANK. 

Additionally, the federal registry is not free of third-party 

standard character marks containing the phrase CITY 

BANK. Surf City Bank’s standard character mark SURF 

CITY BANK is federally registered as U.S. Reg. No. 

3,240,918 (2007). 94 U.S.P.Q.2d at 1663. The only difference between the SURF CITY BANK mark and CAPITAL 

CITY BANK is the substitution of the word CAPITAL. 

The T.T.A.B. also examined the role of the word 

“Capital” in distinguishing CCB’s marks from Citigroup’s 

marks. As explained in Kangol Ltd. v. KangaROOS 

U.S.A., Inc., “a particular feature of a mark may be more 

obvious or dominant.” 974 F.2d 161, 163 (Fed. Cir. 1992). 

The T.T.A.B. determined that “‘CAPITAL CITY’ is the 

dominant element in creating the commercial impression 

engendered by [CCB]’s marks” because it is located at the 

beginning of the marks. Citigroup, 94 U.S.P.Q.2d at 

1664. As the first word of the mark, the Board determined that “Capital” gives CCB’s marks a distinct look 

and sound from Citigroup’s marks. Further, CCB’s applications disclaim BANK and when a mark consists of two 

or more words, some of which are disclaimed, the word 

not disclaimed is generally regarded as the dominant or 

critical term. In re Dixie Rests. Inc., 105 F.3d 1405, 1407 

(Fed. Cir. 1997) (finding “delta” the dominant part of the 

mark “THE DELTA CAFÉ because CAFÉ was disclaimed”). 

Although “Capital City” is the dominant part of the 

mark, Citigroup argues that because “capital is a commonly understood financial term,” it “does little, if anything to reduce the similarities between the marks” and 

“[c]ustomers are likely to assume that capital . . . CITY 

BANK is a financial service offered by Citigroup.” Appel-
CITIGROUP v. CAPITAL CITY 10

lant’s Br. 8-9. This argument is unpersuasive. “Capital” 

is not merely a descriptive financial term—it has geographic connotations and, here, refers to Tallahassee, the 

capital of Florida. 

Citigroup cites In re Mighty Leaf Tea in support of its 

argument that the presence of an additional term in a 

mark, such as CAPITAL, does not necessarily eliminate 

the likelihood of confusion. 601 F.3d 1342, 1348 (Fed. Cir. 

2010). In Mighty Leaf Tea, this court affirmed the 

T.T.A.B.’s rejection of Mighty Leaf Tea’s application for 

registration of the mark “ML” in standard character form 

for use with personal care and skin care products because 

the mark “ML MARK LEES” was already registered for 

skin care products. Id. In response to the rejection, 

Mighty Leaf Tea argued that it sought to register the 

mark ML in standard character form, as distinguished 

from the already registered stylized mark, and contended 

that “the existence of many similar marks showed the 

weakness of the registered marks, such that consumers 

would look to fine distinctions to distinguish the sources 

of goods.” Id. at 1345. Mighty Leaf Tea submitted evidence of several third-party registrations and pending 

applications that included the letters “ML” along with 

other letters. Id. This court held that the Board’s findings that the goods were identical in part and that consumer confusion was likely between ML and ML MARK 

LEES were supported by substantial evidence. Id. at 

1348. The third-party registrations including the letters 

“ML” did “not render the marks so similar and weak that 

the public would be alert to small differences,” particularly when there was no evidence of third-party use of any 

of the cited marks. Id. at 1346-47. Additionally, in that 

case, “[a]pplicant’s mark would appear to prospective 

purchasers to be a shortened form of registrants’ mark.” 

Id. at 1348. 
11 

CITIGROUP v. CAPITAL CITY

The facts of Mighty Leaf Tea differ from this case in 

some critical ways. In Mighty Leaf Tea, the exact same 

“ML” mark was already in use, whereas here, CCB’s mark 

is spelled differently, is not a compound word, and is not a 

short or long form of Citigroup’s existing marks. Also, 

here, third-party usage of marks ending in “City Bank” 

suggests that the public is sensitive to differences in the 

first word of the name of a bank. 

Citigroup maintains that because a footnote in the 

T.T.A.B.’s opinion noted that minimizing “CAPITAL” and 

emphasizing “CITY BANK” is not a “reasonable manner” 

of depicting CCB’s marks, the T.T.A.B. did not consider as 

many variations of CCB’s marks as it should have. Citigroup, 94 U.S.P.Q.2d at 1664. Both parties cite Phillips, 

442 F.2d 1376, as the source of the doctrine that only 

“reasonable” manners of depicting a standard character 

mark are considered. In the Phillips case, Phillips opposed Webb’s typed mark1 “CRC MARINE FORMULA 6-

66” for rust and corrosion inhibitors because it had already registered the mark “66” for marina services, cleaners, and lubricants. Id. at 1377. “In trying to visualize 

what other forms the mark might appear in,” the court 

was “aided by the specimens submitted with Webb’s 

application as ‘illustrating the mark as actually used.’” 

Id. Webb’s use depicted “the 6-66 portion of the mark 

much more prominently than the CRC MARINE 

FORMULA portion” with the first “6” at a different level 

 1 Until 2003, “standard character” marks were 

known as “typed” marks. The United States Patent and 

Trademark Office changed the nomenclature in 2003 to 

conform to the Madrid Protocol. See Rules of Practice for 

Trademark-Related Filings under the Madrid Protocol 

Implementation Act, 68 Fed. Reg. 55,748, 55,755 (2003) 

(explaining revisions to 37 C.F.R. § 2.52). 
CITIGROUP v. CAPITAL CITY 12

from the later “66.” Id. The court concluded that “the 

mark CRC MARINE FORMULA 6-66, in some forms at 

least, so resembles ‘66’ that confusion, mistake or deception is likely” and reversed the T.T.A.B.’s decision dismissing the opposition. Id. at 1379. 

Neither Phillips nor any other opinion of the United 

States Court of Customs and Patent Appeals, our predecessor court, or this court has endorsed the T.T.A.B.’s 

“reasonable manner” limitation of variations evaluated in 

the DuPont analysis. Although this court has never 

adopted such a rule, the T.T.A.B. has applied it in numerous proceedings. See, e.g., ProQuest Info. & Learning Co. 

v. Jacques R. Island, 83 U.S.P.Q.2d 1351, 1359 (T.T.A.B. 

2007) (“[W]hen a mark is presented in a typed or standard 

character format, the Board must consider all reasonable 

manners in which applicant could depict its mark.”); 

Jockey Int’l Inc. v. Mallory & Church Corp., 25 U.S.P.Q.2d 

1233, 1235 (T.T.A.B. 1992) (stating that the registration 

of opposer’s mark in typed format “requires consideration 

of all ordinary and reasonable manners in which its mark 

could be depicted,” including in typical script form); INB 

Nat’l Bank v. Metrohost Inc., 22 U.S.P.Q.2d 1585, 1588 

(T.T.A.B. 1992) (“[W]hen applicant seeks a typed or block 

letter registration of its word mark, then the Board must 

consider all reasonable manners in which those words 

could be depicted.”). 

The T.T.A.B.’s “reasonable manner” standard limits 

the range of marks considered in the DuPont analysis. If 

the registrant complies with Section 2.52 of the Rules of 

Practice in Trademark Cases and obtains a standard 

character mark without claim to “any particular font 

style, size or color,” the registrant is entitled to depictions 

of the standard character mark regardless of font style, 

size, or color, not merely “reasonable manners” of depicting its standard character mark. The consideration of 
13 

CITIGROUP v. CAPITAL CITY

only “reasonable” manners of depicting a standard character mark is unsupported by anything other than 

T.T.A.B practice. The T.T.A.B. should not first determine 

whether certain depictions are “reasonable” and then 

apply the DuPont analysis to only a subset of variations of 

a standard character mark. The T.T.A.B. should simply 

use the DuPont factors to determine the likelihood of 

confusion between depictions of standard character marks 

that vary in font style, size, and color and the other mark. 

As explained in Phillips, illustrations of the mark as 

actually used may assist the T.T.A.B. in visualizing other 

forms in which the mark might appear. 

Citigroup also interprets the T.T.A.B.’s observation 

that CCB’s past displays of its marks have not emphasized CITY BANK as indicating that the T.T.A.B. only 

considered marks as they were previously used. In accordance with Cunningham v. Laser Golf Corp., the T.T.A.B. 

used current and past commercial displays of the appliedfor mark to inform but not to restrict its analysis of potential displays. 222 F.3d 943 (Fed. Cir. 2000). In Cunningham, this court canceled the junior mark LASERSWING 

for a golf practice device in light of the senior mark 

LASER for golf clubs and golf balls. Id. at 950. This court 

ruled that because the mark at issue is the mark as 

registered, not as it is used, a respondent in a cancellation 

proceeding could not argue that his typed mark is dissimilar from petitioner’s based on his distinctive font, color, 

logo, and accompanying house mark. Id. at 949-50. 

The T.T.A.B.’s opinion addresses the range of marks 

encompassed by the standard character format of the 

marks in CCB’s application. Citigroup, 94 U.S.P.Q.2d at 

1662-64. The T.T.A.B. determined that given the widespread use of CITY BANK, BANK is a generic banking 

term and CITY is part of a geographic name or identifies 
CITIGROUP v. CAPITAL CITY 14

a community bank. Id. at 1664. Thus, it would not be 

reasonable for CCB to present itself in a manner not 

distinguishing itself from these third-party banks. Cf. 

DuPont, 476 F.2d at 1362 (“It can be safely taken as 

fundamental that reputable businessmen-users of valuable trademarks have no interest in causing public confusion.”). Although the Board’s reference to “reasonable 

manners” of depicting CCB’s marks in its opinion is 

ambiguous and unduly narrow, substantial evidence 

supports the T.T.A.B.’s finding that CCB’s marks are 

dissimilar in appearance, sound, connotation, and commercial impression from Citigroup’s marks. 

B. 

We next address the DuPont factor assessing the “nature and extent of any actual confusion.” Substantial 

evidence supports the T.T.A.B.’s factual finding of the 

absence of actual confusion. As the T.T.A.B. noted, concurrent use in the same geographic markets since 1975 

presented “a reasonable opportunity for confusion to have 

occurred” but neither party is aware of any actual confusion between the parties’ marks. Citigroup, 94

U.S.P.Q.2d at 1661. CCB and Citigroup have nineteen 

bank branches near each other. Id. Additionally, market 

research indicates that Citigroup’s renown extends nationwide, even if it does not have branches in all geographic regions. The T.T.A.B. reasoned that 

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.

Id. at 1664.
15 

CITIGROUP v. CAPITAL CITY

In contrast, in Citibank, N.A. v. City Bank of San 

Francisco, Citigroup asserted its Citibank International 

San Francisco mark against the City Bank of San Francisco. 206 U.S.P.Q. at 1002. The court found it “extremely significant” that many instances of actual 

confusion arose after less than one month of concurrent 

use of the marks. Id. at 1009. 

On appeal, Citigroup asserts that it has offered services under the brand “CitiCapital” and, therefore, CCB’s 

standard character marks could damage the value and 

goodwill associated with its marks. Appellant’s Br. 9. 

Although this argument could be considered waived, it 

also lacks merit. The CITICAPITAL mark was not used 

in commerce until November 2000, well after the 1995 

priority dates of CCB’s applications. Also, Citigroup 

offers no evidence of any confusion between the CitiCapital brand and CCB. 

Citigroup argues that the significance of the absence 

of actual confusion is negated because CCB has not used 

all of the potential variations of the standard character 

mark. Citigroup cites Nina Ricci, S.A.R.L. v. E.T.F. 

Enterprises, Inc., 889 F.2d 1070, 1073-74 (Fed. Cir. 1989), 

in support of its argument. But in Nina Ricci, the absence of actual confusion had no probative value because 

no products bearing the mark had been sold and the 

extent of usage of the mark was unknown. Unlike the 

mark at issue in Nina Ricci, CCB’s marks have been used 

commercially in overlapping markets. 

Although the most potentially confusing form of 

CCB’s marks, that is, a version deemphasizing “Capital” 

and emphasizing “City Bank,” has not yet been used, the 

critical words are all in use and there is no evidence of 

actual confusion. Substantial evidence supports the 
CITIGROUP v. CAPITAL CITY 16

T.T.A.B.’s analysis of the similarity of the marks and the 

nature and extent of any actual confusion. 

III. 

After weighing the relevant DuPont factors, we conclude that the T.T.A.B. did not err in finding no likelihood 

of confusion between the parties’ respective marks. Not 

all of the DuPont factors are necessarily “relevant or of 

equal weight in a given case, and any one of the factors 

may control a particular case.” In re Majestic Distilling 

Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003) (internal quotation marks omitted). 

Six of the thirteen DuPont factors are relevant to this 

case: 

(1) The similarity or dissimilarity of the marks in 

their entireties as to appearance, sound, connotation and commercial impression. 

(2) The similarity or dissimilarity and nature of 

the goods or services as described in an application or registration or in connection with which a 

prior mark is in use. 

(3) The similarity or dissimilarity of established, 

likely-to-continue trade channels. 

(4) The . . . buyers to whom sales are made. 

(5) The fame of the prior mark (sales, advertising, 

length of use). . . . 

(7) The nature and extent of any actual confusion. 

476 F.2d at 1361. The T.T.A.B. is not required to discuss 

every DuPont factor and may find a single factor dispositive. See, e.g., Kellogg Co. v. Pack’em Enters. Inc., 951 

F.2d 330, 333 (Fed. Cir. 1991). 
17 

CITIGROUP v. CAPITAL CITY

The first DuPont factor assesses the fame of the 

CITIBANK mark. A famous mark has “extensive public 

recognition and renown.” Bose Corp. v. QSC Audio 

Prod.’s Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002). Here, 

the T.T.A.B. found that CITIBANK is a famous mark. 

Citigroup, 94 U.S.P.Q.2d at 1658. As the T.T.A.B. noted, 

“[f]ame, 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.” Id. at 1657; 

accord Recot, 214 F.3d at 1327. The “fame of a mark may 

be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods 

traveling under the mark, and by the length of time those 

indicia of commercial awareness have been evident.” Bose 

Corp., 293 F.3d at 1371. The T.T.A.B. reviewed the press 

coverage of Citibank, corporate studies tracking brand 

awareness of the CITIBANK mark, and brand valuations 

by independent research agencies. Citigroup, 

94 U.S.P.Q.2d at 1658. Studies conducted in the 1990s 

indicated that the CITIBANK mark had a 90-95% level of 

unaided awareness. Id. Substantial evidence supports 

the T.T.A.B’s finding that CITIBANK is a famous mark.

The second DuPont factor is the similarity and nature 

of Citigroup’s services and the services described in CCB’s 

applications. When trademarks would appear on virtually identical goods or services, the degree of similarity 

necessary to support a conclusion of likely confusion 

declines. See Century 21 Real Estate Corp. v. Century Life 

of Am., 970 F.2d 874, 877 (Fed. Cir. 1992). CCB seeks to 

register marks 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 
CITIGROUP v. CAPITAL CITY 18

accounts, including IRA portfolio management, 

401(k) portfolio management, Simple IRA, and 

Roth IRA portfolio management. 

Citigroup, 94 U.S.P.Q.2d at 1659.

The CITIBANK mark is registered for, inter alia, “securities and mutual fund investment; brokerage and 

trading services; investment advisory and consulting 

services; securities brokerage and trading services.” Id. 

Substantial evidence supports the T.T.A.B.’s finding that 

the services in CCB’s applications are essentially identical 

to Citigroup’s services. The second DuPont factor favors 

Citigroup. 

Because the parties’ trade channels and classes of 

consumers are unrestricted, the third and fourth DuPont

factors also favor Citigroup. As this court explained in 

Hewlett Packard Co. v. Packard Press, Inc., “absent 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.” 281 F.3d 1261, 

1268 (Fed. Cir. 2002). We agree with the T.T.A.B.’s 

finding that the trade channels and classes of consumers 

at issue are identical or nearly identical. 

Citigroup argues that the T.T.A.B. incorrectly 

weighed the DuPont factors. Citigroup’s approach of 

mechanically tallying the DuPont factors addressed is 

improper, as the factors have differing weights. Although 

the T.T.A.B. deemed the CITIBANK mark famous, fame 

is only one of the thirteen DuPont factors. CCB’s marks 

do not employ the C-I-T-I spelling or compound word 

structure, characteristics that contribute to the fame of 

Citigroup’s marks. Because those characteristics are not 

present in CCB’s marks, the fame factor is less persuasive 

than it is typically. Pervasive third-party use of the 

phrase “City Bank” in marks for financial services also 
 

CITIGROUP v. CAPITAL CITY

19

limits the protection afforded to the CITIBANK mark. 

The dissimilarity of the marks in their entireties as to 

appearance, sound, connotation, and commercial impression strongly supports a finding of no likelihood of confusion. Additionally, no instances of actual confusion have 

been reported despite opportunities for confusion to have 

occurred. But because a standard character registration 

would cover potential variations of the CCB applications 

that create a different commercial impression from CCB’s 

past uses, the “actual confusion” factor has limited probative value in this case. 

After considering the relevant DuPont factors favoring Citigroup against those favoring CCB, we conclude 

that CCB’s marks are not likely to cause confusion with 

Citigroup’s marks. 

CONCLUSION

We conclude that no likelihood of confusion would 

arise from the registration of CCB’s marks for banking 

and financial services and Citigroup’s marks for the same 

services. We affirm the T.T.A.B.’s denial of Citigroup’s 

opposition to the registration of CCB’s marks. 

AFFIRM 

COSTS

Each party shall bear its own costs.