Last year, Citigroup Inc., owner of numerous federally and internationally registered trademarks containing the CITI prefix lost its bid to prevent the registration of the trademark CAPITAL CITY BANK owned by the relatively small regional bank Capital City Bank Group, Inc. Although the record reflected that the CITIBANK brand is one of the most valuable brands in the world, and that courts have already deemed the CITIBANK mark “famous” for trademark analysis purposes, Capital City Bank Group handily won the case before the United States Court of Appeals for the Federal Circuit. The Court refused to extend Citicorp’s trademark protection to all forms and uses of the term “City” for financial services, finding that term to be “weak.”
The fact that Citigroup, with its extensive and well-known CITI trademarks lost and Capital City Bank, with its relatively unknown CAPITAL CITY BANK marks, won should be a caution to all business owners. Trademark selection is vital to the growth of a business. Ignoring trademark issues can be costly, time consuming, and painful.
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