Thanks for nothing, Citibank: New case raises questions over the grant of trade marks for everyday words

June 23, 2016 Published by

Citigroup has commenced action in the Federal Court in New York against US telecommunications giant AT&T, claiming the telecom’s new “AT&T thanks” customer rewards program infringes trademark rights connected with its own well-established “ThankYou” rewards points program.

Back in 2004, Citigroup began using the term “thankyou” to promote a customer loyalty and rewards program, and subsequently (and to some, surprisingly) successfully registered eight different federal registrations for various iterations of the brand, including THANKYOU, CITI THANKYOU, CITIBUSINESS THANKYOU, THANKYOU FROM CITI, and THANKYOU YOUR WAY.

On 2 June, and despite warnings from Citigroup about the likelihood of a claim of alleged infringement, AT&T announced its new appreciation program ‘AT&T thanks’.

Citigroup believes AT&T’s use of the word ‘thanks’ is likely to confuse consumers.  Further, it has stated that the risk of confusion is amplified by the fact that the two companies have long been partners, and since 1998, AT&T has sold co-branded Citi credit cards, like the AT&T Access Card or AT&T Universal Card, featuring both companies’ trademarks.

Citigroup is seeking damages and has asked for an injunction to block AT&T from using “thanks” and “AT&T thanks” in its loyalty program.

Following the filing of the suit, an AT&T spokesman said the company planned to resist the claim: “This may come as a surprise to Citigroup, but the law does not allow one company to own the word ‘thanks’…We’re going to continue to say thanks to our customers.”

The suit was unlikely to catch AT&T unaware.  Citigroup has a long history of aggressively enforcing its trademark rights in the “ThankYou” brand.  In the past 12 months alone, it has filed six different oppositions aimed at blocking “Thanks” related trademarks at the U.S. Patent and Trademark Office, including “Thanks” and “Merci” — the French word for “thanks.”

Many commentators on the most recent case have questioned the validity in granting exclusive trade mark rights in such a commonplace word to Citigroup in the first place, but until the registration is overturned, it seems Citigroup intends to make the most of its exclusive rights.

We will keep you posted.