I like opinions in trademark infringement cases that don’t just gloss over LIKELIHOOD OF CONFUSION issues, but I have to admit I wasn’t ready for what awaited me when, after seeing the tweet reproduced below from Bill Donahue, I undertook to dig into yesterday’s ruling by the Southern District of New York in Citigroup, Inc. v. AT&T Services, et al.)
So, what gave? Or didn’t?
First, the basics. From the opinion:
This is a trademark action concerning the phrases “thank you” and “thanks.” Citigroup, a leading financial services company, has offered a customer loyalty, reward, and redemption program using the term “THANKYOU” since 2004. AT&T, a telecommunications giant, began implementing a customer loyalty program using the term “AT&T THANKS” this summer, in 2016. Citigroup initiated this action seeking both damages and an injunction prohibiting AT&T’s continued use of this name, and has moved for a preliminary injunction that would prohibit that use during the pendency of this litigation.
These are your alleged trademarks, then: THANK YOU and THANKS.
Again: These corporate behemoths are litigating over the use of the words, respectively, “thank you” and “thanks” for — what now?
Competing customer loyalty programs.
Customer LOYALTY programs. One is called THANK YOU.
One is called THANKS.
What I am telling you is the following information, in case my powers of expression have, perhaps, failed me: Both parties here claim protectible trademark rights in the use of the words, respectively (maybe), “Thank you” and “Thanks” for customer loyalty programs.
Now, Bill’s take, as he said in the following tweet, is that the money quote from the opinion is this:
On this record, the Court cannot conclude that Citigroup has carried its burden. For the reasons discussed above, there has not been an adequate showing of irreparable harm from the continued existence of AT&T THANKS while this litigation continues. Against that lack of a showing, AT&T has advanced concrete evidence that requiring it to halt use of the “AT&T THANKS” name would be an expensive and significant disruption.
That is accurate. How the court gets there, however, is quite interesting. Read More…