“Thank you!” Who knew that those two little words could constitute trademark infringement? Well, they do, if you’re AT&T, and another giant company is claiming trademark rights to the words “THANK YOU” for loyalty programs.
This week, banking behemoth Citigroup filed a trademark infringement lawsuit against telecom giant AT&T, alleging that AT&T’s use of the words, “Thank You” as part of their customer appreciation program violated Citi’s exclusive right to use that mark. According to the facts recited in the lawsuit, Citigroup sent a “Please cease and desist using our trademark” before filing suit, but now they seem to be saying, “Thanks for infringing our trademark — now pay up!” and are asserting unspecified damages for the use of their THANK YOU family of marks by AT&T.
Citibank owns several THANKYOU marks, including:
- THANKYOU (for credit card customer loyalty programs in class 35)
- CITI THANKYOU (for credit card services in class 36)
- THANKYOU (for gift cards in class 36)
- THANKYOU (for credit card services in class 36)
- CITI THANKYOU (for credit card customer loyalty programs in class 35)
- CITBUSINESS THANK YOU (for credit card customer loyalty programs in class 35)
- THANKYOU FROM CITI (design mark) (for administration of incentive and loyalty programs in class 35)
- THANKYOU YOUR WAY (for administration of incentive and loyalty programs in class 35)
So far, so good. That is, until AT&T sent this out to introduce their new loyalty program:
Hmmm. This doesn’t look good. In fact, it looks like it infringes. At least that’s what Citi is claiming in it’s lawsuit:
Citibank owns what is called a “family of marks.” A family of marks is defined as, “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). Mark families are accorded broader protection together than they are by themselves, and may be in a better position to oppose infringing marks when such infringing marks are sought to be registered with the United States Patent and Trademark Office.
And that’s exactly what you would expect the high-priced attorneys at AT&T to know before they filed Trademark Application Serial Number 86967249 in April 2016 for the mark AT&T THANKS for their very own incentive and loyalty programs in class 35.
There are some policy questions here, as well…Should registrants be allowed trademarks for common phrases like “thank you” for loyalty card programs (which are essentially a way to say “thank you” to your loyal customers), thus leaving others unable to use the words “thank you” for their loyalty programs? I’m not sure what the answer is, but I do know that it’s too late for AT&T to do anything about it, because Citibank’s marks are now incontestable under The Lanham Act, Citibank having filed their section 15 declaration of incontestability after five years of consecutive use. If AT&T had objections, the time to raise them would have been before the section 15 declaration was filed.
I don’t think this is going to turn out well for AT&T, but I’ll be keeping an eye on this case, and will report back to my loyal readers when the outcome of the case is made final. And Thank You! for reading my blog post!