10 / 05 / 2016

You Can Trademark That? Be Careful Who You Say "Thank You" To

businessmen_shaking_hands.jpg

Two corporate giants are fighting over good table manners.  Recently, the multinational investment banking behemoth, Citigroup, sued the multinational telecommunications behemoth, AT&T, in federal court for how AT&T says “thank you” to its own customers.  Citigroup trademarked “THANKYOU” and considers AT&T’s expression of appreciation to loyal customers as a “wanton trademark infringement.”  The following piece is an excerpt taken from Citigroup’s official complaint (emphasis added):

Since 2004, Citigroup has offered customer loyalty, reward and redemption programs in connection with many of its credit cards, including its credit cards that are cobranded with AT&T, under trademarks consisting of and/or containing the term THANKYOU. . . .  Despite actual knowledge of Citigroup’s substantial use of and exclusive rights in the THANKYOU Marks . . . AT&T launched a customer loyalty program under the trademarks “thanks” and “AT&T thanks” on or about June 2, 2016. . . .  AT&T’s use of the “thanks” and “AT&T thanks” trademarks is likely to cause consumer confusion and constitutes:

(1) trademark infringement
(2) false designation of origin
(3) unfair competition in violation of Citigroup’s rights

CITIGROUP's argument

In their complaint, Citigroup provides a complete table of all the THANKYOUs it has registered with the United States Patent and Trademark Office.  Yes, Registration Number 4,432,766 is an official and legally registered trademark of THANKYOU belonging to Citigroup.  In their complaint, Citigroup provides seven additional trademarks that are either registered or incontestable utilizing “THANKYOU” in some form or another.

Referring to them collectively as its “THANKYOU Marks,” Citigroup argues it:

  1. “has spent considerable time, effort and resources in advertising and promoting its services”
  2. and as a “result of Citigroup’s longstanding, extensive, and widespread use, marketing and promotion of its THANKYOU Marks and services, Citigroup’s THANKYOU Marks are widely recognized by the general consuming public as a designation of source for Citigroup’s high quality financial services and customer loyalty” (emphasis added).

AT&T's Response

Citigroup is not only seeking to stop AT&T from saying “AT&T thanks,” but also unspecified triple and punitive damages.  Fletcher Cook, spokesman for AT&T, when asked to comment on the case, responded as any one may expect to respond: “[The] law does not allow one company to own the word ‘thanks’ . . . .  We’re going to continue to say thanks to our customers.”

The case is Citigroup Inc. v. AT&T Inc. et al, U.S. District Court, Southern District of New York, No. 16-04333.

Previous Blog Post Settling Ownership Disputes in Family-Owned Businesses
Next Blog Post Shareholders Sue Volkswagen after Dieselgate Scandal

Vethan Law's guide to the Fair Labor Standards Act

Our new guide provides a simplified overview of the FLSA with definitions of terms and details regarding employee exemptions in an easy-to-read format. Click the book below to download our free guide and learn what to expect.

VLF FLSA E-book

Subscribe to our blog