Citicorpv.Citybroker Anlagenvertriebe, GmbH

Trademark Trial and Appeal Board

Jul 23, 1999

No. 91103010 (T.T.A.B. Jul. 23, 1999)

Hearing: Paper No. 32
September 22, 1998 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 23, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Citicorp
v.
Citybroker Anlagenvertriebe-GmbH
_____
Opposition No. 103,010
to application Serial No. 74/608,304
filed on December 8, 1994
_____
Steven M. Weinberg and Stephen R. Winkelman of Weinberg
Sullivan for Citicorp.
Thomas J. Burger and Kathryn P. Evans of Wood, Herron &
Evans for Citybroker Anlagenvertriebe-GmbH.
______
Before Quinn, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Citybroker
Anlagenvertriebe-GmbH to register the mark CITYBROKER for
“financial services, namely financial planning related to
domestic and international securities and including lease-
purchase and loan financing; computer aided financial
planning; performing of financial affairs by means of
telephone, facsimile, and computer networks on international
Opposition No. 103,010
2
capital markets, namely trade with and administration of
stocks, fixed-interest-bearing securities, options, future
contracts and derivatives of the aforementioned financial
products for third parties; financial consulting and
analysis, namely the analysis of capital markets and
investment media independent from trade with and/or
administration of the aforementioned finance products as
well as advising third parties in respect of these capital
markets and investment media; trade of commodities with and
registration of international investment trusts for third
parties.”1
Registration has been opposed by Citicorp under Section
2(d) of the Act on the ground that applicant’s mark, when
used in connection with applicant’s services, so resembles
opposer’s previously used and registered mark CITIBANK and
its other CITI-prefix marks for a wide range of financial
services, including banking services and investment
counseling and investment/brokerage services, as to be
likely to cause confusion. Although not pleaded in the
notice of opposition, opposer also has raised, essentially
by way of Fed. R. Civ. P. 15, an additional ground, namely

1 Application Serial No. 74/608,304, filed December 8, 1994,
based on German Registration No. 2,081,100, issued October 19,
1994. Applicant apparently has changed its name to Citybroker
Deutschland GmbH. If applicant elects to take an appeal of the
Board’s decision, the name change should be recorded with the
Assignment Branch of the Office so that, in the event applicant
Opposition No. 103,010
3
that applicant lacked a bona fide intention to use the mark
for the identified services in commerce at the time when the
application was filed.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; three stipulations regarding
factual evidence; certified copies of thirteen of opposer’s
registrations, a discovery deposition, and applicant’s
responses to opposer’s first set of interrogatories, all
introduced by opposer’s notices of reliance; and opposer’s
responses to applicant’s first set of interrogatories, first
request for production of documents and first request for
admissions, all made of record by way of applicant’s notice
of reliance. Opposer and applicant filed briefs on the
case, and both were represented by counsel at an oral
hearing held before the Board.
By way of introduction to the readers of this opinion,
the Board points out that the drafting of this opinion has
been complicated by the fact that so much of the record, and
the briefs in their entireties, have been designated as
“highly confidential” or “confidential.” Thus, the Board is
severely constrained by the parties’ confidentiality

ultimately prevails in this proceeding, a registration would
Opposition No. 103,010
4
agreement which precludes us from reciting many of the
specific facts contained in the record. The result is an
opinion which speaks in very broad terms, without giving,
inter alia, the specifics of opposer’s significant revenues,
advertising expenditures, market share or level of brand
awareness. Suffice it to say that the specific facts of
record here, which have been designated as confidential,
present a significantly more compelling case in support of
our decision than this opinion otherwise conveys.
Opposer is a major player in the financial services
field, offering a wide range of financial services to a wide
range of customers. In rendering these services under its
CITI-prefix marks, opposer has attained billions of dollars
of revenues. In the process, opposer has expended multi-
millions of dollars in promotional efforts, employing a
variety of media. Fortune magazine has listed opposer as
one of the “World’s Most Admired Companies.”
Applicant is a German entity located in Munich,
Germany. Applicant is in the brokerage business,
specifically acting as an “introducing broker” for its
customers (80-90% of whom are Germans, with the remainder
from other European countries). According to Andreas
Reichart, one of applicant’s two founders and principals,
applicant enters trades of U.S. securities for its customers

issue in the name of the correct entity.
Opposition No. 103,010
5
via the New York City office of U.S. Clearing Corporation
(an entity not related to applicant), which holds the
accounts for applicant’s customers and who serves as the
“clearing broker.” Most of applicant’s 120 clients are
individual investors, with only a small percentage of small
institutions.
An evidentiary dispute requires our attention before we
turn to the merits of the likelihood of confusion claim.
The parties have argued back and forth (dating back to
testimonial depositions) over opposer’s introduction of
certain evidence relating to the public’s awareness of
opposer’s CITI-prefix marks. Applicant essentially contends
that certain evidence be excluded because, in its view,
opposer failed to timely produce the evidence in response to
an interrogatory. The Board has considered fully the
respective positions of the parties on this matter, taking
into account both the arguments made during the testimony
depositions and in the briefs. Suffice it to say, we agree
with opposer’s arguments, and we have considered this
evidence in making our decision.2
In view of opposer’s ownership of valid and subsisting
registrations for its marks, there is no issue with respect

2 Even if this evidence were excluded, we would have reached the
same result on the merits of this case, given the other
significant evidence of record bearing on the renown of opposer’s
CITI-prefix marks.
Opposition No. 103,010
6
to opposer’s priority. King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Opposer has made the following registrations of
record: CITIBANK, CITIBANKING and CITI TREASURY MANAGER for
“banking services;” CITICARD for “banking services, namely
check cashing services;” CITICASH MANAGER for “banking
services provided by electronic means;” CITIACCESS for
“banking services; fiduciary representative services;”
CITIPHONE BANKING for “financial services, namely providing
banking services by telephone;” CITIPAY for “electronic
funds transfer services, namely automatic debiting of
checking accounts to pay credit card bills;” CITISELECT for
“mutual fund and investment management services;” CITIGOLD
for “banking services, investment consultation and asset
management;” CITIYIELD PLUS for “financial services, namely
cash and investment management services;” and CITINETTING
for “computer software used for the initiation and retrieval
of foreign exchange information” and “financial services in
connection with the consolidation and manipulation of
foreign exchange information provided by electronic means.”3
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are

3 The certified copy of opposer’s registration of CITITRADE for
“document and data processing services for facilitating
international trade” and “financing services for facilitating
Opposition No. 103,010
7
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors deemed
pertinent in this proceeding are discussed below.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the services. We turn first to
compare the services of the parties.
Both parties offer investment and brokerage services
under their respective marks. Opposer provides a broad
array of financial services, including more traditional
banking services. The record is replete, however, with
evidence showing that opposer renders the same types of
brokerage services as those identified in the involved
application. As spelled out by Brian Flynn, opposer’s
director of marketing communications, opposer’s goal is “to
deliver to the consumer an integrated financial
relationship” and, to that end, opposer offers consumers
investment planning, investment advice and investment
products and services that meet their needs. These services
are provided to consumers through opposer’s broker-dealer
arm, Citicorp Investment Services. There are a variety of
ways for consumers to invest through opposer, including at
CITIBANK bank branches, over the telephone and on-line.

international trade” shows that the registration was canceled for
Opposition No. 103,010
8
Applicant’s attempts to draw some meaningful
distinction between banking services and brokerage services
fall far short and ignore the realities of today’s financial
services industry. The record clearly shows that any
banking/brokerage distinction that might have existed in the
past is collapsing with the emergence of full service
financial institutions. In this connection, Mr. Flynn
testified that regulations in the industry have been
relaxed, as driven by consumer demand, and that
consolidation has occurred. As pointed out by Alice
Leopold, an employee of Citicorp Investment Services, banks
are now directly competing with the large brokerage houses,
with both offering the same types of products and services.
Opposer has recognized this emerging industry practice
and, to stay competitive, now offers a “package” of
banking/brokerage services under its CITIGOLD mark. Maureen
Eslinger, opposer’s marketing manager for this brand,
testified that banking, borrowing and brokerage services are
bundled to “meet our client’s needs from A to Z.” Ms.
Eslinger described CITIGOLD as a “kind of an all-in-one
account, one-stop shop in terms of banking, borrowing and
investing.” The simple fact is that consumers may avail
themselves of opposer's banking services and brokerage
services from the same person at the same branch, thereby

failure to file an affidavit of continued use under Section 8.
Opposition No. 103,010
9
rendering virtually meaningless any distinction pointed to
by applicant.
Applicant also contends that investors tend to be
sophisticated and that this will eliminate the likelihood of
confusion. We cannot agree with this proposition. Firstly,
as shown by the record, the parties’ services are rendered
to a wide range of consumers, with varying amounts of funds
to invest, including relatively small amounts. Secondly,
many investors, as shown by the testimony of opposer’s
witnesses, are relatively unsophisticated and, therefore,
want help in making investment decisions. Thirdly, as
testified to by Mr. Flynn, “empirical evidence would suggest
that in fact [consumers] don’t spend as much time choosing
through whom they invest. They spend much more time
deciding on what to invest in.” Lastly, sophistication
about investments does not extrapolate to sophistication in
distinguishing between trademarks. Given the legal
identity, at least in part, between the services here, and
the similar marks under which the services are rendered,
even sophisticated consumers likely would be confused. See,
e.g., Charles Schwab & Co. Inc. v. The Hibernia Bank, 665
F.Supp. 800, 3 USPQ2d 1561 (N.D. Cal. 1987) [likelihood of
confusion found between identical marks for brokerage’s
financial information computer program and bank’s home
equity line of credit--sophistication of consumers may even
Opposition No. 103,010
10
increase the likelihood of confusion inasmuch as they are
more aware of the deregulation and diversification of the
financial services industry].
In sum, the parties’ services are substantially similar
and, in certain respects, legally identical for purposes of
our analysis. The services would move through the same
channels of trade to the same classes of purchasers.
We next turn our focus to the similarity between the
marks. As noted above, the parties’ services are, at least
in part, identical. In such situations, “the degree of
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). We find applicant’s
mark CITYBROKER is sufficiently similar to opposer’s CITI-
prefix marks, that when used in connection with banking
and/or brokerage services, confusion is likely to occur in
the marketplace. The record shows that opposer uses, among
other marks, CITIBANK for banking, CITITRADE for securities
trading, CITICARD for bank card services and CITIPHONE
BANKING for telephonic banking services. Applicant’s
addition of the term “banker” to a CITY prefix in a unitary
format may very well lead consumers to believe that opposer
has branched out (which, in point of fact, it has done) to
offer brokerage services under the mark.
Opposition No. 103,010
11
Opposer’s marks, in particular the mark CITIBANK, and
applicant’s mark CITYBROKER are similar in sound and
appearance. Indeed, applicant admits that its mark “is
similar in appearance to opposer’s marks.” (brief, p. 30)
Although applicant puts stock in the I/Y letter difference,
our sense is that this minor visual difference will be lost
on many consumers, especially in view of the unitary format
of each mark. In any event, the difference is completely
lost when the marks are spoken. In finding that the marks
are similar, we have kept in mind the normal fallibility of
human memory over time and that consumers retain a general
rather than a specific impression of trademarks/servicemarks
encountered in the marketplace.
In addition, opposer introduced evidence that, on
occasion, it has promoted its marks as a play on the
commonly understood meaning of the term “city.” Such
promotions include “The CITI Never Sleeps,” “The CITI of
Your Dreams,” “Summertime in the CITI” and “We built the
CITI.” Such promotions would, in our view, enhance the
likelihood of confusion with applicant’s CITYBROKER mark.
We also find that the minor I/Y letter difference is
even further diminished in significance given opposer’s
proofs that it has developed a family of CITI-prefix marks.
A family of marks is a group of marks having a recognizable
common characteristic, wherein the marks are composed and
Opposition No. 103,010
12
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. Recognition of the family
is achieved when the pattern of usage of the common element
is sufficient to be indicative of the origin of the family.
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889 (Fed. Cir. 1991). Applicant has conceded
that opposer owns a family of CITI-prefix marks. (brief, p.
41) Moreover, the testimony (and related exhibits) of
opposer’s witnesses portrays a picture of extensive usage
and promotion of opposer’s various marks, all using the CITI
prefix, in association with the CITIBANK or CITICORP marks,
in advertising and at opposer’s branch offices.
It hardly need be said that the fame of opposer’s
family of marks is a critical du Pont factor in opposer’s
favor in this case. Kenner Parker Toys v. Rose Art
Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992) [“[F]ame of the prior mark plays a dominant role in
cases featuring a famous or strong mark.”] Indeed, the
record clearly establishes the widespread fame of opposer’s
CITIBANK mark and family of CITI-prefix marks in the
financial services industry. Opposer’s marks have been the
subject of extensive exposure in the marketplace. Opposer’s
claim that its family of marks is famous is supported by
truly impressive revenue figures, significant promotional
Opposition No. 103,010
13
expenditures, and a high degree of brand awareness. Having
found this, we nevertheless recognize that some members of
opposer’s family of marks do not appear to be as well known
as others.
Applicant’s evidence of third-party usage does little
in this case to diminish the fame of opposer’s family of
CITI-prefix marks in the financial services field. The bulk
of applicant’s evidence is in the nature of telephone
directory listings of entities whose names include the word
“City.” Suffice it to say that, unlike advertisements, mere
telephone directory listings are not evidence of service
mark use. See In re Broadway Chicken Inc., 38 USPQ2d 1559,
1565 (TTAB 1996). In any event, there are infirmities with
applicant’s evidence which limit its provative value, as for
example, some of the entities do not appear to be involved
in banking/brokerage services, and many of the entities use
“city” as part of a multiple-word name, not as a unitary
prefix. The other evidence relied upon by applicant (third-
party settlement agreements and National Association
Securities Dealers (NASD) membership list) likewise falls
short in showing any erosion in the widespread fame of
opposer’s marks. To the extent that there exist other
financial institutions using “city” in their name, it would
appear from the evidence and Mr. Flynn’s testimony that the
use is local in nature. See: Carl Karcher Enterprises Inc.
Opposition No. 103,010
14
v. Stars Restaurants Corp., 35 USPQ2d 1125, 1130-31 (TTAB
1995). See also: Citibank, N.A. v. The City Bank of San
Francisco et al., 206 USPQ 997 (N.D. Cal. 1980).
Another factor that bears upon our determination is the
circumstances surrounding applicant’s adoption of its mark.
Mr. Reichart testified that applicant’s prior name was JF
Capital Management, the “JF” portion signifying Josef Figl
who was the former owner of applicant. When Mr. Reichart
became the other owner, they wanted to give the company a
“more neutral name.” Mr. Reichart testified that no names
other than CITYBROKER were considered, and that CITYBROKER
has no meaning in German. While Mr. Reichart indicated that
the German word for “city” is “stadt,” he went on to state
that the English word “city” is a part of the language in
Germany.
Mr. Reichart’s testimony bearing on applicant’s
selection of CITYBROKER is revealing. At various points in
his testimony, Mr. Reichart offered different explanations
for the selection. The explanations included that the term
would be suggestive of a brokerage in the city of Munich, or
that the word “city” referred to the financial district in
London.4 At another point, Mr. Reichart indicated that the

4 We find these explanations a bit strained given the appearance
in applicant’s brochures of a pictorial representation of the
Statue of Liberty. Mr. Reichart explained that the image was
used to show a connection with the United States.
Opposition No. 103,010
15
term “city” referred to the area of a stock exchange in a
city.
A party which knowingly adopts a mark similar to one
used by another for similar goods and/or services does so at
its peril. In such cases, all doubt on the issue of
likelihood of confusion must be resolved against the
newcomer. Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc.,
889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989); Kimberly
Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144,
227 USPQ 541 (Fed. Cir. 1985); and Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Mr. Reichart
received much of his training in U.S. financial markets
while employed at Merrill Lynch, and Mr. Reichart appears to
be informed about the field in general. Here, Mr. Reichart,
one of applicant’s two owners, was well aware, prior to
applicant’s selection or the involved mark, of the uses of
opposer’s CITIBANK mark and certain other CITI-prefix marks
in the financial services industry. More specifically, Mr.
Reichart admitted he was aware that opposer was involved in
trading securities. Thus, out of an entire universe of
trademarks from which to choose, applicant chose, with full
knowledge of opposer’s marks, the mark CITYBROKER which is
similar to the marks used by opposer, with CITIBANK first
used forty years ago. Although Mr. Reichart states that he
did not think about opposer’s CIIYBANK or CITICORP marks
Opposition No. 103,010
16
when he selected CITYBROKER as applicant’s mark, we agree
with opposer that applicant’s choice of the format actually
used for its mark also sheds some light on applicant’s
intentions.5 See: Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed.
Cir. 1984)[“there is...no excuse for even approaching the
well-known trademark of a competitor, but to do so raises
‘but one inference--that of gaining advantage from the wide
reputation established by [the prior user] in the [services]
bearing the mark’...”; and Kenner Parker Toys Inc., supra at
1458.
Although the evidence falls a little short of
establishing a clear case of bad faith adoption, Mr.
Reichart’s explanations appear a bit weak. See: Tiffany &
Co. v. National Gypsum Co., 459 F.2d 527, 173 USPQ 793, 795
(CCPA 1972). In any case, given the other factors in
opposer’s favor in this case, this evidence certainly is not
dispositive in ruling for opposer.

5 Mr. Reichart’s denial that, at the very least, he was thinking
of opposer’s marks when he selected applicant’s mark, strains
credulity.
Opposition No. 103,010
17
We have reached our decision without giving any
probative value to opposer’s assertion that “there is some
evidence of actual confusion in the U.S.” Opposer points to
Ms. Eslinger’s testimony that when she first saw the
CITYBROKER mark she thought it identified a new service from
opposer, explaining that she thought the letter “Y” was
merely a typo. This testimony from an interested witness is
hardly the type of evidence of actual confusion that merits
any weight. On the flip side, the absence of evidence of
actual confusion does not trouble us in the least.
Consumers in this country have not been exposed to
applicant’s mark and, thus, there has been no opportunity
for actual confusion.
We also have reached our decision without giving any
probative value to the German Patent Office’s decision
allowing applicant’s mark.6 See, e.g., Societe Civile Des
Domaines Dourthe Freres V. S.A. Consortium Vinicole De
Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1207 n. 6 (TTAB
1988); and Beck & Co. v. Package Distributors of America,
Inc., 198 USPQ 573, 575 n. 4 (TTAB 1978).7 Likewise, the

6 To the extent that applicant points to the foreign tribunal
proceedings as validation of its good faith, the decisions, as
pointed out by opposer, were issued after applicant adopted its
mark.
7 The parties have expended some effort in arguing back and forth
over the relevance of evidence bearing on consumer understanding,
Patent Office proceedings, the meaning of terms in the German
language and the like in Germany. Simply put, the issue for us
Opposition No. 103,010
18
fact that NASD has allowed applicant to register as a member
notwithstanding the registration of opposer’s prior names is
of no moment in deciding the issue before us. Although the
parties’ stipulation reveals that NASD’s policy is that “no
person or firm shall be admitted to or continued in
membership in the [NASD] having a name which is identical to
the name of another member appearing on the membership roll
of the [NASD] or a name so similar to any such name as to
tend to confuse or mislead,” the record fails to show NASD’s
standards, if any, for their determination. In any event,
suffice it to say that the decision of a trade association
hardly is binding on the Board in making its own independent
assessment of likelihood of confusion under the Lanham
Trademark Act. Compare, e.g.: Bacardi & Co. v. Ron
Castillo, S.A., 178 USPQ 242 (TTAB 1973)[determination by
other government agencies not binding on the Board].
In sum, we conclude that purchasers familiar with
opposer’s wide range of financial services offered under
CITIBANK and a family of CITI-prefix marks would be likely
to mistakenly believe, upon encountering applicant’s mark
CITYBROKER for brokerage services, that the services
originated with or were somehow associated with or sponsored
by the same entity.

to consider is the likelihood of confusion among consumers in the
United States.
Opposition No. 103,010
19
Having determined that opposer is entitled to prevail
in this opposition based upon its Section 2(d) claim of
likelihood of confusion, we need not reach opposer’s
allegations regarding applicant’s lack of a bona fide
intention to use the mark in commerce. Moreover, there is a
dispute between the parties whether or not the non-pleaded
issue was even tried as contemplated by Fed. R. Civ. P.
15(b). Thus, in the interest of judicial economy, we elect
to consider neither whether the claim of the lack of a bona
fide intention to use the mark is properly before us, nor
the merits of such claim. See: American Paging Inc. v.
American Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB
1989), aff’d without opinion, 17 USPQ2d 1726 (Fed. Cir.
1990).
Decision: The opposition is sustained on the ground of
likelihood of confusion and registration to applicant is
refused on this basis.
T. J. Quinn
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
And Appeal Board