Lu Sorov.Citigroup, Inc.

Trademark Trial and Appeal Board

Apr 25, 2006

No. 92031572 (T.T.A.B. Apr. 25, 2006)

Goodman

Mailed: April 25, 2006

Cancellation No. 92031572

LU SORO1

v.

CITIGROUP, Inc.

Before Quinn, Walters and Rogers, Administrative Trademark
Judges.

By the Board:

Lu Soro (hereinafter petitioner or “Soro”) seeks
cancellation of Citigroup Inc.’s (hereinafter respondent or
“Citigroup”) registration for the mark CITIGROUP, registered
for a “full range of insurance and financial services;
banking services; credit card services; securities trading,
consulting and underwriting services; [and] investment
services” in International Class 36.2
As grounds for cancellation, Soro alleges priority of
use and likelihood of confusion.
In its answer, Citigroup has denied the salient
allegations in the petition to cancel and alleged certain
affirmative defenses.

1 Lu Soro is also known as Luis Soro.
2 Reg. No. 2406753, issued November 21, 2000, claiming October 8,
1998 as its date of first use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92031572
2
On May 22, 2002, the Board suspended proceedings
pending the final determination of the civil contempt action
between the parties.3 The civil contempt action has been
finally determined, and now before the Board are
petitioner’s motion, filed January 4, 2006, for summary
judgment on the ground of priority4 and respondent’s cross-
motion, filed January 23, 2006, for summary judgment based
on its affirmative defenses of petitioner’s lack of standing
and res judicata, specifically, collateral estoppel.5
Before turning to these matters, we will briefly
summarize the decision in Citicorp v. Citicorp Mortgage Co.
Inc. and Luis Soro and the decision in the subsequent
contempt proceeding, issued on May 14, 2003, because it
directly relates to the controversy before us, and because
the parties reference the case and the findings made in the
contempt proceeding in their motions for summary judgment.
On or about August 26, 1985, respondent’s predecessor,
Citicorp, filed a complaint in the United States District
Court in the Southern District of Florida, alleging

3 Citicorp v. Citicorp Mortgage Co. Inc. and Luis Soro, Case No.
85-2960-CIV, United States District Court, Southern District of
Florida. The civil contempt action was brought against Soro in
his individual capacity.
4 It is not entirely clear if Soro is moving for summary judgment
on both priority and the ground of likelihood of confusion. Soro
states in his one-page motion for summary judgment that he seeks
summary judgment based on the district court decision giving Soro
“undisputed first use with ultimate rights to Citigroup.”
5 The Board construes Soro’s filing titled a “motion to strike
respondent’s motion for summary judgment” as a response in
opposition thereto.
Cancellation No. 92031572
3
trademark infringement by Citicorp Mortgage Co., owned by
Soro. The complaint was later amended on March 5, 1987 to
add Luis Soro, the petitioner herein, as a defendant. On
September 9, 1987 the district court granted Citicorp’s
motion for summary judgment and entered a permanent
injunction against Citicorp Mortgage Co. and against Soro.
The permanent injunction, among other things, prohibited
Soro and Citicorp Mortgage Company from “using CITICORP as
part of a name or mark or using any other name or mark
confusingly similar to CITICORP, in connection with any
business which Defendants conduct, own or control” and
“holding themselves out as the owner of, or a person
authorized to use CITICORP or a name confusingly similar
thereto, as a service mark, trademark or tradename.”
After an appeal by Soro to the Eleventh Circuit Court
of Appeals, and a remand, the district court reconsidered
the grant of Citicorp’s motion for summary judgment as to
Soro. On October 6, 1988, the district court again granted
the motion for summary judgment against Soro, entering the
permanent injunction against Soro, and directing Soro to
“comply with the other directives contained in this Court’s
Summary Final Judgment dated September 8, 1987.” On April
3, 2002, Citigroup, respondent herein and successor in
interest to Citicorp, filed a motion in the district court
of the Southern District of Florida to find Soro in contempt
Cancellation No. 92031572
4
of court for violation of the permanent injunction entered
on October 7, 1988, based on Soro’s use of the names and
marks “Citigroup” and “Citicorp.” On May 14, 2003, the
district court issued an order granting the contempt motion
based on a finding that Soro had violated the permanent
injunction. The district court, in adopting the
magistrate’s report and recommendation, ruled that Soro
violated the permanent injunction and found, among other
things, that Soro has been using the name Citigroup “since
at least the mid-1990s”; that “‘Citigroup’ is confusingly
similarly [sic] to ‘Citicorp’”; that “use of the term ‘CITI’
as part of ‘Citigroup Mortgage Company’ is confusingly
similar to and not a safe distance from the world-famous
‘Citicorp’ mark, and therefore, violates the Injunction”;
and that Soro violated the injunction because he “did not
keep a ‘safe distance’ from the name ‘Citicorp’ when he used
the name ‘Citigroup Mortgage Company.’” The Court ordered
Soro to “immediately cease and desist from using the
Citigroup name.”
We now turn to Citigroup’s motion for summary
judgment.
Citigroup contends that in view of the district court
decision in Citicorp v. Citicorp Mortgage Co. and Luis
Soro and the decision in the subsequent contempt
proceeding, Soro has been held to have no rights in the
Cancellation No. 92031572
5
mark CITIGROUP, and therefore, Soro lacks standing to
bring the cancellation proceeding before the Board.
Citigroup further argues that even if Soro is found to
have standing, he is collaterally estopped from bringing
the cancellation due to the district court’s finding in
Butthe contempt proceeding that Soro did not have priority
of use of the CITIGROUP mark and that Soro’s use of the
CITIGROUP mark was confusingly similar to Citigroup’s CITI
marks.6
In response, Soro argues that the district court found
that Soro, not Citigroup, has priority.7
Summary judgment is an appropriate method of disposing
of cases in which there is no genuine issue of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The party
moving for summary judgment has the initial burden of
demonstrating the absence of any genuine issue of material

6 As evidence, respondent has provided a declaration of its
counsel, Kenneth Plevan, with accompanying exhibits which
include the following: September 9, 1987 district court order
granting Citicorp’s motion for summary judgment on the ground
of trademark infringement and entry of permanent injunction
against Citicorp Mortgage Co. and Soro; October 6, 1988, motion
for summary judgment and subsequent opinion (after remand from
Eleventh Circuit court of appeals) granting Citicorp’s motion
for summary judgment and entering permanent injunction against
Soro; March 26, 2003 magistrate’s Report and Recommendation
recommending Citicorp’s motion for contempt be granted; and May
14, 2003 district court opinion granting Citicorp’s contempt
motion for Soro’s violation of permanent injunction.
7 Soro’s arguments are directed to the issue of priority of use
rather than standing, which requires a showing of a real interest
to bring this proceeding.
Cancellation No. 92031572
6
fact. See Celotex Corp. V. Catrett, 477 U.S. 317, 322-324
(1986). The evidence must be viewed in a light most
favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant's favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993). If the party moving for
summary judgment carries its initial burden, and the
nonmoving party fails to make a sufficient showing on an
essential element of its case with respect to which it
would have the burden of proof at trial, judgment as a
matter of law may be entered in favor of the moving party.
See Fed. R. Civ. P. 56(c); Fram Trak Industries Inc. v.
WireTracks LLC, 77 USPQ2d 2000, 2004 (TTAB 2006) (citing
Celotex Corp, supra).
Because standing is a threshold issue that must be
proven by a plaintiff in every inter partes case, Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999)
and Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982), we turn first to the
question of whether respondent has shown that there is no
genuine issue of material fact as to Soro’s lack of
standing to bring this cancellation proceeding.
The purpose of the standing requirement, which is
directed solely to the interest of the plaintiff, is to
prevent litigation when there is no real controversy
Cancellation No. 92031572
7
between the parties. Lipton Industries, Inc., 213 USPQ at
189. In the case of a petition to cancel, the standing
requirement of a plaintiff has its statutory basis in
Section 14 of the Act which provides that “any person who
believes he is or will be damaged . . . by the
registration of a mark on the principal register . . .”
may file a petition to cancel.
To establish standing, it must be shown that the
plaintiff has a “real interest” in the outcome of a
proceeding; that is, plaintiff must have a direct and
personal stake in the outcome of the cancellation.
Ritchie, 50 USPQ2d at 1023. Facts regarding the
legitimate personal interest are a part of the plaintiff's
case and must be proved. Lipton Industries, 213 USPQ at
189.
With regard to a Section 2(d) claim under 15 U.S.C.
Section 1052(d) of the Trademark Act, Soro, at trial,
would need to show that he has a real commercial interest
in the CITIGROUP mark or trade name, plus a reasonable
basis for his belief that he would be damaged by the
CITIGROUP registration to establish standing. Chemical
New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d
1139, 1142 (TTAB 1986). When pleading allegations
relative to standing, the plaintiff's belief in damage
must have some reasonable basis in fact. Universal Oil
Cancellation No. 92031572
8
Products Co. v. Rexall Drug and Chemical Co., 463 F.2d
1122, 174 USPQ 458, 459-60 (CCPA 1972).
In this case, we find that there is no genuine issue
of material fact that Soro lacks a legitimate commercial
interest in the CITIGROUP mark and that, as a result, his
belief in damage resulting from an alleged likelihood of
confusion between his asserted mark and respondent's mark
is wholly without merit. Under the terms of the permanent
injunction, Soro and his company cannot establish that he
has a right to use the CITIGROUP mark or trade name as he
and his company are permanently enjoined from “using
CITICORP as part of a name or mark or using any other name
or mark confusingly similar to CITICORP, in connection
with any business which Defendants conduct, own or
control” and “holding themselves out as the owner of, or a
person authorized to use CITICORP or a name confusing
similar thereto, as a service mark, trademark or
tradename.” The district court decision in the contempt
proceeding established that any use by Soro of the mark or
trade name CITIGROUP violates the terms of the permanent
injunction because CITIGROUP is “confusingly similar to
and not a safe distance from the world-famous ‘Citicorp’
mark.” Therefore, we find that there is no genuine issue
of material fact that Soro is prohibited by the terms of
the permanent injunction from using Citicorp or any mark
Cancellation No. 92031572
9
or trade name confusingly similar, which includes the mark
or trade name “Citigroup.”8 As a result, under the terms
of the permanent injunction, Soro, as a matter of law, has
no standing to maintain this proceeding because he lacks a
legitimate commercial interest in the CITIGROUP mark and
cannot prevail herein. See e.g., Coup v. Vornado Inc., 9
USPQ2d 1824 (TTAB 1988) (petitioner’s failure to prove
standing warrants grant of summary judgment for
respondent).
Inasmuch as Soro is barred by the permanent injunction
from use of the CITIGROUP mark, we find that there is no
genuine issue of material fact as to Soro’s lack of
standing to bring a petition to cancel against the
involved registration, and that Citigroup is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(c).
Petitioner, as the nonmoving party in regard to
Citigroup’s motion, has failed to show in response thereto
that there is a genuine issue for trial in regard to
petitioner’s standing. In view of our finding of Soro’s
lack of standing, we need not consider Soro’s motion for
summary judgment.

8 In view of our finding on the threshold issue of standing, we
need not reach the merits of Citigroup’s second argument
regarding collateral estoppel.

Cancellation No. 92031572
10
Accordingly, Citigroup’s motion for summary judgment
is granted on the basis of lack of standing; judgment is
entered against Soro based on his lack of standing; and
the petition to cancel is denied.