August 25, 2016
Do “THANKS” or “THANK YOU” warrant trade mark protection?
Do “THANKS” or “THANK YOU” warrant trade mark protection?
US trade mark infringement proceedings over the use of the term “Thanks” are reported to have been dropped.  The action was brought by Citigroup against the telecoms company AT&T for the alleged infringement of their US trade mark registrations, including “ ThankYou” and “Citi ThankYou”, both registered in relation to customer loyalty, reward and incentive programs. On 11 August 2016, the US District Court judge flatly rejected Citigroup’s claims that AT&T’s use of “AT&T Thanks” was likely to cause confusion with their marks, hence constituted unfair competition, false designation of origin, and trade mark infringement. Citigroup’s request for a preliminary injunction was therefore denied, ultimately leading to both parties dismissing their claims, and counterclaims, against one another “with prejudice”.   A “with prejudice” dismissal means that the parties cannot initiate proceedings over the same issue again in the future. Numerous media sources have reported the action as being “bizarre” and “lacking in common sense”, most probably because the dispute concerns an everyday English word that is used for conveying gratitude.  Naturally, AT&T countered that the New York-based bank had “no monopoly over the word thanks"" and many have argued that litigating over how they each thank their customers is the “dumbest trade mark dispute ever”. Of course, if the terms are just being used to convey thanks, then clearly they are not being used as trade marks, i.e. as badges of trade origin, and should be vulnerable to revocation. However, the legal issue here is really whether the marks are distinctive in relation to the provision of the services in relation to which they are registered, and if so, are they similar (visually, phonetically and conceptually) such that customers are likely to confuse them. Common everyday words, such as APPLE, PENGUIN or BLACKBERRY, are all perfectly registrable as trade marks, providing that they are not descriptive of the relevant goods/services for which they are used. But is “ThankYou” distinctive in relation to customer reward programs? Well, the USPTO clearly thought so, and it is reported that Citigroup have been using the marks in question since 2004, so one would imagine that they have since acquired a number of years of goodwill and considerable evidence of acquired distinctiveness at the least. It is interesting to note that, despite AT&T’s protests on the issue, a brief search of the US Patent & Trade Mark Office (USPTO) Register reveals that they have themselves since applied to register “AT&T THANKS” as a US trade mark.
Trademarks /  Telecoms /  Disputes

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