Citibank, N.A. v. Citytrus

756 F.2d 273 (2nd Cir 1985)

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Nature of the Case

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Facts

P has obtained federal and state registrations for the name, 'Citibank', and for more than twenty additional names using the 'Citi' prefix, such as 'Citiquote', 'Citicash', 'Citibanker', 'Citiphone', 'Citipak', 'Citilights', and 'Citiwheels'. Citibank is a wholly-owned subsidiary of plaintiff Citicorp, a bank holding company. D is a small, localized banking association, is chartered under the laws of the state of Connecticut. It, too, provides a range of commercial and consumer banking services, although on a smaller scale than P. First established in 1854 as 'Bridgeport City Bank,' D began using the words 'City Trust' as part of its legal name in 1929 and continued that use through 1971. At that time, D became a national bank and operated under the name 'City National Bank of Connecticut' until 1977. It claims to have continued to use the words 'City Trust' to identify itself and its services while it was a national bank. When it reverted to state bank status in 1977, it adopted its current legal name, 'Citytrust.' D is a wholly-owned subsidiary of defendant Citytrust Bancorp, Inc., a bank holding company. P and D have engaged in a substantial amount of business with each other over the past four decades. D decided to establish a commercial lending office on Long Island. P then filed the instant complaint alleging violations of §32 of the Lanham Act, 15 U.S.C. §1114 (infringement of federal service marks and trademarks); § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (false designation of origin); § 368-b of the New York General Business Law (injury to business reputation and dilution); unfair competition and infringement of common law trademark rights. P sought damages and a permanent injunction barring D from any use of the name 'Citytrust' anywhere. P moved for a preliminary injunction to enjoin Ds from using the name 'Citytrust' in identifying or referring to the Melville office, or any other offices subsequently established in New York State. They also sought an order prohibiting the D from increasing the type, frequency, or prominence of any media advertising in the state of New York above that existing prior to the opening of the Melville office. The district court granted the requested preliminary relief. It was later modified. D filed a notice of appeal from the modified order and sought a stay of the injunction pending appeal.