Just last week, AT&T launched a new loyalty program, AT&T Thanks. Citi was obviously not pleased, because it had already obtained USPTO approval for the registered trademark "ThankYou" back in 2010, and that trademark
A quick USPTO search shows that Citi has registered "ThankYou," "Citi ThankYou," "ThankYou by Citi," "ThankYou Rewards," "ThankYou Network," and "ThankYou Point." The trademark classes include both "credit cards" and the "loyalty program" category shown below, which does seem to overlap with "AT&T Thanks."
We obtained Citigroup’s complaint in the case Citigroup Inc v. AT&T Inc et al, which Citigroup filed in the U.S. District Court for the Southern District of New York.
Contents [Hide]
Citi’s Main Requests
- Preliminary and permanent injunctive relief, barring AT&T from using the registered trademark "THANKYOU," any trademark containing "Thanks," and any other trademark likely to cause confusion with "THANKYOU";
- An order requiring AT&T to destroy materials, advertisements, domain names, and other items related to "Thanks".
- A declaration that AT&T infringed Citi’s trademark, and that the infringement was willful.
- General damages and punitive damages. Because the infringement was allegedly willful, Citi is also seeking an additional 2x damages.
The Relationship Between Citi and AT&T
The future of the Citi AT&T card is naturally what most readers care about most. This card has appeared and disappeared on Citi’s website many times, which makes it hard not to wonder whether that has something to do with the litigation between the two companies. In the complaint, Citi mentions that it and AT&T had already partnered to launch their first credit card back in 1998. Citi argues that the companies have often marketed together, making AT&T Thanks more likely to be confused with THANKYOU. If Citi wins this lawsuit, or if the two sides reach a negotiated settlement, it probably will not have a major impact on their partnership. But if Citi loses, it may have to live with AT&T continuing to use "Thanks." Since co-branded credit cards are generally governed by contract, the parties could choose not to renew. Existing Citi AT&T cards could also potentially be force-converted, and new welcome bonuses might be cut substantially, potentially leading to the disappearance of a once-great card for online shopping.