Two months ago, Citi sued AT&T — not over some huge multimillion-dollar account or bad business deal, but over AT&T’s daring use of the word “Thanks” in a new loyalty program. The bank asked a federal court to bar the phone giant from using the disputed term pending the outcome of the case, but the judge has shot that request down.
At issue is Citi’s trademark over its “ThankYou from Citi” credit card rewards program and AT&T’s recently launched “AT&T Thanks” loyalty program.
Citi had sought a preliminary injunction against AT&T, initially arguing that it did not learn of the the “Thanks” program until it was announced in June.
AT&T countered that Citi learned of the program’s name four months earlier, and the judge noted that the evidence showed that Citi certainly knew of the “Thanks” name on March 25, when a bank employee said in a meeting that “AT&T made it clear that its current plan was to use AT&T THANKS as a customer-facing name for its loyalty program.”
Additionally, notes the judge in his ruling [PDF], AT&T not only publicly filed to trademark its new program’s name in April, that trademark is for the entire phrase “AT&T Thanks.”
Even if the AT&T Thanks name had been a complete surprise to Citi, the judge says that the bank has not yet shown “evidence of actual confusion by consumers.”
In an attempt to support its argument of irreparable harm, Citi had submitted online complaints about the AT&T Thanks program. This, said the bank, was evidence that AT&T’s use of the “thanks” mark could reflect negatively on Citi.
Yet the judge found that Citi was making the opposite case by presenting these complaints.
“In the Court’s view, these examples tend to disprove, rather than bolster, Citigroup’s theory of irreparable harm,” writes the judge. “All of the complaints Citigroup has compiled are attached to announcements of the ‘AT&T thanks’ loyalty program, but most relate to aspects of AT&T’s core telecommunications services, such as phone purchase options and data plan prices, rather than the loyalty program itself. Where these online comments do discuss the loyalty program, they compare it to loyalty programs offered by other telecommunications companies.”
So because the public is already associating the AT&T Thanks name with AT&T and comparing the program only to loyalty programs from AT&T’s direct competitors, the judge found that “there is minimal risk that consumers will tend to reevaluate their goodwill toward Citigroup’s THANKYOU program.”
Furthermore, the judge asked, if being associated with AT&T is so toxic, why has Citi partnered with AT&T for nearly 20 years on various co-branded payment cards?
“It is demonstrably the case that there exists some agreement, financial or otherwise, by which each party has agreed to be at least somewhat associated with the other,” reads the ruling.
Additionally, because Citi waited at least three months between learning of AT&T Thanks and filing the lawsuit, the judge found that Citi’s claim to irreparable harm was tough to swallow. After all, if you believe such harm is going to occur, why wait until after the program is launched to seek an injunction?
With regard to the strength of Citi’s case, the judge noted that it seems unlikely that consumers would be confused by the two marks, especially since the phone company’s program includes the name “AT&T” in the pending trademark.
Similarly, though both “ThankYou” and AT&T Thanks are names for loyalty programs, the judge found it unlikely they would be confused as “Citigroup and AT&T simply are not competitors.”
All of this doesn’t mean that Citi couldn’t ultimately win its case, but the judge is telling the bank that its odds of success are not promising at this point, which is why AT&T gets to continue using the “Thanks” name for now.