No Thank You: Trademarking Common Phrases
Thanking your customers seems like a pretty important business practice. After all, what business could exist without them? Citigroup Inc. may have a leg up on the competition, because, according to them, their trademark on the phrase “thankyou” prevents other from using “thank you” or even “thanks” in their marks.
Citibank has had the phrase “thankyou” protected through several different trademarks since 2004. It uses the marks as part of a loyalty and rewards program it offers its customers. On June 2, AT&T started using the term “AT&T thanks” as part of its own rewards program. In response, Citibank filed suit. They argue AT&T’s use will confuse Citibank consumers given how long they’ve been using the “thankyou” mark. They say this is especially true because AT&T and Citibank have credit cards that are branded by both companies.
AT&T has responded to this lawsuit, saying “This may come as a surprise to Citigroup, but the law does not allow one company to own the word ‘thanks’ …we’re going to continue to say thanks to our customers.” This statement is a bit ironic, considering that AT&T recently got a trademark on their “Thanks” and “AT&T Thanks” marketing campaigns. However, understanding how trademarks work may clarify their statements a bit.
Trademarking Miss Manners?
Citibank’s lawsuit claims that the AT&T mark infringes their own “thankyou” mark. They are asking the court to put a stop to AT&T’s marketing campaign and order AT&T to pay them an unspecified amount of damages. At first glance, this looks patently ridiculous. The idea of one company controlling the use of something as basic as saying “thank you” seems impossible. However, the legal realities of the situation may surprise you.
Trademarks provide protection to marks and logos with the goal of preventing others from freeriding on the good will you build around a brand. They can be a word, phrase, symbol, or design that identifies the source of goods or services.
To be clear, trademark doesn’t prevent you from using these phrases in your day to day life. Having a trademark on a word or phrase also doesn’t necessarily lock everybody else out of the mark. A trademark is specific to the genre of product you actually make and the places you actually sell or may sell it. For instance, there are six different companies that have a trademark on the word “trademark.” However, registering a trademark is not the same as having an enforceable trademark. It’s fairly common for trademarks to be taken to court only to be rendered invalid.
Where a competitor uses an exact replica of your mark, there is a pretty open and shut case of trademark infringement so long as you have registered a valid trademark. On the other hand, when two marks are similar, the trademark infringement analysis gets a bit more complicated. The focus becomes how likely it is that people who would buy your products might confuse the alleged infringer’s products for your own. The more similar the marks are in appearance, and the more similar the products the marks are on, the easier it is to establish confusion.
Another important element in a trademark infringement case is the strength and nature of the infringed mark. The strength of the mark, how well known the mark is, changes how easily somebody might be confused. In analyzing the nature of a mark, the courts look to how creative it is. A mark that is arbitrarily related to the product it is associated with, or has a totally made up name, would receive the strongest level of protection. A mark that suggests the product would receive a lower level of protection, while a mark that describes the product could only receive protection after the public begins associating the mark with the public. Finally, a mark that actual defines the product gets no protection whatsoever.
Common phrases are not outright barred from receiving protection. In fact, they receive the same analysis that any other mark might—looking at whether they are arbitrary, fanciful, descriptive, or generic in relation to the product they are associated with. This being said, after the Boston Marathon bombing in 2014, the USPTO refused to give trademarks to the phrase “Boston Strong.” The thought process behind this was that it was so commonly used in day to day speech, from so many different sources, that the public couldn’t identify the phrase with one business.
In a rewards program, with the goal of thanking customers, “thankyou” is likely descriptive at best. What’s more, while Citibank has used thank you for many years, it seems unlikely that they are what the average consumer associates with the phrase. What’s more, if the phrase “Boston Strong” was so integrated into the public consciousness as to be ineligible for trademark, then the phrase thank you would almost certainly raise the same issues.
Even if the trademark can receive protection, proving confusion seems extremely difficult here. A large part of a trademark infringement claim is establishing that consumers will confused as to the source of goods. The AT&T mark has “AT&T” right in the name, it seems unlikely somebody would think it’s coming out of Citimark.
However, this is not an open and shut case—despite how ridiculous it seems. The fact that Citigroup’s marks are registered gives them a presumption of validity. In other words, it will be AT&T who needs to prove that the “thankyou” marks are invalid. What’s more, the fact that AT&T and Citigroup have done business together—combining their branding on credit cards—could contribute to a consumer being confused.
Frankly, this case is a silly one. However, the fact that the U.S. Trademark and Patent Office has granted Citimark’s trademarks—and that they have used them for so long—makes this more of an uphill battle for AT&T then you would expect. As this case progresses, it has a chance to create case law redefining how trademark deals with especially common phrases.