A district court decision last month denying a preliminary injunction in a trademark case, Citigroup v. AT&T Svcs., No. 16-cv-433-KBF (S.D.N.Y. Aug. 11, 2016), is notable for several reasons, one of which is that it underscores the effect of eBay v. MercExchange, 547 U.S. 388 (2006), in eliminating the presumption of irreparable harm. (Citigroup later dismissed its suit on Aug. 22, 2016.)
Citigroup sought to protect its trademark THANKYOU, used in its loyalty, redemption and rewards programs by enjoining AT&T over the use of the name AT&T THANKS marketing a similar rewards program for its customers. Citigroup’s mark, registered since 2004, was “incontestable,” so AT&T did not even challenge the validity of Citigroup mark.
The district court found that Citigroup had both failed to establish a likelihood of irreparable harm or a likelihood of success on the merits. The case teaches several important lessons about litigating trademark cases.