Burden of Proving Non-Use Rests with Party Opposing Registration

In Spireon, Inc. v. Flex Ltd., No. 22-1578 (Fed. Cir. June 26, 2023), the Federal Circuit vacated and remanded the TTAB’s decision sustaining Flex’s opposition to the registration of Spireon’s FL FLEX mark on the ground of likelihood of confusion with Flex’s earlier registered marks, FLEX, FLEX (stylized), and FLEX PULSE.

Likelihood of confusion is a question of law, based on underlying factual findings related to thirteen factors (“the DuPont factors”) set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The Board analyzed several DuPont factors and concluded that there was a likelihood of confusion. Spireon appealed.

The Federal Circuit held that the Board failed to consider all relevant evidence regarding the sixth DuPont factor: the number and nature of similar marks in use on similar goods. The Board erred in excluding evidence of fifteen third-party registrations on the grounds they were composite marks (marks containing multiple words). Those marks were relevant to whether the word “flex” (shared by FL FLEX and Flex’s marks), has a commonly understood descriptive or suggestive meaning in the field and whether there is a crowded field of marks “in use.” Proof of use or non-use is material because the sixth DuPont factor only considers similar marks “in use” on goods. The Federal Circuit held that while Spireon bears the burden of producing evidence of relevant registrations, Flex, as the party that filed the opposition, bears the burden of proving non-use of those third-party marks. Finally, the Federal Circuit held that the Board erred in its analysis by mistakenly comparing Spireon’s mark FL FLEX to FLEX PLUS (which is not owned by Flex), instead of FLEX PULSE, one of Flex’s registered marks.