Federal Circuit Affirms TTAB’s Refusal of STRATUS Mark

In Stratus Networks, Inc., v. UBTA-UBET Communications Inc., No. 2019-1351 (Fed. Cir. Apr. 14, 2020), the Federal Circuit affirmed the TTAB’s decision denying registration of Stratus’s trademark on the grounds of a likelihood of confusion with UBTA’s registered trademark.

Stratus and UBTA are both telecommunication providers. Stratus filed an application seeking to register its STRATUS mark. UBTA opposed the registration alleging a likelihood of consumer confusion with its registered STRATA mark.
 


The Board considered the thirteen DuPont factors and concluded that six of the factors were relevant to UBTA’s opposition. In weighing these factors, the Board determined that the marks were similar in appearance and sound and that Stratus’s mark would likely cause consumer confusion when used in association with its services.

On appeal, the Federal Circuit affirmed the Board’s likelihood of confusion determination. The Court found that the “absence of explicit findings on a given DuPont factor does not give rise to reversible error” where “the Board considered that factor and the corresponding arguments and evidence.” The Court held that the Board’s decision as a whole was supported by substantial evidence. In addition, the Court found that the Board did not commit legal error by declining to make an express finding as to each DuPont factor, noting that while the Board must consider each factor, it “may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of goods.”  With respect to the eight DuPont factor, the Court noted that although the record showed that the parties’ marks coexisted for over six years without evidence of actual confusion, and the parties offered “similar services in similar trade channels,” the parties’ services did not geographically overlap. The Court explained that because consumers were not exposed to both trademarks during the relevant time periods, the actual confusion factor is less significant to a likelihood of confusion analysis, and held that the Board did not legally err in its decision on actual confusion.