April 2014
Court Affirms TTAB’s Reliance on Scope of Services Recited in Trademark Application When Denying Registration of Mark for Likelihood of Confusion
| Judges: Rader, Reyna, Wallach (author) |
| [Appealed from TTAB] |
In Stone Lion Capital Partners, L.P. v. Lion Capital LLP, No. 13-1353 (Fed. Cir. Mar. 26, 2014), the Federal Circuit affirmed the TTAB’s decision refusing registration for Stone Lion Capital Partners, L.P.’s (“Stone Lion”) mark “STONE LION CAPITAL” due to a likelihood of confusion raised by opposer Lion Capital LLP (“Lion”) regarding its registered marks “LION CAPITAL” and “LION.”
Lion, a private equity firm, began using the marks “LION CAPITAL” and “LION” in the United States in April 2005, and the PTO granted registration for the marks in December 2008 and June 2009, respectively. The services listed in connection with Lion’s trademark registrations include “‘financial and investment planning and research,’ ‘investment management services,’ and ‘capital investment consultation’ for ‘LION’; and ‘equity capital investment’ and ‘venture capital services’ for ‘LION CAPITAL.’” Slip op. at 2 (citation omitted).
Like Lion, Stone Lion is an investment management company. Lion, however, is based in the United Kingdom and invests in consumer product companies, whereas Stone Lion is a New York-based firm that manages a hedge fund concentrated on credit opportunities.
In 2008, Stone Lion filed an intent-to-use application for the mark “STONE LION CAPTIAL” for use in connection with “financial services, namely investment advisory services, management of investment funds, and fund investment services.” Id. at 3 (citation omitted). Asserting section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), Lion opposed the registration on the basis that Stone Lion’s proposed mark would be likely to cause confusion with its registered marks. Relying on the thirteen “likelihood of confusion” factors from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), the TTAB refused Stone Lion’s application after deciding that the first four DuPont factors favored finding a likelihood of confusion and that the remaining factors did not weigh strongly for either party.
On appeal, Stone Lion challenged the TTAB’s findings on DuPont factors one, three, and four. The Court affirmed the TTAB’s findings on each of these factors, rejecting Stone Lion’s pleas to look at evidence outside of the trademark application.
“Although recognizing that Stone Lion and Lion in fact require large minimum investments and target sophisticated investors, the Board focused on the sophistication of all potential customers of ‘the parties’ services as they are recited in the application and registrations, respectively.’” Slip op. at 11 (citation omitted).
Regarding the first DuPont factor, the similarity of the marks, the Court found no fault in the TTAB’s assessment of similarity in sight, sound, meaning, and overall commercial impression of Stone Lion’s proposed mark to opposer Lion’s registered marks. In response to Stone Lion’s argument that the TTAB improperly failed to analyze the commercial impression of the mark as a whole by placing emphasis on the word “LION,” the Court held that the TTAB’s decision to place more weight on this word was proper so long as the ultimate conclusion depended on the consideration of the entire mark, as was the case here.
The Court likewise held that the TTAB properly assessed the third DuPont factor, the similarity or dissimilarity of established or likely-to-continue trade channels. Stone Lion argued that the TTAB failed to assess the relevant individuals within the trade channels because there was no overlap between Lion’s and Stone Lion’s actual customers. The Court, however, noted that the TTAB’s determination was correct because its focus was on the trademark application and registered marks at issue rather than on “real-world conditions.” Slip op. at 10.
Similarly, the Court explained that the TTAB’s analysis was also correct concerning the fourth DuPont factor because it focused on the scope of the services listed in the trademark application. The fourth DuPont factor considers the conditions under which, and the consumers to whom, sales are made.
Specifically, the fourth DuPont factor assesses whether the good or service requires careful, sophisticated purchasing or is likely to be purchased on impulse. Despite the fact that Stone Lion and Lion often dealt only with sophisticated consumers because their services required a large minimum investment, the Court concluded that, in making its determination, the TTAB correctly focused on the sophistication of all potential investors as recited in the trademark application and registration. Stone Lion’s application was for a broader category of services, such that the application could encompass less sophisticated customers as well. The TTAB’s reliance on the application’s broader scope of services recited was correct, the Court noted, because the “benefits of registration are . . . commensurate with the scope of the services recited in the application, not with the applicant’s then-existing services.” Id. at 13. Thus, the Court concluded, the TTAB properly considered all potential investors because TTAB “precedent requires the decision to be based ‘on the least sophisticated potential purchasers.’” Id. at 15 (quoting Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 U.S.P.Q.2d 1584, 1600 (T.T.A.B. 2011), judgment set aside on other grounds, 2014 WL 343267 (T.T.A.B. Jan 22, 2014)).
*Ellie B. Atkins is a Law Clerk at Finnegan.
