Monday, March 31, 2014

CAFC Affirms TTAB: STONE LION CAPITAL Confusable With LION and LION CAPITAL for Financial Services

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) sustaining an opposition to registration of the mark STONE LION CAPITAL for "financial services, namely investment advisory services, management of investment funds, and fund investment services." The Board found the mark likely to cause confusion with the registered marks LION and LION CAPITAL for (in part) identical financial services. Stone Lion Capital Partners, L.P. v. Lion Capital, LLP, 110 USPQ2d 1157 (Fed. Cir. 2014) [precedential].


Stone Lion challenged the Board's finding as to the first, third, and fourth duPont factors, contending that the Board conducted an erroneous comparison of the marks, erred in analyzing the purchasers and trade channels, and  improperly dismissed purchaser sophistication and conditions of sale.

As to the marks, the court found that the Board properly considered whether the marks were similar in sight, sound, meaning, and overall commercial impression. There was no error in reasoning that LION was dominant in the parties' marks, and the Board properly rested its ultimate conclusion upon a consideration of the marks as a whole.

Stone Lion argued that the Board gave insufficient weight to statements made by the opposer during prosecution of its LION CAPITAL application when distinguishing a third-party mark, ROARING LION. The court, however, observed that a party's prior statements may be "illuminative of shade and tone in the total picture" but do not change the Board's obligation to reach its own conclusion on the record before it. [Citing Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F. 2d 926, 929 (CCPA 1978)].

With regard to the third duPont factor, the Board noted that the involved application and registration contained no limitations on the channels of trade or classes of customers, and it therefore presumed that the parties' services travel through all normal channels of trade to the same classes of customers.

Stone Lion contended that the Board's findings were not supported by substantial evidence because the parties' actual investors did not overlap. However, the court pointed out, the question of registrability of an applicant's mark must be determined in view of the recitation of services set forth in the application, regardless of real-world conditions. Even if there were no actual overlap in the parties' customers, the Board was correct in declining to look beyond the application and registrations at issue.

Similarly, as to the fourth duPont factor, the Board properly focused on all potential customers for the involved services as recited in the application and registrations. Stone Lion's application included "investment advisory services," and Lion's registrations included "capital investment consultation." Those services are not restricted to high-dollar investments and sophisticated consumers but rather could be offered to, and consumed by, ordinary consumers seeking investment advice. The court observed that applicants who choose to recite services in their trademark applications that exceed the scope of their actual services "will be held to the broader scope of the application."

Substantial evidence supported the Board's finding that, although ordinary consumers will exercise care when making financial decisions, they "are not immune from source confusion when similar marks are used in connection with related services."

In sum, the Board properly determined that the first four duPont factors favored a finding of likely confusion, and the remaining factors were neutral. And so the appellate court affirmed the Board's decision.

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Text Copyright John L. Welch 2014.

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