CAFC Sends Another "FLEX" Decision Back to the Board to Re-Consider Strength-of-Mark Analysis
In a non-precedential opinion, the CAFC affirmed-in-part, reversed-in-part, and remanded the Board's decision [here] sustaining an opposition to registration of Applicant Bad Elf's mark FLEX for "Global positioning system (GPS) apparatus; Global positioning system (GPS) receivers," on the ground of likely confusion with the registered marks FLEX, FLEX (Stylized), and FLEX PULSE for custom manufacture of electronics, engineering services and new product development services. The court found that the Board erred in its analysis of the strength of opposer's FLEX mark. Bad Elf, LLC v. Flex Ltd., Appeal No. 2022-1839 (Fed Cir. August 14, 2023) [not precedential].
This case was argued on the same day as Spireon, Inc. v. Flex Ltd., a precedential opinion in which the CAFC held that the Board erred in considering the strength of the same Flex's marks, and so it vacated and remanded. [TTABlogged here]. The parties in the instant case were ordered by the CAFC to submit supplemental briefing as to what bearing the Spireon decision had on this case.
In Spireon, the court held that "where the third party marks are identical marks for identical goods or services as the opposer, absent evidence of non-use for the commercial strength analysis, the marks must be given substantial weight in both the conceptual strength and commercial strength analyses." Furthermore, when the applicant's mark and opposer's mark are not identical and the opposer does not prove non-use of the third-party registered marks, “the commercial strength of the [opposer’s] marks must be considered weak as to [the applicant’s] non-identical mark."
Here, the opposer's mark and the third-party marks are identical, but Bad Elf's goods and opposer's services are not identical. "Therefore, we come to the same conclusion as we did in Spireon, that is, that the conceptual and commercial strength of the opposer's mark is substantially diluted."
The court also noted an inconsistency in the Board's analysis of the conceptual strength of opposer's FLEX mark. The Board found that several third party registrations had "some probative value" but then said that they were "insufficient in number to be probative."
As to opposer's FLEX PLUS mark, the Board made the same error in assessing its strength. The Board was ordered to reconsider the strength of that mark as well.
And so, the CAFC vacated the Board's decision "with respect to the Board’s analysis as to the strength of Flex’s marks" and it remanded to the Board "to reconsider this DuPont factor (and then to reweigh the DuPont factors) in light of this opinion and Spireon." The court affirmed all other aspects of the Board's Section 2(d) analysis.
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TTABlogger comment: I'll bet the Board comes out with the same conclusion as the first time.
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 8/16/2023
2 comments
2 Comments:
The court also said that if the plaintiff's mark is considered weak, this may affect the finding about the similarity of the marks. In other words, the 6th duPont factor may have a bearing on the first duPont factor. I wonder if there is any precedent for this. I don't recall a situation where the Board or the court had to revisit one factor in view on another.
Anonymous made the exact comment I was going to make but I held back. Now I can't help but at least write into the void if this doesn't make it to posting. This is something that has been driving me crazy for a long time (if I was from the South I'd have just said "sticking in my craw" so as to not give away my true mental state). Sometimes the Board decides to treat the 'similarity of the marks' factor completely independent of 'factor 5/6' or the "non-existent factor used for weighing the two components of strength of the mark" (which is yet another craw sticking issue for another time) and sometimes they do what they did here. Take your pick and stick with it please. I do think that there is a valid interplay since the similarity of the marks must always be considered in light of the relative strength of the prior mark and/or particular words therein. In THEORY it does make a difference because one must weigh all the factors but in practice it probably gets considered the same way regardless of how they state it.
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