Docket No. 2013-1353
RADER, REYNA, WALLACH
March 26, 2014
Brief summary: TTAB decision refusing to register “STONE LION CAPITAL” due to a likelihood of confusion with Lion Capital LLP’s previously registered marks “LION CAPITAL” and “LION” affirmed.
Summary: Stone Lion Captial Partners appealed from TTAB decision refusing to register the mark “STONE LION CAPITAL” due to a likelihood of confusion with Lion Capital LLP’s previously registered marks “LION CAPITAL” and “LION”. Lion Capital’s marks were registered in connection with the services “financial and investment planning and research”, “investment management services”, “capital investment consulation”, “equity capital investment” and “venture capital services”. Stone Lion proposed using the mark for “financial services, namely investment advisory services, management of investment funds, and fund investment services.” Lion opposed Stone Lion’s registration, alleging the proposed mark would be likely to cause confusion with Lion’s registered marks. The TTAB undertook the likelihood of confusion inquiry (the 13 factors set forth in In re E.I. du Pont de Nemours & Co., CCPA 1973), finding that “factors one through four weighed in favor of finding a likelihood of confusion, and that the remaining factors are neutral” (similarity or dissimilarity of appearance, sound, connotation and commercial impression; nature of the goods or services; established, likely-to-continue trade channels; and conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing). It found the second and third factors (nature of the goods or services and channels of trade) “weigh[ed] strongly in favor of the likelihood of confusion”. The FC panel found that the TTAB “properly compared the marks pursuant to the first DuPont factor” (similarity or dissimilarity of appearance, sound, connotation and commercial impression) in finding that “‘LION’ was ‘the dominant part of both parties’ marks’” and “according little weight to the adjective ‘STONE’, on the ground that it did not not ‘distinguish the marks in the context of the parties’ services” because “its ‘ultimate conclusion’ of similarity” was based on “the marks in their entireties” (In re Nat’l Data Corp., FC 1985). It also found that the TTAB properly compared the relevant trade channels pursuant to the third DuPont factor (established, likely-to-continue trade channels) in that “the registrations contained ‘no limitations’ on the channels of trade and classes of purchasers” by focusing “on the basis of the identification of goods set forth in the application” rather than “real-world conditions” (e.g., “which types of persons within these organizations the parties normally dealt with”) (Octocom Sys., FC 1990). The FC panel also concluded that the TTAB properly considered the sophistication of potential customers under the fourth DuPont factor (conditions under which and buyers to whom sales are made) by focusing on “all potential customers” (e.g., not just sophisticated investors) because the “services recited in the application determine the scope of the post-grant benefit of registration” (citing U.S. Search LLC, 4th Cir. 2002) (“Granting Stone Lion’s application would entitle it to the full scope of services recited therein, and Stone Lion cannot now distance itself from such breadth when faced with an opposition.”) Thus, the TTAB decision was affirmed.