Federal Circuit Clarifies The Relevance Of Third-Party Trademark Registrations In Determining The Conceptual And Commercial Strength Of An Opposer's Mark

• Jurisdiction: United States,Federal
• Law Firm: Haug Partners
• Subject Matter: Intellectual Property, Trademark
• Author: Mr Ben Natter, Michael Barer and Clarissa Toth
• Published date: 03 October 2023

In a significant decision, the Federal Circuit has clarified the weight given to third-party registrations in determining the strength of the opposer's mark and has firmly placed the burden of showing non-use of such marks on the opposer. In Spireon, Inc. v. Flex Ltd., 71 F.4th 1355 (Fed. Cir. 2023), the Federal Circuit vacated and remanded the Trademark Trial and Appeal Board's ("TTAB") decision sustaining Flex's opposition to the registration of Spireon's FL FLEX mark. Flex brought its opposition on the basis of priority and likelihood of confusion based on its prior registrations for FLEX, FLEX (stylized), and FLEX PULSE.¹ The focus of Spireon's appeal was the TTAB's evaluation of third-party registration evidence and its effect on the strength of Flex's trademarks.

In evaluating the likelihood of confusion, the TTAB and courts consider several factors known as the DuPont factors.² The sixth DuPont factor requires consideration of the "number and nature of similar marks in use on similar goods" which goes to the strength of the opposer's mark.³ There are two prongs to the strength of a mark, conceptual strength, which is a measure of a mark's inherent distinctiveness, and commercial strength, a measure of a mark's marketplace recognition. The Court held that the TTAB erred in consideration of both the conceptual and commercial strength of Flex's marks.

At the TTAB proceeding, Spireon argued that the term "flex" was weak and cited thirty third-party trademark registrations and applications as support.⁴ The TTAB excluded ten from consideration, found fifteen had "low probative value" due to consisting of compound terms including another word or letters in addition to "FLEX", and held the remaining five were not enough to find the opposer's marks were weak.⁵

The Court held that the TTAB erred by failing to consider the composite third-party registrations in its determination on whether Flex's marks are conceptually strong.⁶ The Court reasoned that the existence of third-party registrations containing a common element is evidence that the element may have "a normally understood and well-recognized descriptive or suggestive meaning."⁷ Thus, the TTAB should not have discounted the fifteen third-party registrations that consisted of composite marks with the common element "FLEX."

Additionally, the Court clarified that once an applicant introduces similar third-party registrations as evidence that the opposer's mark is commercially weak, the burden to prove...