Wednesday, March 26, 2014

CAFC affirms the TTAB in Stone Lion

Stone Lion v. Lion was a trademark case:

On August 20, 2008, Stone Lion filed an intent-to-use application to register the mark “STONE LION CAPITAL” with the PTO. It proposed using the mark in connection with “financial services, namely investment advisory services, management of investment funds, and fund investment services.” U.S. Trademark Application Serial No. 77551196 (filed Aug. 20, 2008). Lion opposed the registration under section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d) (2006), alleging Stone Lion’s proposed mark would be likely to cause confusion with Lion’s registered marks when used for Stone Lion’s recited financial services.

Section 2(d) of the Lanham Act provides that a trademark may be refused registration if it so resembles a prior used or registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Likelihood of confusion is a question of law with underlying factual findings made pursuant to the DuPont factors. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1381 (Fed. Cir. 2006). This court reviews the Board’s factual findings on each DuPont factor for substantial evidence, In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003), and its legal conclusion of likelihood of confusion de novo, On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1084 (Fed. Cir. 2000). Substantial evidence is “such relevant evidence as a reasonable mind would accept as adequate to support a conclusion.” Consol. Edison Co. of N.Y. v. N.L.R.B., 305 U.S. 197, 229 (1938).

Bottom line

The Board properly determined that the first four DuPont factors weighed in favor of finding a likelihood of confusion and that the remaining factors were neutral. The refusal of Stone Lion’s application for trademark registration is therefore affirmed.


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