Westchester Women's Bar Association

CAFC Reminds the Board of the Importance of the Sixth DuPont Factor

The sixth DuPont factor, “[t]he number and nature of similar marks in use on similar goods”, continues to play a dominant role in likelihood of confusion determinations. In a 2(d) refusal, DuPont factor 6, allows for consideration of the inherent strength and commercial strength of the registered mark. See our blog post entitled, The 6th Du Pont Factor Causes TTAB To Reverse 2(d) Refusal, for another example of the impact of this factor. The inherent (conceptual) strength of a mark refers to whether the mark is fanciful, arbitrary, suggestive, or descriptive. A trademark is descriptive if it directly and immediately conveys information or knowledge of a feature, function, purpose, or characteristic of a good or service. In contrast, the commercial strength of a mark refers to its marketplace recognition based on a variety of factors, such as sales numbers, length of use, advertising expenditures, unsolicited media coverage, surveys, etc. It is a combination of conceptual strength and commercial strength that leads to strong brand recognition.

In a recent case decided by the Court of Appeals for the Federal Circuit (“CAFC”), the Court held that the Trademark Trial and Appeal Board, (the “Board”), erred in evaluation of both the conceptual and commercial strength of the marks at issue, Spireon, Inc. v. Flex Ltd., 2023 USPQ2d 737 (Fed. Cir. 2023) [precedential]. It remanded the case to the Board for further consideration of the strength of the registrant’s mark. Here, the applicant was seeking to register FL FLEX in part for “[e]lectronic devices for tracking the locations of mobile assets” and the Examining Attorney cited registrant’s marks, FLEX, FLEX (stylized) and FLEX PULSE, for supply chain logistic management services as grounds for refusal under Section 2(d).

The CAFC held that the Board improperly discounted 15 third-party registrations that the applicant introduced into evidence. The third-party evidence consisted of marks that were compound terms, namely the term FLEX and another element (word or letter). The CAFC held that those third-party registrations were probative of whether the shared element FLEX, was perceived to have a meaning that was either descriptive or suggestive for the goods and/or services and whether there was a “crowded field” of marks “in use”. The use in commerce is important because the sixth DuPont factor, specifies that third party marks will be considered when there is “similar marks in use on similar goods”. See the firm’s web page entitled, Similar Trademarks Used on Similar Goods, for more information on this topic. Further, on the subject of conceptual strength the Board also erred by giving no weight to the evidence pertaining to the meaning of the word Flex. The applicant submitted evidence and argument that the term Flex is highly suggestive of the registrant’s services since it is an abbreviation of the term Flexible.

Regarding commercial strength, the CAFC determined the Board should have assessed the value of three registered marks for FLEX even though there was no evidence of use of those three marks. This conclusion led to the CAFC finding a new burden of proof for third party registrations which is very significant. In prior cases, the applicant was required to prove that prior marks were in use in commerce. Now, the CAFC holds in Spireon, Inc. v. Flex Ltd., supra, that when there are identical marks for identical goods, the opposer must prove non-use of the marks in commerce. And if the opposer cannot show non-use of the marks, the commercial strength of its mark will be considered weak. However, it should be noted that I do believe this ruling will only apply for identical marks and goods. This decision by the CAFC could lead to future rulings impacting the burdens of proof for third-party uses and registrations. If you have questions pertaining to the strength of your trademark or other trademark related questions, please feel free to contact the firm for a courtesy consultation.

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