IP Law Daily, TRADEMARK—Fed. Cir.: Court returns case to TTAB for re-weighing of likelihood of confusion factors, (Aug 14, 2023)

By Patricia K. Ruiz, J.D.

If the third-party marks and opposer’s marks are identical, the opposer’s marks and the applicant’s marks are compared to see if they are identical or non-identical for identical goods or services.

The U.S. Court of Appeals for the Federal Circuit affirmed in part and vacated in part a decision by the Trademark Trial and Appeal Board (TTAB) finding there to be a likelihood of confusion between an applicant’s mark and an opposer’s mark. The court found that it is inconsistent to give evidence of third-party registrations probative value but find the evidence in no way weakens the opposer’s marks and directed the TTAB to reweigh the likelihood of confusion between the marks (Bad Elf, LLC v. Flex Ltd., August 14, 2023, Dyk, T.).

Application. On June 24, 2019, Bad Elf, LLC, filed an intent-to-use trademark application seeking to register the mark FLEX for “Global positioning system (GPS) apparatus; Global positioning system (GPS) receivers in International Class 9; and GPS navigation services in International Class 39.” Flex Ltd. Opposed the registration on the grounds of priority and likelihood of confusion with Flex’s three registered marks, FLEX, FLEX (stylized), and FLEX PULSE. The TTAB limited its focus to FLEX and FLEX PULSE.

Opposing mark. Flex’s FLEX mark was registered July 12, 2016, for services including, in Class 35, supply chain management services, transportation logistics services, logistics management in the field of electronics, and inventory management services for others. Flex’s FLEX PULSE mark was registered December 12, 2017, for goods and services, including, in class 9, computers, computer software for use in supply chain management, logistics and operations management, quality control, inventory management, and scheduling of transportation and delivery. The TTAB considered the likelihood of confusion between (1) Bad Elf’s FLEX and Flex’s FLEX PULSE for each mark’s class 9 goods and (2) Bad Elf’s FLEX for its class 39 services and Flex’s FLEX for its class 35 services.

TTAB decision. The TTAB ultimately found there to be a likelihood of confusion between the marks. Notably, in considering the conceptual strength of Flex’s marks, the TTAB found that third-party registrations for goods in class 9, including for computer software used for logistics management and for advanced transportation controller for managing a variety of intelligent transportation systems, had some probative value but that the marks were insufficient in number to be probative of any conceptual weakness of FLEX for the goods or services listed in Flex’s pleaded registrations.

Appeal. Bad Elf appealed. A separate case involving Flex’s marks, Spireon, Inc. v. Flex Ltd., was identified as related, and oral argument for both cases was held on the same day. On June 26, 2023, the court issued an opinion in Spireon, holding that the TTAB had erred in its treatment of the strength of Flex’s marks and vacating and remanding for the TTAB to reconsider the likelihood of confusion factors in light of the Spireon opinion. After the Spireon opinion was issued, the panel ordered supplemental briefing in the present case on what bearing the Spireon case has on the issue of the commercial and conceptual strength of Bad Elf’s marks.

Under Spireon, the TTAB must determine whether third-party prior registrations exist using an identical mark for identical goods or services as the opposer’s registered marks, and, if so, whether the opposer’s registered marks at issue are different from the applicant’s marks for identical goods or services. The only relevant opposer mark is FLEX, which indisputably was used in one earlier third-party-registered mark. However, the parties disagreed whether FLEX was used for identical goods or services in the earlier third-party-registered mark. The third-party registration generally covers goods for software for logistics management. Flex’s FLEX mark at issue covers services, including supply chain management services, transportation logistics services, namely, arranging the transportation of goods for others, and inventory management services for others. While the prior third-party mark covers goods rather than services, the goods covered are nonetheless virtually identical to the services covered by Flex’s FLEX mark.

If the third-party marks and opposer’s marks are identical, the opposer’s marks and the applicant’s marks are compared to see if they are identical or non-identical for identical goods or services. The parties agree that one of Flex’s and one of Bad Elf’s marks (FLEX) are the same and appear to agree the goods and services covered by Bad Elf’s FLEX and the services covered by Flex’s FLEX are not identical but complementary. Thus, the court concluded that the conceptual and commercial strength of the opposer’s mark is substantially diluted.

The TTAB had found the third-party registrations are related to Flex’s transportation or logistics services and therefore have some probative value. However, the TTAB found the evidence was insufficient in number to be probative of any conceptual weakness of FLEX for the goods or services listed in Flex’s pleaded registrations. The court found the TTAB erred in failing to give the evidence weight in the strength analysis. The probative value of evidence of third-party registrations is not to show that a mark is conceptually weak, the court explained. Strength is not an all-or-nothing measure. Rather, it varies along a spectrum. Thus, it is inconsistent to give evidence of third-party registrations probative value but find the evidence in no way weakens the opposer’s marks. The court vacated the TTAB’s decision with respect to its analysis as to the strength of Flex’s marks and remanded to the TTAB to reconsider this factor and to reweigh the factors.

The case is No. 22-1839.

Attorneys: Marina Cunningham (McCormick, Paulding & Huber PLLC) for Bad Elf, LLC. Julia Shursky (Sheridan Ross PC) for Flex Ltd.

Companies: Bad Elf, LLC; Flex Ltd.

Cases: Trademark FedCirNews GCNNews