746 F.3d 1317 (Fed. Cir. 2014), 2013-1353, Stone Lion Capital Partners, L.P. v. Lion Capital LLP

Docket Nº:2013-1353
Citation:746 F.3d 1317, 110 U.S.P.Q.2d 1157
Opinion Judge:Wallach, Circuit Judge .
Party Name:STONE LION CAPITAL PARTNERS, L.P., Appellant, v. LION CAPITAL LLP, Appellee
Attorney:PRATIK A. SHAH, Akin Gump Strauss Hauer & Feld, LLP, of Washington, DC, argued for appellant. Of counsel on the brief were KAROL A. KEPCHAR, RUTHANNE M. DEUTSCH and EMILY C. JOHNSON. MICHAEL CHIAPPETTA, Fross, Zelnick, Lehrman & Zissu, P.C. of New York, New York, argued for appellee.
Judge Panel:Before RADER, Chief Judge, REYNA, and WALLACH, Circuit Judges.
Case Date:March 26, 2014
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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746 F.3d 1317 (Fed. Cir. 2014)

110 U.S.P.Q.2d 1157

STONE LION CAPITAL PARTNERS, L.P., Appellant,

v.

LION CAPITAL LLP, Appellee

No. 2013-1353

United States Court of Appeals, Federal Circuit

March 26, 2014

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in Opposition No. 91191681.

PRATIK A. SHAH, Akin Gump Strauss Hauer & Feld, LLP, of Washington, DC, argued for appellant. Of counsel on the brief were KAROL A. KEPCHAR, RUTHANNE M. DEUTSCH and EMILY C. JOHNSON.

MICHAEL CHIAPPETTA, Fross, Zelnick, Lehrman & Zissu, P.C. of New York, New York, argued for appellee.

Before RADER, Chief Judge, REYNA, and WALLACH, Circuit Judges.

OPINION

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Wallach, Circuit Judge .

Stone Lion Capital Partners, L.P. (" Stone Lion" ) appeals from the Trademark Trial and Appeal Board's (" Board" )

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decision refusing registration of the mark " STONE LION CAPITAL" due to a likelihood of confusion with opposer Lion Capital LLP's (" Lion" ) registered marks, " LION CAPITAL" and " LION." Because the Board's decision is supported by substantial evidence and in accordance with the law, this court affirms.

Background

I. The Parties

Both Stone Lion and Lion are investment management companies. Appellant Stone Lion is a New York based company founded in November 2008, and manages a hedge fund that focuses on credit opportunities. Appellee Lion is a private equity firm based in the United Kingdom that invests primarily in companies that sell consumer products.

Lion has two registered marks with the Patent and Trademark Office (" PTO" ), " LION CAPITAL" and " LION." Lion started using these marks in the United States in April 2005, and filed the applications for " LION CAPITAL" and " LION" in May 2005 and October 2007, respectively.1 The services recited in connection with Lion's registered trademarks include " financial and investment planning and research," " investment management services," and " capital investment consultation" for " LION" ; and " equity capital investment" and " venture capital services" for " LION CAPITAL." J.A. 7-8. There is no dispute that Lion has priority over Stone Lion with respect to these marks.

II. Proceedings Before the Board

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.

The Board conducted the likelihood of confusion inquiry pursuant to the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973):

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. " impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent Page 1320

use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, " family" mark, product mark). (10) The market interface between applicant and the owner of a prior mark . . . . (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.

Id. The parties presented evidence regarding factors one through six. The Board found that factors one through four weighed in favor of finding a likelihood of confusion, and that the remaining factors were neutral. With respect to the first factor, the similarity of the marks, the Board reasoned that Stone Lion's mark " incorporates the entirety of [Lion's] marks," and that the noun " LION" was " the dominant part of both parties' marks." J.A. 13-14. The addition of the adjective " STONE" was " not sufficient to distinguish the marks," and the Board concluded the marks were " similar in sight, sound, meaning, and overall commercial impression." J.A. 14.

The Board determined the second DuPont factor, the similarity of the services, " weigh[ed] strongly in favor of likelihood of confusion," J.A. 10, because at least some of the services recited in Stone Lion's application were " legally identical" to Lion's covered services, J.A. 11. For example, Stone Lion's applied-for services " management of investment funds" and " investment advisory services" were at least coextensive with Lion's recited services " management of a capital investment fund" and " capital investment consultation," respectively. J.A. 10.

The Board found the third DuPont factor, considering the application's and registrations' " channels of trade," also weighed strongly in favor of finding a likelihood of confusion. " [B]ecause the services described in the application and opposer's registrations are in part legally identical," the Board presumed the services " 'travel[ed] in the same channels of trade and [were] sold to the same class of purchasers.'" J.A. 11 (quoting In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (T.T.A.B. 1994)).

Finally, the Board found that factor four, the sophistication of the purchasers, weighed in favor of Lion. Although the Board acknowledged that the parties in fact targeted " sophisticated" investors and required large minimum investments, it was " constrained to consider the parties' services as they are recited in the application and registrations, respectively." J.A. 19. Because Stone Lion's " investment advisory services" and Lion's " capital investment...

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