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IP Litigation

TTAB properly focuses on goods and services identified in trademark application during likelihood of confusion analysis

March 28, 2014

IP Litigation

TTAB properly focuses on goods and services identified in trademark application during likelihood of confusion analysis

March 28, 2014

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Fed. Cir. affirms the Board’s refusal to register STONE LION CAPTIAL over prior marks LION CAPITAL and LION.  On the relevant Du Pont factors:

Stone Lion Capital Partners, L.P. v. Lion Capital LLP, __ F.3d __ (Fed. Cir. Mar. 26, 2014) (WALLACH, Rader, Reyna) (No. 2013-1353, TTAB) (2 of 5 stars)

(a) the Board’s finding that the marks were similar was properly based on the entireties of the marks, its finding concerning commercial impression was also supported, and the Board gave appropriate weight to Lion’s prosecution statements; and (b) the Board properly refused to consider the high sophistication of the parties’ actual customers because “the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application,” Op. at 10, and “the services recited in the application determine the scope of the post-grant benefit of registration,” id. at 12, except where the parties enter a binding agreement that limits the benefits of registration.  In this instance, the Board correctly based its decision “on the least sophisticated potential purchasers.”

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