Earlier this month, the Federal Circuit announced a precedential decision heavily in favor of Spireon, Inc. thanks to the hard work of Luedeka Neely attorneys Michael Bradford and Mark Crockett. The court vacated and remanded a decision of the Trademark Trial and Appeal Board handed down in early 2022. Spireon, Inc. v. Flex, Ltd., Case No. 22-1578 (Fed. Cir. June 26, 2023)
In the earlier decision, the Board determined there was a likelihood of confusion between trademark applicant Spireon’s FL FLEX mark for GPS tracking devices and opposer Flex Limited’s FLEX mark for supply chain and logistics management services. The Federal Circuit held that the Board got it wrong when it came to the strength of Flex’s marks—in more ways than one—sharply criticizing the Board’s disregard of evidence of third-party registrations. In determining the conceptual strength of Flex’s mark, the court held that the Board improperly discounted the probative value of the existence of 15 composite marks containing the “flex” term and the suggestive nature of the “flex” term to the “flexible” attribute of the parties’ goods and services. In determining the commercial strength of Flex’s mark, the court held the Board again failed to consider relevant composite marks with evidence of use, as well as the existence of three marks identical to Flex’s FLEX mark, despite no evidence of use.
Moreover, regarding the commercial strength prong, Luedeka Neely attorneys had a hand in creating precedent in favor of trademark applicants in opposition proceedings. Spireon presented numerous third party registrations for marks containing the “flex” term as evidence concerning the weakness of the term. Although corresponding evidence of use was submitted for some of the registered marks, evidence of use was not submitted for several of the marks. The TTAB disregarded the marks for which no evidence of use was submitted. The Federal Circuit held the Board was in error, explaining that while the applicant bears the burden of producing evidence of relevant registrations, Flex, as the party that filed the opposition, bears the burden of proving non-use of those third-party marks. This is especially true when the registered marks are identical to the opposer’s mark. And for good reason: the court elaborated that “[o]therwise, the opposer would be able to dismiss the commercial significance of previously registered identical marks for identical goods where the opposer’s own mark should perhaps have not been granted registration in the first place.”