Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Spireon, Inc. v. Flex Ltd., No. 2022-1578 (June 26, 2023), vacating and remanding the Trademark Trial and Appeal Board’s decision sustaining Flex’s opposition to the registration of Spireon’s FL FLEX mark.
Spireon filed a trademark application seeking registration for the mark FL FLEX, and Flex opposed registration on the grounds of priority and likelihood of confusion with Flex’s previously registered marks: FLEX, FLEX (stylized), and FLEX PULSE. Using the DuPont factors, the Board considered whether confusion was likely. The Board addressed the strength of Flex’s marks and considered the similarity of the marks analyzing Spireon’s FL FLEX against FLEX, FLEX (stylized), and mistakenly, “FLEX PLUS” rather than “FLEX PULSE.” It found the marks to be highly similar, concluding that the first DuPont factor supported a finding of likelihood of confusion. Additionally, the Board found that the goods and services were related or complementary and that the trade channels and classes of consumers overlapped. Based on the foregoing analysis, the Board sustained Flex’s opposition, finding a likelihood of confusion between the marks.
The Federal Circuit vacated and remanded. The Court held that the Board erred in analyzing conceptual strength under the first DuPont factor rather than the sixth factor. The Court also concluded that the Board erred in its analysis of conceptual strength by discounting composite third-party registrations, explaining that composite third-party registrations are relevant to the question of whether the shared segment (“flex”) has a commonly understood descriptive or suggestive meaning. The Court further held that the Board compounded the aforementioned error by providing no weight to Spireon’s argument that “flex” is suggestive because it is a shortened form of the term “flexible.” The Court also noted that Flex, as opposer, failed to show that identical marks for identical goods were not used in the marketplace. The Court stated that on remand Flex should be given the opportunity to make such a showing, and if Flex fails to establish non-use, the commercial strength of the Flex marks must be considered weak as to Spireon’s non-identical mark. Lastly, the Court noted that the Board erred in its analysis by comparing FL FLEX to FLEX PLUS rather than FLEX PULSE.
Coauthored by Will Schultz & Melissa Quirin.