Stone Lion Capital Partners, L.P. v. Lion Capital LLP
The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s decisions sustaining an opposition to registration of the mark STONE LION CAPITAL for “financial services, namely, investment advisory services, management of investment funds, and fund investment services,” based on existing registrations for LION and LION CAPITAL for identical financial services. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, Case No. 13-1353 (Fed. Cir., Mar. 26, 2014) (Wallach, J.).
The plaintiff, Lion Capital owns two trademark registrations for ‘LION” and “LION CAPITAL” for use in connection with various financial services, including “financial and investment planning and research,” “investment management services,” “capital investment consultation,” “equity capital investment” and “venture capital services.” Lion Capital started using these marks in April 2005.
Stone Lion Capital Partner filed a trademark application for STONE LION CAPITAL on August 20, 2008, based on its intent to use the mark in connection with “financial services, namely investment advisory services, management of investment funds, and fund investment services.” Lion Capital opposed Stone Lion’s trademark application for STONE LION CAPITAL, alleging the proposed mark was likely to cause consumer confusion with its trademark registrations for LION and LION CAPITAL.
The Trademark Trial and Appeal Board (the Board) found Stone Lion’s application for STONE LION CAPITAL to be confusingly similar to Lion Capital’s trademark registrations for LION and LION CAPITAL. The Board conducted the likelihood of confusion inquiry pursuant to the 13 du Pont factors focusing on similarity or dissimilarity of appearance, sound, connotation and commercial impression; nature of the goods or services; established, likely to continue trade channels; and conditions under which and buyer to whom sales are made, i.e. “impulse” versus careful, sophisticated purchasing. The Board found these four factors to weigh in favor of Lion Capital and that the remaining factors were neutral. Stone Lion appealed the Board’s decision, arguing the Board conducted an erroneous comparison of the marks, erred in analyzing the purchasers and trade channels, and improperly dismissed purchasers’ sophistication and conditions of sale.
On appeal, the Federal Circuit affirmed the Board’s decision, concluding that the Board properly determined that the first four du Pont factors favored a finding of likely confusion and that the remaining factors were neutral. The Court found that the Board properly concluded that the marks have the same overall commercial impression. The Court also noted that the Board properly found that the application and the registrations contained no limitations on the channels of trade and classes of purchasers: “[A]n application with no restriction on trade channels cannot be narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.” Finally, the Court agreed with the Board’s evaluation of the sophistication of potential customers based on the broad scope of services listed in Stone Lion’s application, stating “parties that choose to recite services in their trademark application that exceed their actual services will be held to the broader scope of the application.”