The legal landscape for trademark owners changed significantly in 2023 because in Spireon v. Flex Ltd, 2023 USPQ2d 737, the Court of Appeals for the Federal Circuit flipped the burden of proof for third-party registration evidence for identical marks in trademark oppositions. The bombshell opinion in Spireon stated that when an applicant proffers third-party trademark registrations for identical marks to show that the Opposer’s mark is too weak to prevent registration of the Applicant’s mark, the Opposer has the burden to prove that those marks are not in use. Spireon may even have far-reaching consequences for other trademark proceedings.

Why Do Third-Party Registrations Matter?

Third-party registrations for similar marks have long been a tool in the belt of trademark litigants to demonstrate the weakness of a mark. The traditional test for trademark infringement – as well as registrability – is the likelihood of confusion. That is, if consumers are likely to confuse the source of someone’s product or service sold under a trademark for the trademark of another owner, the later user of the mark loses the right to register or use their mark without consent from the first user. Third-party registrations can be powerful evidence that a trademark is weak and entitled to only a minimal scope of protection, allowing trademark owners to adopt marks more similar to the weak trademark for similar goods/services without infringing on the senior user’s trademark rights.

These registrations can be powerfully relevant to show the weakness of a trademark both conceptually – where a term is so common that it likely has an understood descriptive or highly suggestive connotation – and commercially – where there are so many similar third-party trademarks in use that consumers ignore the mark as an identifier for a single source or mark owner. The catch is that only in-use trademarks are relevant to show the commercial weakness of a trademark. By clarifying that it is a trademark Opposer’s burden to demonstrate the non-use of third-party registrations for identical marks, the Federal Circuit significantly reduced the burden on Applicants defending their mark through this theory.

How Spireon Changed the Playing Field

Previously, a trademark Applicant wishing to show that an Opposer’s trademark was too commercially weak to prevent registration of the applicant’s trademark would need to show that any third-party registrations were actively in use to qualify that evidence as relevant and probative. Without evidence of use, the Trademark Trial and Appeal Board could often disregard any impact the third-party registrations might have on the commercial strength of a mark because the registrations would not necessarily reflect the marketplace and consumers’ familiarity with the marks. This burden usually required painstaking internet searches by the Applicant to verify the use of a trademark coupled with declarations attesting to that use.

Now, at least concerning identical marks, that is all on the Opposer. An Applicant can proffer identical third-party registrations and the Opposer must show that they are not in use. If the Opposer does not, the Trademark Trial and Appeal Board may assume that these marks are in use. This change made the burden of proof of the parties consistent with the overall burden of proof that Opposer shoulders to show there is a likelihood of confusion. The Board will still need to examine whether identical third-party registrations show the commercial weakness of the Opposer’s mark, but they will not disregard them simply because the Applicant did not provide proof of use.

Spireon’s Application in Trademark Cancellation Actions and Infringement Lawsuits

Spireon’s holding dealt narrowly with the issue of an Opposer at the Trademark Trial and Appeal Board and it remains to be seen how its holding will apply in other contexts. The logic of Spireon’s flipped burden of proof on identical third-party registrations could apply in other trademark proceedings. Just as the Opposer carries the burden of proof in an Opposition, the Petitioner carries the burden of proof in a cancellation, and a plaintiff carries the burden of proof in an infringement action. These situations have yet to play out in the case law and we can only speculate if the result will be like Spireon or if other factors will change the result.

Conclusions

Spireon Holding has changed the landscape for trademark owners in disputes and has the potential to change it further. With this case in mind, trademark owners should:

• always ensure to investigation and show the non-use of any third-party registrations an Applicant cites to show weakness when opposing a trademark;
• highlight an Opposer’s failure to show non-use of identical third-party registrations when defending an opposed trademark;
• Whenever asserting third-party registration evidence, ensure that there is evidence of use of the third-party registrations.

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