Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317
| Fed. Cir. | 2014Background
- Stone Lion Capital Partners (U.S. applicant, 2008 intent-to-use) sought registration of STONE LION CAPITAL for broad "financial services" including investment advisory and fund management.
- Lion Capital LLP (U.K. private equity firm) owned prior U.S. registrations for LION and LION CAPITAL used in the U.S. since 2005; no dispute Lion has priority.
- Lion opposed under Lanham Act § 2(d) for likelihood of confusion; Board applied the thirteen DuPont factors and considered evidence on factors 1–6.
- The Board found factors 1–4 favored Lion (marks similar; some services legally identical; overlapping trade channels presumed; purchaser class could include unsophisticated consumers) and factors 5–6 neutral, and refused registration.
- Stone Lion appealed, challenging the Board’s analysis of mark similarity (factor 1), trade channels (factor 3), and purchaser sophistication (factor 4).
- The Federal Circuit affirmed, holding the Board’s factual findings supported by substantial evidence and its legal conclusions correct.
Issues
| Issue | Plaintiff's Argument (Stone Lion) | Defendant's Argument (Lion) | Held |
|---|---|---|---|
| Similarity of marks (DuPont factor 1) | Board improperly dissected mark and over-weighted LION; STONE changes commercial impression | Marks are similar in sight, sound, meaning; STONE is insufficient to avoid confusion | Affirmed: Board may give more weight to dominant element while considering marks in their entireties; marks deemed similar |
| Channels of trade (DuPont factor 3) | Board erred by presuming overlapping channels despite no actual investor overlap | Application/registrations are unrestricted; must presume normal channels and purchasers | Affirmed: Must decide based on identifications in application/registrations, not actual use |
| Purchaser sophistication (DuPont factor 4) | Investors are sophisticated and securities rules restrict access; confusion unlikely at point of sale | Services as recited could reach ordinary consumers; Board should assess least sophisticated potential purchasers | Affirmed: Board correctly considered the least sophisticated potential purchasers as recited in the applications and weighed factor for Lion |
| Overall likelihood of confusion under § 2(d) | Board erred across factors; registration should be allowed | DuPont analysis supports likelihood of confusion | Affirmed: Substantial evidence supports Board’s finding of likelihood of confusion and refusal of registration |
Key Cases Cited
- In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (sets out thirteen DuPont factors for likelihood-of-confusion analysis)
- Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005) (marks compared in their entireties)
- M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378 (Fed. Cir. 2006) (likelihood of confusion is a legal conclusion with underlying factual findings)
- On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (standard of review for Board’s legal conclusions)
- Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937 (Fed. Cir. 1990) (registrability decided from the identification of goods/services in the application)
- In re National Data Corp., 753 F.2d 1056 (Fed. Cir. 1985) (permissible to give more or less weight to elements of a mark so long as marks are considered in their entirety)