The existence of third-party registrations for similar goods or services can bear on a mark's conceptual strength. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015). Specifically, third-party registrations containing an element that is common to both the opposer's and the applicant's marks can show that that element has “a normally understood and well-recognized descriptive or suggestive meaning.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015).

The existence of such third-party registrations typically is considered under the sixth DuPont factor for likelihood of confusion.

FLEX Segment of FL FLEX Composite Mark

Recently, Spireon, Inc. sought to register FL FLEX for “[e]lectronic devices for tracking the locations of mobile assets in the nature of trailers, cargo containers, and transportation equipment using global positioning systems and cellular communication networks.” It was opposed by Flex Ltd. based on prior registrations for FLEX and FLEX PULSE for “supply chain management services; transportation logistics services, namely, arranging the transportation of goods for others; logistics management in the field of electronics; . . . [and] inventory management services for others.” The Trademark Trial and Appeal Board sustained the opposition for likelihood of confusion.

On appeal, the Federal Circuit vacated and remanded, holding that composite third-party registrations having a shared common segment are relevant when the applied-for mark is itself such a composite mark. Spireon, Inc. v. Flex Ltd., No. 22-1578, – F.4th – (Fed. Cir. June 26, 2023).

            Where marks share a common segment, “[t]hird party registrations are relevant to prove that [the shared] segment of the composite marks . . . has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” 2 McCarthy, supra, § 11:90. Evidence of composite third-party registrations is also relevant because:

Such registrations could . . . show that the PTO, by registering several marks with such a common segment, recognizes that portions of such composite marks other than the common segment are sufficient to distinguish the marks as a whole and to make confusion unlikely. That is, the presence of such a descriptive or suggestive weak segment in conflicting composite marks is not per se sufficient to make confusion likely.

Id.

            At least where the registrations and application are for non-identical marks, as they are here, it is error for the Board to effectively disregard third-party composite marks. The composite third-party registrations are relevant to the question of whether the shared segment—in this case, “flex”—has a commonly understood descriptive or suggestive meaning in the field and whether there is a crowded field of marks in use.

The Court also held that “the burden of showing non-use of identical marks for identical goods rests with the opposer.”

[Here,] Spireon's mark is not an identical mark for identical goods. Spireon seeks to register “FL FLEX” for different, albeit related, goods.

            Here, Flex as opposer has failed to show that the identical marks for identical goods were not used in the marketplace, but on remand Flex should be given the opportunity to make such a showing, given our clarification of the applicable law. 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

The case was remanded to the Board to reconsider likelihood of confusion in light of the Court's opinion.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.