Overview: U.S. Circuit Judge Timothy Dyk issued a criticism of the TTAB in a decision handed down in a trademark dispute between GPS companies.
Flexing Facts
Flex Ltd. provides logistics management services; Bad Elf LLC is a manufacturer of global positioning systems (GPS). Flex holds trademarks for FLEX, FLEX (stylized), and FLEX PULSE. Bad Elf applied for a trademark for its product, BAD ELF FLEX, a made-for-iOS global navigation accessory. Before the TTAB, Flex successfully opposed Bad Elf’s application on grounds of likelihood of confusion. The TTAB considered the dissimilarity of the two parties’ businesses and the considerable number of third-party uses of the word “flex” in similar fields, but ultimately denied the registration, finding a likelihood of confusion.
Third-Party Registrations and Likelihood of Confusion
Bad Elf appealed, and the Federal Circuit ultimately vacated the TTAB’s decision that Flex’s mark was strong and remanded it for reconsideration. However, the court took the opportunity to clarify how it believes the TTAB should consider that issue in light of similar third-party marks. The TTAB, it said, had found that third-party marks for services similar to FLex’s “have some probative value,” but that this evidence was nonetheless “insufficient in number to be probative of any conceptual weakness of FLEX for the goods or services listed in [Flex’s] pleaded registrations.”
These two findings are mismatched, the Federal Circuit said. The TTAB was inconsistent when it found that third-party trademark evidence has value and then gave it no weight when determining that Flex’s mark was strong. Applying a similar case that also involved Flex, the court found that the conceptual and commercial strength of Flex’s mark has been diluted by a third-party registration, and the Flex and Bad Elf products were “complementary” and not competing.
Measuring Mark Strength
The sixth factor of the DuPont test examines the conceptual and commercial strength of a mark–its distinctiveness and its recognition in the market. The decision criticized the TTAB’s use of third-party marks. This type of evidence is frequently used in trademark litigation. However, when trying to establish or rebut a likelihood of consumer confusion, a consumer survey can often provide more direct evidence than third-party registrations. It can also be used as complementary evidence.
MMR Strategy Group is frequently called on to conduct surveys for trademark litigation and testify in trademark-related matters before the TTAB and federal courts. Our experts design and testify about likelihood of confusion, likelihood of dilution, and other trademark issues. Contact MMR Strategy Group for more information.