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Hope of Trademark Owners: USPTO Erred in Analyzing Likelihood of Confusion in Spireon, Inc. v. Flex LTD

On June 26, 2023, the U.S. Court of Appeals for the Federal Circuit overturned the USPTO’s refusal to register the trademark FL FLEX in Spireon, Inc. v. Flex LTD. Flex opposed registration of Spireon’s mark, FL FLEX, due to a likelihood of confusion with their marks FLEX, FLEX (stylized), and FLEX PULSE. Spireon appealed a Trademark Trial and Appeal Board decision in face of this rejection. The Federal Circuit of Appeals found that the United States Patent and Trademark Office (“USPTO”) had erred in its analysis of confusion, giving hope to trademark owners facing likelihood of confusion refusals before the USPTO.

The Three Main Errors by the USPTO

The Federal Circuit based the decision on several errors by the USPTO. One error stemmed from a disregard of a myriad of composite third-party registrations, which the Board attempted to justify ignoring the “FL” prefix. The sixth DuPont factor assesses the influence of composite third-party registrations on the strength of a mark. In this case, the cited composite third-party registered marks all shared the same segment “flex,” which displays that the other portions of the mark besides “flex” distinguished it enough from the other marks as a whole. This demonstrates that the segment is relatively weak and emphasizes the error in overlooking these composite third-party registrations when analyzing through the sixth DuPont factor, and the court agrees as such. Details of this decision can be reviewed HERE.

Implications for the Future

This decision should encourage applicants to challenge USPTO refusals more often. It is a great example of success in challenging refusals based on likelihood of confusion that will promote others to challenge the USPTO when facing likelihood of confusion refusals before the USPTO.

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