ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1338315
`02/05/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal -
`Serial No.
`
`90096173
`
`Appellant
`
`Meadow Creek Spirits, LLC
`
`Applied for mark
`
`CACTI
`
`Correspondence
`address
`
`Submission
`
`Attachments
`
`KIA KAMRAN
`KIA KAMRAN P.C.
`1900 AVENUE OF THE STARS, 25TH FL
`LOS ANGELES, CA 90067-4301
`UNITED STATES
`Primary email: kia@tunelaw.com
`Secondary email(s): desiree@tunelaw.com
`310-284-8600
`
`Request for remand/amendment
`
`Request to Remand - CACTI 90096173_02-05-2024.pdf(266382 bytes )
`Exhibit 1.pdf(144248 bytes )
`Exhibit 2.pdf(23313 bytes )
`90002905 Registration.pdf(28277 bytes )
`CACTII SKINCARE 90664983.pdf(2460177 bytes )
`Registration CACTUS COAST 97483488.pdf(696718 bytes )
`Registration CACTUS HACK 90666128.pdf(2693917 bytes )
`Registration CACTUS LOUNGE BOUTIQUE 90889180.pdf(637218 bytes )
`Exhibit 3.pdf(23363 bytes )
`Exhibit 5 - Why Cactus Leather is the Hottest New Vegan Leather.pdf(1643143
`bytes )
`Chic in Cacti_ All New Cactus Leather Cases from OtterBox.pdf(310317 bytes )
`Exhibit 4.pdf(23229 bytes )
`CACTI declaration.pdf(388376 bytes )
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Kia Kamran, Esq.
`
`kia@tunelaw.com, desiree@tunelaw.com
`
`/Kia Kamran/
`
`02/05/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant: Meadow Creek Spirits, LLC
`
`Application Serial No. 90/096,173
`
`Mark: CACTI
`
`Filing Date: August 6, 2020
`
`
`
`Examining Attorney: Justin Berlin, Esq.
`
`Law Office: 125
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`)
`)
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`)
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`)
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`)
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`
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`APPLICANT’S REQUEST TO SUSPEND AND REMAND FOR ADDITIONAL EVIDENCE
`
`Pursuant
`
`to Trademark Rule 2.142(d)(2), Applicant Meadow Creek Spirits, LLC
`
`(“Applicant”) hereby respectfully requests that the Trademark Trial and Appeal Board (“Board”)
`
`exercise its discretion to suspend action on this appeal and remand the subject application in Serial No.
`
`90/096,173 (“Application”) for the standard character mark CACTI (“Applicant’s Mark”) for further
`
`examination of the additional evidence attached hereto. Applicant submits that sufficient good cause
`
`exists to justify suspension of action on this appeal and to remand the Application to the examining
`
`attorney for further consideration. First, this request for remand and suspension is made early in the
`
`proceedings – prior to the expiration of Applicant’s time for filing its appeal brief as re-set by the
`
`Board.1 Second, the evidence sought to be introduced is new or was previously unavailable as of the
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`filing date of the notice of appeal on May 10, 2022, and could not have been submitted during
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`prosecution of the Application. As further explained below, the proposed additional evidence
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`overwhelmingly weighs against the finding of a likelihood of confusion between Applicant’s CACTI
`
`mark and the composite mark
`
` in Registration No. 3/360,926 (“Cited Mark”) and should
`
`be considered by the examining attorney, and if necessary, by the Board.
`
`
`1 The Board has found sufficient good cause to justify each of Applicant’s previous requests to suspend/extend the
`deadline to submit its appeal brief.
`
`
`
`1
`
`

`

`I.
`
`APPLICANT DEMONSTRATES SUFFICIENT GOOD CAUSE BECAUSE THE
`EVIDENCE WAS PREVIOUSLY UNAVAILABLE
`
`In cases such as here, the Board consistently finds good cause to remand for consideration of
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`additional evidence when the proposed evidence was previously unavailable and did not exist prior to
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`the filing of the notice of appeal. See TBMP § 1207.02. Applicant’s previously unavailable evidence
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`consists of the recently decided precedential decision in Spireon, Inc. v. Flex Ltd., 2023 USPQ2d 737
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`(Fed. Cir. 2023), recently issued third-party registrations, and recently published online materials. As
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`further explained below, all such previously unavailable evidence is highly probative to show that the
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`Registered Mark is both conceptually and commercially weak and that the only logical conclusion
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`there can be in this case is that there is no likelihood of confusion between the Applicant’s Mark and
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`the Cited Mark.
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`A. Recently Decided Precedential Decision
`
`“Applicants may [] request remand so that the examining attorney can consider a refusal in
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`light of a recently decided case or amended Trademark Rule.” TBMP § 1209.04 (2023). See In re
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`Martin Container, Inc., 65 USPQ2d 1058, 1060 (TTAB 2002) (request for remand filed after notice of
`
`appeal in view of recent ruling by the Court of Appeals for the Federal Circuit). Applicant submits
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`that remand of the Application is appropriate here for consideration of the likelihood of confusion
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`refusal in light of the recently decided precedential decision in Spireon, Inc. v. Flex Ltd., 2023
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`USPQ2d 737 (Fed. Cir. 2023). See Exhibit 1.2
`
`Applicant maintains the position that the Cited Mark is irrefutably weak and entitled only to a
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`narrow scope of protection. The recent case in Spireon, Inc. v. Flex Ltd., is particularly salient in assessing
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`the strength of the Cited Mark. There, the Board’s finding of a likelihood of confusion between the
`
`
`2 Spireon, Inc. v. Flex Ltd. was decided on June 26, 2023 – more than one year after the notice of appeal was filed. A
`true and correct printout of the decision was taken by Applicant’s undersigned counsel on October 20, 2023. The full
`URL address for the case may be found at https://cafc.uscourts.gov/opinions-orders/22-1578.OPINION.6-26-
`2023_2147741.pdf.
`
`
`
`2
`
`

`

`mark FLEX and the registered marks FLEX PULSE, FLEX, and FLEX was vacated and remanded
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`because the Board, just like the examining attorney here, failed to consider all relevant evidence in its
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`assessment of both the conceptual and commercial strength of the registered marks. In erroneously
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`concluding that the registered marks at issue were not conceptually weak, the Board improperly
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`discounted the probative value of fifteen (15) registered marks comprising compound terms that
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`included “another word or letters in addition to ‘FLEX.’” As to commercial strength, the Board
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`erred again in declining to consider third-party use of composite marks.
`
`Here too, the examining attorney effectively eliminated consideration and gave no weight to
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`thirty-two (32) third-party registrations and evidence of real-world usage comprised of fifty-two (52)
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`real world third-party uses of CACTUS or CACTI formative marks. This is made abundantly clear by
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`the following contentions advanced by the examining attorney in response to Applicant’s request for
`
`reconsideration:3
`
`[A]applicant’s argument that the wording CACTUS in the registered
`mark is weak is similarly unpersuasive. To support this assertion,
`applicant points to numerous other marks which include the wording
`CACTUS in the same class as registrant. However, applicant fails to
`recognize that the cited mark, CACTUS, is the only registered
`mark in International Class 25 without any other inherently
`distinctive wording or elements besides CACTUS in it. Therefore,
`while CACTUS plus other inherently distinctive wording may be weak,
`only one registrant, i.e., the cited mark in the instant matter, has
`registered the wording CACTUS without any other inherently
`distinctive wording.”
`
`Similarly, applicant’s evidence of real-world usage of CACTUS-
`formative wording for similar goods/related services is also
`unpersuasive, as all of this evidence shows the wording CACTUS
`with other inherently distinctive wording. Again, only the applied-
`for mark and the cited registration show usage of CACTUS-formative
`wording serving alone as a mark.”
`
`
`3 See July 21, 2022, Reconsideration Letter, p. 2.
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`
`
`3
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`

`

`Contrary to the examining attorney’s contentions, the Cited Mark
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` is itself a composite
`
`mark, as is readily apparent by the stylization of the letter “t”. In addition, and also contrary to the
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`examining attorney’s position is that there is already evidence of record that shows real-world usage
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`of the mark CACTUS by itself.4
`
`Of notable significance is that the Applicant’s Mark and the Cited Mark are not identical.
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`While the Applicant’s Mark may be in standard character form, the Cited Mark is itself a composite
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`mark. It was erroneous for the examining attorney to effectively eliminate consideration of other
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`composite marks in these circumstances – all relevant evidence should have been considered in
`
`assessing the strength of the Cited Mark. As stated in Spireon, Inc. v. Flex Ltd.:
`
`At least where the registrations and application [at issue] 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 composite marks have
`probative value and should have been included in the Board’s
`analysis.
`
`
`
`Accordingly, the Board should remand the application so that the examining attorney may
`
`reconsider the likelihood of confusion finding between the Applicant’s Mark and the Cited Mark in
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`light of Spireon, Inc. v. Flex Ltd.
`
`B. Recently Issued Third-Party Trademark Registrations
`
`Applicant further respectfully requests that the Board grant the requested remand for
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`consideration of the recently issued trademark registrations identified below for CACTUS formative
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`marks that all registered based on prior actual use in commerce after the filing of the notice of appeal.
`
`Enclosed as Exhibit 2 are the corresponding registration printouts and select documents from their
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`respective file wrappers generated from the Trademark Status and Document.
`
`
`4 See February 25, 2022, Applicant’s Request for Reconsideration, p. 4-10 and related exhibits.
`
`
`
`4
`
`

`

` Mark: CACTUS LOUNGE BOUTIQUE
`o Registration No: 6844661
`o IC 035: On-line retail store services featuring apparel, gifts and jewelry; Retail shops
`featuring apparel, gifts and jewelry
`o Registration Date: September 13, 2022
`o Note: the words “lounge boutique” are disclaimed in the mark.
`
` Mark: CACTUS & SKULL
`o Registration No: 6868964
`o IC 025: Clothing, namely, t-shirts, fleece tops, fleece bottoms, fleece jackets
`o Registration Date: October 11, 2022
`
`
` Mark: CACTUS COAST
`o Registration No: 7131922
`o IC 025: Hoodies; Pullovers; Sweatshirts; T-shirts; Tank tops
`o Registration Date: August 8, 2023
`
` Mark: CACTUS HACK
`o Registration No: 6806455
`o IC 025: Athletic apparel, namely, shirts, t-shirts, polo shirts, pants, jackets, athletic
`uniforms, belts, socks, footwear, golf shoes, hats, golf caps, baseball caps, cap visors,
`hoodies
`o Registration Date: August 2, 2022
`
` Mark: CACTUS JONES
`o Registration No: 6739159
`o IC 014: Key chains; Key chains comprised of split rings with decorative fobs or
`trinkets; Key holders being key chains; Charms for key chains; Charms for key rings
`or key chains; Non-metal and non-leather key chains
`o Registration Date: May 24, 2022
`
` Mark: CACTUS + PEARL
`o Registration No: 6869143
`o IC 025: Clothing, namely, t-shirts, fleece bottoms, fleece tops, fleece jackets, bottoms
`o Registration Date: October 11, 2022
`
` Mark: CACTUS SPIRIT
`o Registration No: 6721793
`o IC 025: T-shirts
`o Registration Date: My 24, 2022
`
` Mark: CLASSY CACTUS BOUTIQUE
`o Registration No: 6849347
`o IC 035: Retail store services featuring tops as clothing, bottoms as clothing, dresses,
`jumpsuits, rompers, shirts, cardigans, kimonos, shoes, sandals, bags, purses, hats,
`jewelry, clothing accessories, bath products, mugs, tumblers, stationery, and candles
`o Registration Date: September 20, 2022
`o Note: The word “boutique” in the mark is disclaimed.
`
`5
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`

`

`
`
`
`
`
`
` Mark: LUCKYCACTUS
`o Registration No: 6900132
`o IC 025: Panties; Pants; Shorts; Trousers; Underpants; Mufflers as neck scarves; Shorts
`for women; Women's underwear
`o Registration Date: November 15, 2022
`
` Mark: TAILORED CACTUS
`o Registration No: 7244158
`o IC 025: Headwear; Socks; Bottoms as clothing; Outerwear, namely, sweatshirts and
`jackets; Tops as clothing
`o Registration Date: December 12, 2023
`
` Mark: THE GOLD CACTUS
`o Registration No: 7065256
`o IC 035: On-line retail store services featuring clothing fashion accessories, home
`accessories, handbags, tote bags, messenger bags, electronic organizer bags, bag straps,
`wallets, billfolds, credit card cases, custom bar mats, and pet items
`o Registration Date: May 30, 2022
`
` Mark: CACTI5
`o Registration No: 7109560
`o IC 033: Alcoholic beverages except beers; Hard seltzer; Flavored malt-based alcoholic
`beverages, excluding beers
`o Registration Date: July 11, 2023
`o Note:
`
` Mark: CACTII SKINCARE
`o Registration No:
`o IC 003: Bath soaps; body oils; body scrubs; bath bombs; all of the foregoing made in
`significant part of cactus
`o Registration Date: June 14, 2022
`o Note: The term “SKINCARE” is disclaimed from the mark.
`
`It is well established that active third-party registrations may be relevant to show that a mark
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`or a portion of a mark is descriptive, suggestive, or so commonly used in a particular industry that the
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`public will look to other elements to distinguish the source of the goods and services. See Juice
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`Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015). The
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`foregoing registrations and evidence of use are clearly probative to show that the Cited Mark is both
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`conceptually and commercially weak. While the foregoing registrations may seem to be cumulative
`
`
`5 This registration is owned by the Applicant and registered on the Supplemental Register.
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`
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`6
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`

`

`in nature based on the third-party registrations and uses already of record, as reiterated in Spireon, Inc.
`
`v. Flex Ltd., there must be extensive, ubiquitous, voluminous, and widespread use by third parties to
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`weaken a registered mark. When all of the evidence is properly considered and the differences
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`between the Applicant’s Mark and the Cited Mark are taken into account, such as the unusual
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`pluralization of the Applicant’s Mark and stylization of letter “t” in the composite mark
`
`
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`emphasizing the term “cactus” in singular form, confusion as to source in this case is extremely
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`unlikely.
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`In addition, some of the foregoing registrations and applications are also probative to show that
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`it has recently become common place for a variety of goods (including shoes and articles of clothing)
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`to contain “cactus” or “cacti” as an ingredient thereof. This is qualitatively different than Applicant’s
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`assertion that the Cited Mark is weak based on prior third-party uses and registrations.
`
`C. Recently Published Online Materials
`
`Applicant submits that the spectrum of distinctiveness is anything but static. The USPTO and
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`the Borad has, and must have, the freedom, over a period of decades – or increasingly, just years – to
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`consider such questions anew. In this case, it has recently become commonplace for a variety of goods,
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`including those at issue here, to use “cactus,” “cacti,” or a derivative thereof as an ingredient,
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`characteristic, or feature thereof and for the relevant consuming public to make this connection.
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`Notably in this case, “cactus leather” has very recently made traction in the fashion world as a
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`sustainable alternative to leather and is being incorporated in a variety of fashion lines.
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`Applicant attaches as Exhibit 3 a variety of online articles and internet materials that were all
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`previously unavailable as of the filing date of the notice of appeal. A sampling of such evidence
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`includes the following, all of which are true and correct printouts taken by the Applicant’s undersigned
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`counsel as of the date shown on the face of such documents:
`
`
`
`7
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`

`

` “What is Cactus Leather? Is It Sustainable?” published on May 31, 2022, by Treehugger
`shows that “cactus leather” is a material used for shoes, apparel, and handbags.
` “Cactus Leather: The Green Leather Alternative That Is Becoming a Hit” published by Dhakai
`on November 14, 2022, states that “[t]he mix of intrigue and multitude of benefits of cactus
`leather has led to a quick rise in its popularity” and further states that “[o]ver the past year,
`the popularity of cactus leather has widespread.”
` “Sustainable Leather Alternatives: A Comparison of Cactus Leather Mechanical Properties”
`published on May 11, 2022, is a study based on cactus leather in relation to footwear.
` “An Overview of the Cactus Leather Manufacturing Process” published on November 23,
`2022, states that “[m]ore recently, prickly pear [cacti] has been used to make cactus leather
`for footwear.”
` “These Chic Sneakers Are the First Ones Ever Made from Cactus Leather” published by the
`Vegetarian Times and updated on August 10, 2022, confirms that CLAE provided the first
`cactus leather footwear.
` “Our Top 4 Vegan Leathers” from Buddy Atelier published on August 3, 2022, ranks cactus
`leather as one of its top four vegan leathers.
` “H&M Puts Cactus Leather in Eco-Focused Kids’ Line – Sourcing Journal” published on
`December 9, 2022.
` “Sustainable Fashion: Heard About Cactus Leather?” published by Times Now News on
`January 20, 2024.
` Wikipedia entry of “cactus leather.” Although the date of publication is unknown, the
`Wikipedia entry was previously unavailable at the time of the filing of the notice of appeal,
`
`The foregoing evidence is “admissible as evidence of information available to the consuming public
`
`
`
`and of the way in which a term is being used or would be understood by the relevant public.” In re
`
`Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1157 (TTAB 2019) (citing In re Bayer AG, 488 F.3d 960,
`
`966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007)). Applicant further submits that this evidence is not
`
`cumulative in nature because Applicant for the first time is submitting evidence that demonstrates that
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`the Cited Mark is weak based on descriptiveness. Even if the Cited Mark was at one time inherently
`
`distinctive, the particular circumstances of this case justify the conclusion that the Cited Mark should
`
`no longer be accorded with the normal scope of protection to which inherently distinctives marks are
`
`entitled. It is an inescapable conclusion that the Cited Mark in relation to the goods identified in the
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`registration is perceived by the relevant consuming public as a weak indicator of source. Accordingly,
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`the requested remand and suspension should be granted.
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`Applicant respectfully requests that if Board grants the requested amendment and suspension,
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`and the examining attorney is persuaded to withdraw the likelihood of confusion refusal but now finds
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`
`
`8
`
`

`

`the Applicant’s Mark to be merely descriptive in connection with the identified goods in the
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`Application, that Applicant be allowed to submit an Amendment to Allege Use and if necessary, be
`
`permitted to amend the Application from the Principal to the Supplemental Register.
`
`II.
`
`APPLICANT DEMONSTRATES SUFFICIENT GOOD CAUSE BECAUSE IT
`WAS UNABLE TO
`SUBMIT ADDITIOANL EVIDENCE DURING
`PROSECUTION OF THE APPLICATION
`
`Even evidence that existed prior to Applicant’s filing of the notice of appeal should be
`
`considered by the examining attorney. Sufficient good cause to justify a request for remand “may take
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`the form of a satisfactory explanation as to why the proposed additional evidence was not filed prior
`
`to appeal.” TBMP § 1207.02. See In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1725 (TTAB
`
`2016) (“Applicant’s brief on the case is not the appropriate avenue for raising an objection to
`
`examination procedures. If Applicant believed that the issuance of the June 8, 2014 Office Action was
`
`procedurally erroneous, or if Applicant desired more time to address the Examining Attorney’s new
`
`evidence, Applicant’s recourse was to file with the Board, after the filing of the appeal but before
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`briefing, a request for remand with a showing of good cause.”).
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`Applicant submits that it previously submitted a Petition to the Director asserting that the final
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`Office Action refusal was premature. Although the petition was denied, the purpose of such request
`
`was to obtain an additional refusal to register in order to submit additional evidence. In particular,
`
`Applicant attaches as Exhibit 4 the declaration of Applicant’s principal, Jacques Bermon Webster II
`
`pka Travis Scott, to address for the first time the examining attorney’s contention in his denial in the
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`request for reconsideration that corroborates the contention that consumers would associate and
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`recognize Travis Scott as the source of CACTI and CACTUS JACK in connection with clothing.
`
`Given that the denial for the request for reconsideration was issued after the filing of the notice of the
`
`appeal, Applicant did not have an opportunity to submit such evidence. Accordingly, based on the
`
`foregoing, Applicant sufficiently demonstrates good cause to warrant justification of the remand for
`
`
`
`9
`
`

`

`consideration by the examining attorney of evidence that may have existed prior to the filing of the
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`notice of appeal.
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`III. CONCLUSION
`
`In view of the foregoing, Applicant respectfully submits that it demonstrates sufficient good
`
`cause to justify suspension of action on the appeal and remand of the subject application to the
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`examining attorney for consideration of the enclosed evidence. Should the examining attorney now
`
`raise the issue of mere descriptiveness against the Application, Applicant respectfully requests that it
`
`be allowed to submit an Amendment to Allege Use and alternatively seek registration on the
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`Supplemental Register. If the Board finds Applicant’s grounds insufficient to warrant the requested
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`remand and suspension, Applicant respectfully requests additional time to file its main brief.
`
`Respectfully submitted,
`
`
`
`
`
`/Kia Kamran/
`Kia Kamran, Esq.
`Kia Kamran P.C.
`1900 Avenue of the Stars, 25th Floor
`Los Angeles, CA 90067-4301
`T: (310) 284-8600
`kia@tunelaw.com
`
`Attorney for Applicant
`
`
`
`Dated: February 5, 2024
`
`
`
`
`
`
`
`
`
`
`10
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`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case: 22-1578 Document: 50 Page: 1 Filed: 06/26/2023
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`SPIREON, INC.,
`Appellant
`
`v.
`
`FLEX LTD.,
`Appellee
`______________________
`
`2022-1578
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board in No.
`91252138.
`
`______________________
`
`Decided: June 26, 2023
`______________________
`
`MICHAEL J. BRADFORD, Luedeka Neely Group, PC,
`Knoxville, TN, argued for appellant. Also represented by
`MARK P. CROCKETT.
`
` MATTHEW CHRISTIAN HOLOHAN, Sheridan Ross PC,
`Denver, CO, argued for appellee. Also represented by
`PAMELA NICOLE HIRSCHMAN, JULIA SHURSKY.
` ______________________
`
`Before DYK, MAYER, and REYNA, Circuit Judges.
`
`DYK, Circuit Judge.
`
`

`

`Case: 22-1578 Document: 50 Page: 2 Filed: 06/26/2023
`
`2
`
`SPIREON, INC. v. FLEX LTD.
`
`Spireon, Inc. appeals a Trademark Trial and Appeal
`Board (“Board”) decision sustaining Flex Ltd.’s opposition
`to the registration of Spireon’s FL FLEX mark on the
`ground of likelihood of confusion with Flex’s three regis-
`tered marks FLEX, FLEX (stylized), and FLEX PULSE.
`We vacate and remand.
`
`BACKGROUND
`
`Spireon filed a trademark application seeking to regis-
`ter the mark FL FLEX on October 25, 2018, 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.” J.A. 89. On September 1, 2019,
`an Examining Attorney approved the application for publi-
`cation to the Principal Register, and thereafter it was pub-
`lished for opposition. On November 7, 2019, Flex opposed
`registration on the grounds of priority and likelihood of
`confusion with Flex’s previously registered marks FLEX,
`FLEX (stylized), and FLEX PULSE.
`
`I. Flex’s Registered Marks
`
`Flex’s FLEX mark was registered July 12, 2016, in In-
`ternational Classes1 (“classes”) 35, 39, 40, and 42, for ser-
`vices
`including,
`in
`relevant part,
`“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.” J.A. 95.
`
`
`
`1 The classes are categories of various goods and ser-
`vices as established by the international classification sys-
`tem under
`the Nice Agreement Concerning
`the
`International Classification of Goods and Services for the
`Purposes of the Registration of Marks. See 37 C.F.R.
`§§ 2.85, 6.1.
`
`

`

`Case: 22-1578 Document: 50 Page: 3 Filed: 06/26/2023
`
`SPIREON, INC. v. FLEX LTD.
`
`3
`
`Flex’s FLEX (stylized) mark was registered on April 5,
`2016, in classes 35, 40, and 42 for services including, in rel-
`evant part, “supply chain management services; transpor-
`tation
`logistics
`services, namely, arranging
`the
`transportation of goods for others; logistics management in
`the field of electronics; . . . [and] inventory management
`services for others.” J.A. 98.
`
`Flex’s FLEX PULSE mark was registered on December
`12, 2017, in classes 9, 35, and 42, for both goods and ser-
`vices. FLEX PULSE was registered for the goods:
`
`[c]omputers; computer software for use in supply
`chain management, logistics and operations man-
`agement, quality control, inventory management,
`and scheduling of transportation and delivery;
`[c]omputer software in the nature of downloadable
`mobile applications for use in supply chain man-
`agement, logistics and operation management,
`quality control, inventory management, and sched-
`uling of transportation and delivery[.]
`
`J.A. 101. The FLEX PULSE mark was also registered for
`services including, in relevant part, “[s]upply chain man-
`agement services; logistics management in the field of elec-
`tronics; . . . inventory control and inventory management
`services” as well as “providing temporary use of non-down-
`loadable computer software for supply chain management,
`logistics and operation, inventory control, inventory man-
`agement and tracking of documents and products over com-
`puter networks, intranets and the internet in the field of
`supply chain management.” J.A. 101.
`
`

`

`Case: 22-1578 Document: 50 Page: 4 Filed: 06/26/2023
`
`4
`
`SPIREON, INC. v. FLEX LTD.
`
`II. The Board’s Decision
`
`On January 25, 2022, the Board sustained Flex’s oppo-
`sition.2 The Board considered whether there was a likeli-
`hood of confusion based on relevant factors enumerated in
`In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361
`(CCPA 1973) [hereinafter DuPont factors].
`
`In its consideration of the first DuPont factor, the sim-
`ilarity of the marks, the Board addressed the strength of
`Flex’s marks, including the marks’ conceptual and com-
`mercial strength. The Board first addressed thirty third-
`party trademark registrations and applications, which
`“may bear on conceptual weakness if a term is commonly
`registered for similar goods or services.” J.A. 58 (quoting
`Tao Licensing, LLC v. Bender Consulting Ltd., 125
`U.S.P.Q.2d 1043, 1057 (T.T.A.B. 2017)). The Board ex-
`cluded from consideration ten registrations on grounds not
`challenged on appeal. Of the remaining twenty registra-
`tions, the Board assigned “low probative value,” J.A. 60, to
`fifteen marks that contained “compound terms including
`another word or letters in addition to ‘FLEX’ that change
`the overall meaning and/or commercial impression of the
`marks as a whole.” J.A. 59. The Board then considered the
`five remaining marks: FLEX, including for “[c]omputer
`software used for logistics management”; FLEX, including
`for “[c]omputer software platform for use [i]n . . . managing
`supply chains”; LOAD FLEX for “[c]omputer software de-
`velopment in the field of freight transportation”; VALUE
`FLEX for “[p]acking, loading and unloading of portable
`cargo containers; transport and delivery of portable cargo
`containers”; and FLEX, including for “[a]dvanced transpor-
`tation controller for managing . . . traffic signal control and
`
`
`
`2 On February 10, 2022, the Board issued a corrected
`decision. All citations in this opinion are to the corrected
`version.
`
`

`

`Case: 22-1578 Document: 50 Page: 5 Filed: 06/26/2023
`
`SPIREON, INC. v. FLEX LTD.
`
`5
`
`integration with connected or automated vehicles.”
`J.A. 60. The Board concluded that:
`
`[w]hile the Federal Circuit has held that “exten-
`sive evidence of third-party use and registrations
`is ‘powerful on its face,’” . . . the record of third-
`party registrations in this case is far less than the
`amount of evidence found convincing in Jack
`Wolfskin and Juice Generation wherein “consider-
`able evidence of third-party registration[s]” of sim-
`ilar marks was shown.
`
`J.A. 61 (alteration in original) (quoting Jack Wolfskin
`Ausrustung Fur Draussen GmbH & Co. KGAA v. New Mil-
`lennium Sports, S.L.U., 797 F.3d 1363, 1373–74 (Fed. Cir.
`2015)) (citing Juice Generation, Inc. v. GS Enters. LLC, 794
`F.3d 1334 (Fed. Cir. 2015)). The Board found that the evi-
`dence of third-party registrations did not show that Flex’s
`marks were conceptually weak and concluded that Flex’s
`marks were inherently distinctive.
`
`The Board then analyzed the commercial strength of
`FLEX, FLEX (stylized), and FLEX PULSE. The Board con-
`sidered evidence of commercial strength, such as evidence
`that Flex has used its marks in commerce since 2015, but
`ultimately found insufficient evidence to show “any degree
`of commercial recognition by the relevant purchasing pub-
`lic.” J.A. 66. The Board also considered whether evidence
`of fifteen third-party websites proved Flex’s marks to be
`commercially weak. Of the fifteen uses, the Board found
`four of the uses to be “associated with irrelevant goods and
`services,” J.A. 64, and three of the marks to contain “addi-
`tional elements that cause[d]” the third-party marks “to be
`less similar to [Flex’s] marks than is [Spireon’s] mark.”
`J.A. 65. The Board assigned these marks “low probative
`value,” J.A. 64, and then considered the eight remaining
`uses. The Board again found that eight third-party uses
`was “far less than the amount of evidence found convincing
`in Jack Wolfskin and Juice Generation” and appeared to
`
`

`

`Case: 22-1578 Document: 50 Page: 6 Filed: 06/26/2023
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`6
`
`SPIREON, INC. v. FLEX LTD.
`
`give the evidence no weight in the analysis. J.A. 65–66.
`The Board did not address the third-party registrations,
`without proof of use, in its analysis of commercial strength.
`
`Ultimately, the Board found the marks to be inherently
`distinctive and afforded the marks “the normal scope of
`protection to which inherently distinctive marks are enti-
`tled.” J.A. 66 (quoting Bell’s Brewery, Inc. v. Innovation
`Brewing, 125 U.S.P.Q.2d 1340, 1347 (T.T.A.B. 2017)).
`
`The Board then considered the similarity of the marks,
`analyzing Spireon’s FL FLEX against FLEX, FLEX (styl-
`ized), and, mistakenly, “FLEX PLUS” rather than “FLEX
`PULSE.” The Board found the marks highly similar and
`concluded that the first DuPont factor supported a finding
`of likelihood of confusion.
`
`Under the second DuPont factor, the similarity or dis-
`similarity of the parties’ goods and services, the Board
`found that the goods and services were related and comple-
`mentary. For the third DuPont factor, the similarity or dis-
`similarity of trade channels and classes of consumers, the
`Board found that the trade channels and classes of consum-
`ers overlapped. Finally, in its consideration of other argu-
`ably probative facts under DuPont factor thirteen, the
`Board declined to find that Spireon’s adoption of FL FLEX
`was made in bad faith after Spireon had notice of Flex’s
`marks. The Board did not consider the other DuPont fac-
`tors, recognizing that the Board must only consider “each
`DuPont factor for which there is evidence and argument.”
`J.A. 56 (citing In re Guild Mortg. Co., 912 F.3d 1376, 1380
`(Fed. Cir. 2019)).
`
`Ultimately, the Board found that there was a likelihood
`of confusion between Spireon’s and Flex’s marks and, ac-
`cordingly, sustained Fle