## Facts

- Lion Capital LLP owned U.S. registrations for the marks “LION” and “LION CAPITAL” covering investment-related financial services, including investment management, financial and investment planning and research, capital investment consultation, equity capital investment, and venture capital services.
- Lion began using its marks in U.S. commerce in 2005 and filed related trademark applications in 2005 and 2007.
- Stone Lion Capital Partners, L.P., a hedge fund manager, filed an intent-to-use application in 2008 to register “STONE LION CAPITAL” for “financial services, namely investment advisory services, management of investment funds, and fund investment services.”
- Lion opposed the application before the Trademark Trial and Appeal Board (TTAB) under Lanham Act § 2(d), asserting likelihood of confusion with its registered marks.
- Applying the DuPont likelihood-of-confusion factors, the TTAB found the marks similar; the services and trade channels overlapping; and purchaser conditions supporting confusion. It refused registration.
- Stone Lion appealed the TTAB refusal to the U.S. Court of Appeals for the Federal Circuit under 15 U.S.C. § 1071(a).

## Issues

1. Whether substantial evidence supported the TTAB’s finding that “STONE LION CAPITAL” is sufficiently similar in appearance, sound, and commercial impression to “LION CAPITAL” and “LION.”
2. Whether the TTAB correctly assessed trade channels and purchaser classes based on the identifications in the application and registrations, rather than asserted differences in the parties’ actual customers.
3. Whether the TTAB erred in weighing purchaser sophistication and conditions of sale in evaluating likelihood of confusion under Lanham Act § 2(d).

## Decision

- The Federal Circuit affirmed the TTAB’s refusal to register “STONE LION CAPITAL.”
- The court held the likelihood-of-confusion determination was supported by substantial evidence and consistent with law.
- The court agreed that “LION” was a dominant shared element and that adding “STONE” did not sufficiently distinguish the overall commercial impression.
- The court upheld the TTAB’s comparison of services, channels of trade, and purchasers as defined by the application and registration identifications, not the parties’ current market practices.
- The court agreed that even if many purchasers are sophisticated, sophistication alone does not preclude confusion where marks and services are closely similar.

## Legal Principles

- Likelihood of confusion under Lanham Act § 2(d) is evaluated using the DuPont factors to the extent the record contains relevant evidence; the Board’s factual findings are reviewed for substantial evidence.
- For an intent-to-use application, the analysis focuses on the services as identified in the application and registrations and assumes use in all normal channels of trade to all usual classes of purchasers for those services.
- In comparing marks, it is permissible to give greater weight to dominant elements while still considering each mark in its entirety.
- Purchaser sophistication is one factor and does not foreclose confusion when the marks are highly similar and the services overlap.

## Conclusion

The Federal Circuit sustained the TTAB’s refusal to register “STONE LION CAPITAL” because the shared dominant term “LION,” combined with overlapping investment services and unrestricted trade channels in the identifications, supported a likelihood of confusion notwithstanding claims of sophisticated clientele.


Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317 (Fed. Cir. 2014)