Lion Capital LLPv.Stone Lion Capital Partners L.P.

Trademark Trial and Appeal Board

Jan 18, 2013

No. 91191681 (T.T.A.B. Jan. 18, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 18, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lion Capital LLP
v.
Stone Lion Capital Partners L.P.
_____

Opposition No. 91191681
_____

Michael Chiappetta of Fross Zelnick Lehrman & Zissu PC for Lion Capital LLP.

Karol A. Kepchar and David C. Lee of Akin Gump Strauss Hauer & Feld LLP for
Stone Lion Capital Partners L.P.
_____

Before Quinn, Kuhlke, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

On August 20, 2008, Stone Lion Capital Partners L.P. (“applicant”) filed an
intent-to-use application to register the mark STONE LION CAPITAL, in standard
character form and with “CAPITAL” disclaimed, for “financial services, namely,
investment advisory services, management of investment funds, and fund
investment services.”1 Lion Capital LLP (“opposer”) opposes registration under

1 Application Serial No. 77551196.
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Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, when used in connection with applicant’s services, so resembles
opposer’s previously used and registered marks LION and LION CAPITAL for
various financial services (collectively, “opposer’s LION Marks”) as to be likely to
cause confusion. Both parties filed briefs, and opposer filed a reply brief.
The Record
The record comprises the pleadings and the file of the opposed application.
The parties also stipulated to entry into evidence of a declaration of David E. De
Leeuw, co-founder and managing director of third party Lion Chemical Capital
LLC, and attached exhibits.
In addition, opposer has submitted the following evidence:
• Transcript of the testimonial deposition on written questions of Janet
Dunlop, the chief operating officer of opposer, with exhibits. Portions
of the deposition designated as confidential were bound and the pages
numbered separately from non-confidential portions, which are
designated herein as “Dunlop Conf. Tr.” and “Dunlop Tr.,” respectively;
• Transcript of the rebuttal testimonial deposition on written questions
of Ms. Dunlop, with exhibits (“Dunlop Rebuttal Tr.”)2;
• Transcript of the testimonial deposition on written questions of Kelly
Mayer (“Mayer Tr.”), partner in opposer3;
• Transcript of the testimonial deposition of Mario Ortiz, senior
litigation paralegal for opposer’s counsel, with exhibits;
• Excerpts from the discovery deposition of Danielle Schaefer, the chief
financial officer of applicant, with exhibits (confidential);

2 The Board denied applicant’s motion to quash the rebuttal testimonial deposition of
Ms. Dunlop on February 28, 2012.
3 We hereby approve the stipulation the parties submitted on June 6, 2011 relating to the
procedure for taking the Dunlop and Mayer depositions and certain evidence and testimony
relating to Kelly Mayer.
Opposition 91191681

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• Excerpts from applicant’s responses to opposer’s first and second set of
interrogatories;
• Printouts of pages from opposer’s website www.lioncapital.com; and
• Printouts and screenshots of pages from various websites relating to
applicant’s allegations of third-party use of LION-formative names in
association with services in the investment field.
Applicant has submitted the following additional evidence:
• Transcript of the testimonial deposition of Danielle Schaefer (“Schaefer
Tr.”), with exhibits;
• Additional excerpts from the discovery deposition of Ms. Schaefer
(confidential);
• Excerpts and exhibits from the discovery deposition of Mr. Mayer
(confidential);
• Transcript of the testimonial deposition (with exhibits) of Jacob Capps
(“Capps Tr.”), a partner in opposer and president and director of Lion
Capital (America) Inc., a U.S. subsidiary of opposer, as an adverse
witness;
• Transcript of the testimonial deposition (with exhibits) of third party
Roaring Blue Lion Capital Management, L.P., through its managing
partner Charles William Griege, Jr., under subpoena and pursuant to
FED. R. CIV. P. 30(b)(6) and 45;
• Certain of opposer’s responses to applicant’s requests for admission,
interrogatories, and document requests;
• Printouts from the TARR database of 25 registrations on the
Supplemental Register with the word “CAPITAL” disclaimed;
• Printouts of pages from various websites relating to applicant’s
allegations of third-party use of names containing both LION and
CAPITAL in association with investment services; and
• File history of opposer’s Registration No. 3543654 for LION CAPITAL.
Much of the evidence proffered by both parties has been designated
confidential and filed under seal. Relevant evidence that has been submitted under
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seal and not disclosed by the parties in the unredacted portions of their public briefs
will be discussed herein only in general terms.
Evidentiary Objections
Opposer has moved to strike the 74 pages of Internet evidence submitted
with applicant’s sixth notice of reliance, which are printouts of pages from various
websites relating to applicant’s allegations of third-party use of names containing
both LION and CAPITAL in association with investment services. Opposer objects
on the grounds that these documents are misleading, are not evidence of third-party
use, and should not be accorded a presumption that the names shown therein are in
actual use in connection with those services.
Similarly, applicant objects to three exhibits consisting of Internet printouts
– comprising state corporate records and newspaper articles – submitted by opposer
via notice of reliance. Applicant objects to the corporate records on the grounds of
relevance and materiality, and to the newspaper articles on the basis of hearsay.
Each of the Internet documents subject to these objections follows the
requirements of Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB
2010). This evidence therefore is admissible not for the truth of the matter
asserted, but for what the printouts show on their face and whatever probative
value they may have. Where relevant, specific evidence is discussed infra.
Applicant also lodges several objections to opposer’s testimony and deposition
exhibits. While we have carefully considered each of applicant’s objections, our
rulings herein address only evidence that is relevant to our opinion and not
Opposition 91191681

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otherwise of record.4 In particular, applicant moves to strike portions of the
transcripts of the testimonial deposition of Lion Capital’s witness Kelly Mayer and
the rebuttal testimonial deposition of opposer’s witness Janet Dunlop, both of which
were taken on written questions, as follows:
• Mayer Tr. 20:11-16: Question number 12 asked: “Where are most of
your investors located?” The witness responded that about two-thirds,
or 60%-70%, of the capital committed to opposer’s first two funds was
from investors in the United States. Applicant is not specific, but it
presumably objected that this testimony is non-responsive because the
answer is provided in terms of capital rather than individuals or
institutions. We view the testimony as one way of responding to a
somewhat vague question. Applicant’s motion to strike is denied.5
• Dunlop Rebuttal Tr. 13:25-14:6 and Exhibit 12 (filed under seal): This
testimony concerns an exhibit applicant contends was not produced
until after its testimony period closed. Opposer responds that it
produced the document on July 26, 2011 and can prove it did so via a
cover letter enclosing the document, which it did not submit but could
provide at the Board’s request. Assuming that applicant is correct and
the document was not timely produced, we will nonetheless consider
the document and corresponding testimony for whatever probative
value they may have in the nature of rebuttal evidence, given that the
document was created after discovery closed and concerns use of a
mark by a third party identified by applicant. Furthermore, applicant
had notice of the document before Ms. Dunlop’s rebuttal testimonial
deposition on written questions, as well as the opportunity to cross-
examine the witness about it.
The Parties
Applicant is a New York-based investment advisor for hedge funds.
Applicant’s brief at 1. Applicant “has managed a credit opportunities hedge fund

4 Opposer states that it has not relied on a number of the challenged passages, or that they
are not necessary to substantiate the propositions set forth in its briefs. We therefore have
given that testimony no consideration.
5 Of record, but designated as confidential, is an excerpt from the discovery deposition of the
same witness in which he provided an estimated number of U.S. investors.
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with a focus on event driven, distressed, high yield and special situations under the
name ‘Stone Lion Portfolio L.P.’ since the fund’s inception on November 6, 2008.”
Id.
Opposer, located in the United Kingdom, is an investment firm that seeks to
make control investments in mid-sized and large consumer-oriented businesses in
Europe and North America. Printout from opposer’s website, Exhibit 101 to Capps
Tr., at 2. Opposer’s investments range “from equity and equity-like securities . . . to
investments in debt securities both on a primarily issued basis or in some cases on a
secondary basis.” Mayer Tr. at 10:2-6. Opposer began using the LION and/or LION
CAPITAL marks in the United States in April 2005. Id. at 12:11-19. Its investors
include pension funds, fund to fund representation, individuals, and family offices.
Id. at 19:14-22. Its primary form of investing is as a private equity house making
investments on a private basis in companies, both equity and debt. Id. at 11:7-10.
About two-thirds of the capital committed to its funds is from U.S. investors. Id. at
20:11-16. Opposer’s investments include distressed debt. Dunlop Tr. at 10:11-11:22
and 31 (errata). Although some conflicting deposition testimony (designated as
confidential) is of record, opposer asserts that it uses the marks LION and LION
CAPITAL interchangeably in association with its services.6
Standing and Priority
Applicant does not dispute opposer’s standing or priority. Opposer’s standing
to oppose registration of applicant’s mark is established by its pleaded Registration

6 Opposer’s response to applicant’s Interrogatory No. 31, submitted via applicant’s Notice of
Reliance, December 29, 2011.
Opposition 91191681

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Nos. 3543654 (LION CAPITAL) and 3645484 (LION), which the record shows to be
valid and subsisting, and owned by opposer. See, e.g., Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (party’s ownership of
pleaded registration establishes standing).
In addition, because opposer’s pleaded registrations are of record, priority is
not an issue with respect to the services covered by opposer’s pleaded registrations.
Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB1998) (citing King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974)). Specifically, opposer filed foreign application Serial No. 78627031 for LION
CAPITAL on May 10, 2005 under Trademark Act Section 44(d), and Registration
No. 3543654 issued under Trademark Act Section 44(e) on December 9, 2008;
opposer filed foreign application Serial No. 77300323 for the mark LION on October
10, 2007 under Trademark Act Section 44(d), and Registration No. 3645484 issued
under Trademark Act Section 44(e) on June 30, 2009. There is no dispute that
opposer has priority vis-à-vis applicant, which filed the involved application on an
intent-to-use basis on August 20, 2008 and has not attempted to establish priority
of use for its mark STONE LION CAPITAL.
These services in opposer’s pleaded registrations are:
• LION CAPITAL (Registration No. 3543654): “Equity capital
investment; venture capital services, namely, providing financing to
emerging and start-up companies; leveraged buy outs and investments
in financially distressed or underperforming companies; real estate
investment; hedge fund services”
• LION (Registration No. 3645484): “Financial services, namely,
financial and investment planning and research, financial
consultation, and assisting others with the completion of financial
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transactions for stocks, bonds, securities and equities; venture capital
services, namely, providing financing to emerging and start-up
companies; leveraged buy outs and investments in financially
distressed or under performing companies; real estate affairs, namely,
real estate investment services; equity capital investment; investment
services, namely, investment management services, mutual fund and
hedge fund investment services, management of a capital investment
fund, capital investment consultation and financial trust operations;
trust services, namely, investment and trust company services;
advisory and consultancy services relating to corporate finance and
venture capital services; investment in the field of private equity,
venture capital and specialized funds and other funds; advising on and
managing investments; private equity investment management;
buying, selling and holding of securities; investment management
services relating to acquisitions and mergers; management of equity
and debt investment portfolios; investment asset management”
All of the services identified in both registrations are in International Class 36.
Likelihood of Confusion
“We determine likelihood of confusion by focusing on . . . whether the
purchasing public would mistakenly assume that the applicant’s [services] originate
from the same source as, or are associated with, the [services] in the cited
registrations.” In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). We consider all probative facts in evidence which are relevant to
the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Opposer must establish that
there is a likelihood of confusion by a preponderance of the evidence. Cunningham,
55 USPQ2d at 1848.
The parties have presented evidence as to the following du Pont factors:
similarity of the parties’ marks (factor 1); similarity of their services (factor 2);
similarity of trade channels (factor 3); the conditions under which and buyers to
Opposition 91191681

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whom sales are made, i.e., consumer sophistication (factor 4); the strength of
opposer’s marks (factor 5); and the number and nature of similar marks in use on
similar goods (factor 6). The parties essentially agree that the du Pont factors
relating to actual confusion (factors 7 and 8) are neutral.
A. Similarity of the Services
We first address the similarities or differences between opposer’s and
applicant’s services, the second du Pont factor. It is settled that in making our
determination regarding the relatedness of the parties’ services, we must look to the
services as identified in the application and opposer’s pleaded registrations. See
Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). That is, because the scope of the registration applicant
seeks is defined by its application (not by its actual use), it is the application (not
actual use) that we must look to in determining applicant’s right to register:
The authority is legion that the question of registrability
of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Id. It is sufficient if a likelihood of confusion is found with respect to use of
applicant’s mark on any item that comes within the description of services in the
application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net,
Inc., 90 USPQ2d 1393, 1397 (TTAB 2007).
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Applicant operates a hedge fund. Its application, however, covers much
broader services: “financial services, namely, investment advisory services,
management of investment funds, and fund investment services.” The parties have
introduced extensive evidence regarding the similarities and differences between
the services they actually offer. The issue before us, however, is whether the
services as identified in the application overlap with the services as identified
in opposer’s pleaded registrations.
The financial services identified in opposer’s Registration No. 3645484 for
LION include “management of a capital investment fund” and “capital investment
consultation.” Opposer has established that it is offering these services in
interstate commerce. Applicant’s identification “management of investment funds”
encompasses opposer’s identification “management of a capital investment fund”
and applicant’s “investment advisory services” encompasses opposer’s “capital
investment consultation.” Thus, opposer’s services are legally identical to
applicant’s “financial services, namely, investment advisory services, management
of investment funds, and fund investment services.”
The similarity of the parties’ services weighs strongly in favor of a likelihood
of confusion.
B. Channels of Trade
The third du Pont factor considers the similarity of the trade channels for the
parties’ services. A significant amount of the evidence submitted by the parties –
some of it confidential – is directed to the channels of trade for their services, as
well as conditions of sale, discussed infra. Suffice it to say that the parties agree
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that, by law, they cannot advertise or make general solicitations for investors; they
must have a substantive pre-existing relationship with the offeree and confirm that
they are qualified to invest before making an offer. See Applicant’s Brief at 6 n.7.
Both parties market their services one-on-one, and the evidence shows that
identifying and procuring investors is a protracted and personal enterprise.
Because there are no limitations to the recitation of services in the
application or opposer’s registrations as to channels of trade and classes of
purchasers, we must presume that the parties’ services travel through all usual
channels of trade and are offered to all normal potential purchasers. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981); see also Paula Payne Prods. Co. v. Johnson Publ’g
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Moreover, because the services described in the application and opposer’s
registrations are in part legally identical, we must presume that the channels of
trade and classes of purchasers are the same. See American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of purchasers.”).
Du Pont factor three therefore weighs strongly in opposer’s favor.
C. Similarity of the Marks
We turn next to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of “‘the marks in their entireties as to appearance, sound,
connotation, and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
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Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are
mindful that the test is not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether they are sufficiently similar in
terms of their overall commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion.”). On the other hand, different
features may be analyzed to determine whether the marks are similar. Price Candy
Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In
fact, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
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conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data
Corp., 224 USPQ at 751.
We also note that where, as here, the services are closely related, the degree
of similarity necessary to find likelihood of confusion need not be as great as where
there is a recognizable disparity between the services. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Applicant’s mark is STONE LION CAPITAL, while opposer’s marks are
LION and LION CAPITAL. Both parties have disclaimed the word “CAPITAL”
from their respective marks. It is well-settled that disclaimed, descriptive matter
may have less significance in likelihood of confusion determinations. See
Cunningham, 55 USPQ2d at 1846 (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data
Corp., 224 USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”).
In this case, applicant’s mark incorporates the entirety of opposer’s marks,
and the common term “LION” is arbitrary in association with the parties’ services.
Although the word “STONE” appears first in applicant’s mark and contributes to
the mark’s commercial impression, it is an adjective modifying the noun “LION,”
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which we view as the dominant part of both parties’ marks. We find in this case
that the addition of the word “STONE” is not sufficient to distinguish the marks in
the context of the parties’ services, and we find them to be similar in sight, sound,
meaning, and overall commercial impression. The similarity of the parties’ marks
weighs in favor of a likelihood of confusion.
D. Strength of Opposer’s Marks
Du Pont factor five assesses the strength of opposer’s marks through, for
example, evidence of sales, advertising, and length of use. As noted, although
opposer’s capital investment funds are large, opposer is prohibited from advertising
its services. Its marks have been in use in the United States since 2005. Mayer Tr.
at 12:13-19. Opposer submitted evidence that some news about its investments has
been published in The Wall Street Journal and The New York Times, as well as on
Dow Jones Newswire, CNNMoney.com, FoxBusiness.com, and Forbes.com, among
other publications. Dunlop Conf. Tr. at 17-18 and Exh. 7-8.7 Applicant, in turn,
argues that “Lion Capital’s business in the United States has involved only a few
dozen investors and minimal press coverage.” Applicant’s Brief at 19.
Opposer has not established that its marks are well-known in the financial
services field. We view this du Pont factor as neutral.
E. Number and Nature of Similar Marks in Use for Similar Services
Applicant has made of record the testimony deposition of one third party and
a sworn declaration from another. Both provide specific fund investment services.

7 Opposer notes that this testimony and these exhibits were erroneously designated as
confidential and may be publicly disclosed. Opposer’s Brief at 9 n.3.
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These are Roaring Blue Lion Capital Management, L.P., which has used the mark
BLUE LION CAPITAL since 2005 in connection with hedge fund services, and Lion
Chemical Capital, LLC. The latter company is a private equity firm that provides
equity capital investment services, targeting investment opportunities in the
chemical and related industries. Declaration of Third Party Lion Chemical Capital
LLC at 1 ¶ 3. It has used the mark LION CHEMICAL CAPITAL in connection with
its services since 2001. Id. at 2 ¶ 9. Lion Chemical Capital refers to itself in
marketing materials as “LION.” Id., Exh. 2 at LCC019-20, LCC022. It has been
the subject of U.S. press coverage. Id., Exh. 4.
In addition, opposer entered into a consent agreement with the owner of the
mark LIONESS CAPITAL PARTNERS & Design, registered for “private equity
financing and venture capital investment services” in International Class 36,8
which had been cited against opposer’s application for LION CAPITAL.9 On
deletion of “Capital” from its applied-for mark, opposer also consented to the use
and registration of LION HOUND for “investment management services; fund
investment services; hedge fund investment services” by Lion Hound Capital L.P.10
See Applicant’s Brief at 12; Reply Brief at 20. There is no record evidence regarding
the degree of consumer awareness of the LIONESS CAPITAL PARTNERS & design
and LION HOUND marks.

8 Registration No. 2715598.
9 See Response to Office Action, May 27, 2008, Registration No. 3543654, submitted with
applicant’s first notice of reliance, filed December 29, 2011.
10 Registration No. 3985974.
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Applicant also submitted Internet printouts referencing other third parties,
as follows: Liongate Capital Management; LionEye Capital Management LLC;
Lion’s Path Capital; Lion Capital Group; Blue Lion Capital Management, L.L.C.11;
LionStone Capital Mngmnt; Lion Capital Investment Group; Lion Capital LLC; Sea
Lion Capital Management LLC; Lion Capital Holdings, Inc.; Lion Capital
Management Ltd.; Lion Pride Capital Partners LLC; Lion Capital Partners, L.P.;
and Lion Share Capital LLC. Applicant has not established length or extent of use
of these names. With its rebuttal notice of reliance submitted February 14, 2012,
and the deposition transcript of Mario Ortiz, with exhibits, Opposer submitted
Internet printouts calling into question the current status of several of these
purported uses. On the other hand, the record includes testimony (designated as
confidential) that opposer is aware of and has tolerated some of these uses of LION-
formative marks in association with investment services by third parties.12
On its face, third-party evidence like that submitted by applicant shows “that
the public may have been exposed to those internet websites” and therefore may be
aware of the marks used therein. Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98
USPQ2d 1066, 1072 (TTAB 2011). Such evidence generally has minimal probative
value where, as here, it is not accompanied by any evidence of consumer awareness.

11 Record evidence suggests that this reference is distinct from Roaring Blue Lion Capital
Management, L.P., which testified under subpoena.
12 However, “it is entirely reasonable for the opposer to object to the use of certain marks in
use on some goods which it believes would conflict with the use of its marks on its goods
and services while not objecting to use of a similar mark on other goods which it does not
believe would conflict with its own use.” McDonald’s Corp. v. McKinley, 13 USPQ2d 1895,
1899-1900 (TTAB 1989).
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See Penguin Books Ltd., 48 USPQ2d at 1284 n.5 (noting that white pages listings do
not show that the public is aware of the companies).
Applicant also submits evidence that opposer has changed its position with
respect to third-party LION-formative marks. The file history for Registration No.
3543654, opposer’s LION CAPITAL mark, includes a response to an Office action
submitted May 23, 2008, in which opposer made extensive arguments as to why
confusion was unlikely between its mark and the cited mark ROARING LION.13
Opposer argued in that response that the marks made different commercial
impressions, demonstrated by the cited registration’s coexistence on the Register
“with numerous other LION marks in Class 36.”14 Opposer concluded that its
search of the Patent and Trademark Office database
shows that here are over forty registered or approved
LION marks in Class 36, owned by numerous different
third parties. . . . These coexisting third-party
registrations and approved publications are
relevant to show that, given the field of LION marks,
consumers will look to other elements to distinguish
the source of the services. Furthermore, where a
search of the Office’s records locates numerous marks
owned by different third parties, TMEP § 1207.01(d)(x)
states that the examining attorney “should consider the
extent to which dilution may indicate that there is no
likelihood of confusion.” Applicant submits that the
successful coexistence of third-party LION marks on
the Register in Class 36 demonstrates the Patent
and Trademark Office’s recognition that even small
variations in overall appearance can suffice to
prevent consumer confusion.15

13 Registration No. 2948611.
14 Applicant’s first notice of reliance, submitted December 29, 2011, “Request for Removal
from Suspension,” at unnumbered p. 3.
15 Id. at unnumbered p. 5 (emphases added) (citation omitted).
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We do not construe opposer’s previous legal opinion by itself as conclusive on
the issue of the diluted nature of its marks. See Top Tobacco, L.P. v. North Atlantic
Operating Co., 101 USPQ2d 1163, 1172 (TTAB 2011). Rather, we have considered
opposer’s earlier arguments to be “illuminative of shade and tone in the total
picture confronting the decision maker.” Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978); see also Anthonys
Pizza & Pasta Int’l, Inc. v. Anthonys Pizza Holding Co., 95 USPQ2d 1271, 1281
(TTAB 2009) (same), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010).
Notwithstanding opposer’s earlier analysis, we cannot conclude that the
record contains sufficient probative evidence of third-party use to establish a
crowded field of LION-formative marks for similar investment services. See, e.g.,
AutoZone Parts, Inc. v. Dent Zone Cos., 100 USPQ2d 1356, 1364-65 (TTAB 2011)
(three third-party uses of ZONE marks, with no evidence of extent of use or
promotion, did not prove AUTOZONE weak); cf. Carefirst of Maryland Inc. v.
FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1510 (TTAB 2005), aff’d, 479
F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007) (testimony from 12 third parties
established a crowded healthcare field for the descriptive terms “care” and “first”).
The number of LION-formative marks with evidence relating to their actual
use in association with similar services is small. Moreover, while the third-party
marks limit the scope of protection for opposer’s marks, each mark registered or
confirmed to be in use for similar services makes a commercial impression less
similar to opposer’s LION Marks than does applicant’s mark. Applicant has not
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established that the investment services field is crowded with LION-formative
marks, such that consumers for legally identical services are accustomed to
distinguishing among them based on relatively small differences in the marks. We
find that du Pont factor six is therefore neutral.
F. Conditions of Sale and Consumer Sophistication
Turning to the final factor relevant here, the fourth du Pont factor considers
the conditions under which and buyers to whom sales are made. The evidence
establishes that the parties’ target investors are sophisticated, and the minimum
required investments are large. We must point out again, however, that we are
constrained to consider the parties’ services as they are recited in the application
and registrations, respectively. The services offered by the parties, as identified in
their respective application and registrations, are not restricted to high-dollar
investments or sophisticated consumers. Rather, applicant’s “investment advisory
services” and opposer’s “capital investment consultation” could be offered to, and
consumed by, anyone with money to invest, including ordinary consumers seeking
investment services.
Evidence regarding the sophistication of consumers of the parties’ services is
not determinative in view of the services as identified in the application and the
registration. Although even ordinary consumers will exercise care when making
financial decisions, careful or sophisticated purchasers are not immune from source
confusion where similar marks are used in connection with related services. See In
re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
(“‘Human memories even of discriminating purchasers . . . are not infallible.’”)
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(quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970)). In light of applicant’s identification of services, we
find that du Pont factor four weighs in opposer’s favor.
Weighing the Factors
Applicant proposes to register a mark that is similar to opposer’s LION
Marks for legally identical services offered to the same customers through the same
channels of trade. Du Pont factors one through four thus weigh in opposer’s favor,
while the remaining du Pont factors are neutral.
On balance, we find that opposer has established by a preponderance of the
evidence that applicant’s mark STONE LION CAPITAL is likely to cause confusion
with opposer’s marks LION and LION CAPITAL when used in association with the
parties’ respective investment services. To the extent we have doubt, it must be
resolved in favor of the prior registrant. Nike Inc. v. WNBA Enters. LLC, 85
USPQ2d 1187, 1202 (TTAB 2007); Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56
USPQ2d 1504, 1514 (TTAB 2000).
Decision: The opposition is sustained and registration to applicant is refused.