Stone Lion Capital Partners, LP v. Lion Capital, LLP, No. 13-1353 (Fed. Cir. 2014)
Annotate this CaseNew York based Stone Lion manages a hedge fund that focuses on credit opportunities. Lion, a United Kingdom private equity firm, invests primarily in companies that sell consumer products. Lion has two marks registered with the Patent and Trademark Office and started using the marks in the U.S. in 2005. Lion filed applications for “LION CAPITAL” and “LION” in 2005 and 2007, respectively, for services including “financial and investment planning and research,” “investment management services,” “capital investment consultation,” “equity capital investment,” and “venture capital services” Lion has priority over Stone Lion with respect to those marks. In August 2008, Stone Lion filed an intent-to-use application for the mark “STONE LION CAPITAL,” proposing to use the mark in connection with “financial services, namely investment advisory services, management of investment funds, and fund investment services.” Lion opposed the registration under section 2(d) of the Lanham Act, 15 U.S.C. 1052(d), alleging that the proposed mark would likely cause confusion with Lion’s registered marks when used for Stone Lion’s recited financial services. The Trademark Trial and Appeal Board conducted the likelihood of confusion inquiry pursuant to 13 factors and refused registration. The Federal Circuit affirmed, finding that the Board had substantial evidence to support its conclusion.
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