Summary: Federal Circuit rules that trademark applicants will be held to full scope of services claimed in application.

Case: Stone Lion Capital Partners, L.P. v. Lion Capital LLP, No. 2013-1353 (Fed. Cir. Mar. 26, 2014) (precedential). On appeal from USPTO TTAB. Before Rader, Reyna, andWallach.

Procedural Posture: Stone Lion appealed the TTAB’s refusal to register the mark STONE LION CAPITAL due to likelihood of confusion with the marks LION CAPITAL and LION. The Federal Circuit affirmed.

Trademarks: The TTAB found Stone Lion’s mark (STONE LION CAPITAL) confusingly similar to Lion Capital’s marks (LION CAPITAL and LION) based on an analysis of the first six factors in In re E.I. du Pont de Nemours & Co. The Federal Circuit stated that the TTAB properly considered the marks in their entireties, correctly concluded that the marks have the same overall commercial impression, and gave appropriate weight to Lion’s statements during prosecution of its LION CAPITAL mark. The Federal Circuit also found no issue with the TTAB’s decision to focus on Stone Lion’s application for purposes of evaluating trade channels and the class of purchasers, rather than consider any “real-world conditions.” The Federal Circuit further agreed with the TTAB’s conclusion to evaluate the sophistication of potential customers based on the broad scope of services recited in Stone Lion’s application, stating, “[p]arties that choose to recite services in their trademark application that exceed their actual services will be held to the broader scope of the application.”