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Not All DuPont Factors Are Made Equal

| Alexander D. Zeng

STRATUS NETWORKS, INC. v. UBTA-UBET COMMUNICATIONS INC.

Before Moore, Lourie, and Reyna.  Appeal from the Trademark Trial and Appeal Board.

Summary: The absence of explicit findings on particular DuPont factors used by the Board to assess whether there is a likelihood of confusion does not give rise to reversible error where the record demonstrates the Board has considered the factor and the corresponding arguments and evidence.

Stratus Networks, Inc., (“Stratus”), a facilities-based telecommunications provider, filed a trademark application for the STRATUS NETWORKS design mark.  UBTA, a telecommunications provider, filed an opposition against Stratus’ trademark application for the STRATUS NETWORKS design mark on the ground of a likelihood of confusion.  UBTA owned trademark registrations for the STRATA NETWORKS design mark and STRATA word mark.  The Board considers the DuPont factors when assessing the likelihood of confusion.  In the Opposition, the Board found the DuPont factors relating to the similarity of the parties’ marks, the parties’ services, and the parties’ trade channels weighed in favor of a likelihood of confusion.  The Board found that the factor relating to consumer sophistication was neutral or weighed slightly against a likelihood of confusion, and the factors relating to strength of opposer’s marks and length of time during and conditions under which there has been concurrent use without actual confusion were neutral in determining a likelihood of confusion.  On balance, the Board found a likelihood of confusion and refused registration.

Stratus argued on appeal that the record evidence supported a different conclusion than the conclusion reached by the Board.  The Federal Circuit held that even if different conclusions may be reasonably drawn from the record evidence, the Board’s decision must be sustained if supported by substantial evidence.  Here, the Board’s findings were supported by substantial evidence such as dictionary definitions, testimony, and third-party registrations and websites.

Stratus also argued that the Board committed legal error when considering the factors relating to consumer sophistication and actual confusion.  Specifically, Stratus argued that the Board improperly discounted the consumer sophistication factor and made no express finding on consumer sophistication.  The Federal Circuit held that while it is “preferable for the Board to make explicit findings” about each factor, the “absence of explicit findings on a given factor does not give rise to reversible error where the record demonstrates” the Board has considered the factor, arguments, and evidence.  Here, the parties’ extensive arguments and the Board’s decision demonstrate the Board sufficiently considered the consumer sophistication factor.

Lastly, Stratus argued that the Board erred in its finding that the actual confusion factor was neutral.  Stratus argued that the parties have “coexisted for over six years with not one example of actual confusion.”  The Federal Circuit held that even if the record shows no evidence of actual confusion, the significance of the factor can be reduced if the record indicates no consumers were exposed to both trademarks during the relevant time period.  Here, the record showed that the parties’ services did not geographically overlap.  Accordingly, the Federal Circuit affirmed the Board’s refusal to register Stratus’ STRATUS NETWORKS design mark based on a likelihood of confusion. 

Editor: Paul Stewart