Bad Elf, LLC v. Flex Ltd.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BAD ELF, LLC,
Appellant
v.
FLEX LTD.,
Appellee
______________________
2022-1839
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91254336.
______________________
Decided: August 14, 2023
______________________
MARINA CUNNINGHAM , McCormick, Paulding & Huber
PLLC, Hartford, CT, argued for appellant. Also repre-
sented by N ICHOLAS HOLMES .
J ULIA SHURSKY , Sheridan Ross PC, Denver, CO, argued
for appellee. Also represented by MATTHEW CHRISTIAN
HOLOHAN, P AMELA N ICOLE HIRSCHMAN.
______________________
Before D YK, MAYER , and REYNA, Circuit Judges.
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BAD ELF, LLC v. FLEX LTD. 2
D YK, Circuit Judge.
Bad Elf, LLC appeals a decision of the Trademark Trial
and Appeal Board (“Board”). The Board sustained Flex
Ltd.’s opposition to the registration of Bad Elf’s FLEX
mark on the grounds of likelihood of confusion with Flex’s
three registered marks FLEX, FLEX (stylized), and FLEX
PULSE. Because the Board erred in its analysis of the
strength of Flex’s marks, we affirm-in-part, vacate-in-part,
and remand.
BACKGROUND
Bad Elf filed an intent-to-use trademark application
under 15 U.S.C. § 1051(b) seeking to register the mark
FLEX on June 24, 2019, for “Global positioning system
(GPS) apparatus; Global positioning system (GPS) receiv-
ers in International Class 9; and GPS navigation services
in International Class 39.”1 J.A. 1–2. On February 26,
2020, Flex opposed the registration on the grounds of pri-
ority and likelihood of confusion with Flex’s three regis-
tered marks, FLEX, FLEX (stylized), and FLEX PULSE.
The Board limited its focus to FLEX and FLEX PULSE.
Relevant here, Flex’s FLEX mark was registered July
12, 2016, for services including, in class 35, “supply chain
management services; transportation logistics services,
namely, arranging the transportation of goods for others;
logistics management in the field of electronics; . . . [and]
inventory management services for others.” J.A. 100.
Flex’s FLEX PULSE mark was registered on December 12,
1 International Classes (“classes”) are categories of
various goods and services as established by the interna-
tional classification system under the Nice Agreement Con-
cerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks. See
37 C.F.R. §§ 2.85, 6.1.
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BAD ELF, LLC v. FLEX LTD. 3
2017. FLEX PULSE was registered for goods and services,
including, in class 9, for the goods:
[c]omputers; computer software for use in supply
chain management, logistics and operations man-
agement, quality control, inventory management,
and scheduling of transportation and delivery;
[c]omputer software in the nature of downloadable
mobile applications for use in supply chain man-
agement, logistics and operation management,
quality control, inventory management, and sched-
uling of transportation and delivery[.]
J.A. 102.2
Because Flex challenged Bad Elf’s registration in both
class 9 and class 39, the Board considered the likelihood of
confusion between (1) Bad Elf’s FLEX and Flex’s FLEX
PULSE for each mark’s class 9 goods and (2) Bad Elf’s
FLEX for its class 39 services and Flex’s FLEX for its class
35 services. The Board considered the factors set forth in
In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361
(CCPA 1973),3 ultimately finding a likelihood of confusion
between each set of marks.
2 Flex’s marks are registered for other goods and ser-
vices in other classes. We focus on FLEX and FLEX
PULSE in these particular classes because the Board based
its analysis on only FLEX and FLEX PULSE in these clas-
ses of goods and services.
3 The DuPont factors are:
(1) The similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connota-
tion and commercial impression.
(2) The similarity or dissimilarity and nature of the
goods or services as described in an application or
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BAD ELF, LLC v. FLEX LTD. 4
The Board first considered the similarity or dissimilar-
ity of the marks, finding FLEX and FLEX PULSE to be
“similar in appearance, sound, connotation and overall
commercial impression,” J.A. 23, weighing in favor of a
registration or in connection with which a prior
mark is in use.
(3) The similarity or dissimilarity of established,
likely-to-continue trade channels.
(4) The conditions under which and buyers to
whom sales are made, i. e. “impulse” vs. careful, so-
phisticated purchasing.
(5) The fame of the prior mark (sales, advertising,
length of use).
(6) The number and nature of similar marks in use
on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under
which there has been concurrent use without evi-
dence of actual confusion.
(9) The variety of goods on which a mark is or is not
used (house mark, “family” mark, product mark).
(10) The market interface between applicant and
the owner of a prior mark . . . .
(11) The extent to which applicant has a right to
exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i. e., whether
de minimis or substantial.
(13) Any other established fact probative of the ef-
fect of use.
476 F.2d at 1361.
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BAD ELF, LLC v. FLEX LTD. 5
finding of likelihood of confusion. The Board further noted
that Bad Elf’s FLEX and Flex’s FLEX are identical and
found that this “strongly favors [a finding of] a likelihood
of confusion.” J.A. 24.
The Board then considered the strength of Flex’s
marks. The Board first considered the issue of commercial
strength. Bad Elf had submitted twelve third-party uses
of marks that included the word “flex.” The Board found
that about half those marks pertained to logistics and ren-
dered FLEX “somewhat commercially weakened” but not
so weak “that it falls on the weaker end of the strength
spectrum, making the term commercially weak.” J.A. 27.
The Board then considered the conceptual strength of
Flex’s marks. Bad Elf had submitted four third-party reg-
istrations for goods in class 9, including “FLEX” for “com-
puter software used for logistics management” and “FLeX”
for “[a]dvanced transportation controller for managing a
variety of intelligent transportation systems.” J.A. 28. The
Board found that the third-party registrations had “some
probative value” but that the marks were “insufficient in
number to be probative of any conceptual weakness of
FLEX for the goods or services listed in [Flex’s] pleaded
registrations.” J.A. 29.
The Board then considered the goods and services
listed in each mark’s registration. The Board compared the
class 9 goods for Bad Elf’s FLEX and Flex’s FLEX PULSE
and found that “[Bad Elf’s] GPS apparatus and receivers
are related to [Flex’s] computer software and mobile app
insofar as they could perform the same functions and be
used in the same field” and that, therefore, the factor
weighed in favor of finding a likelihood of confusion.
J.A. 37. For the services identified by Bad Elf’s FLEX and
Flex’s FLEX marks, the Board found the services to be com-
plimentary and thus to weigh in favor of a finding of a like-
lihood of confusion.
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BAD ELF, LLC v. FLEX LTD. 6
Next, the Board considered the channels of trade and
classes of consumers. For both the goods and services, the
Board found that the channels of trade overlap and that
the goods and services were likely to be encountered by the
same consumers, thus further favoring a finding of a like-
lihood of confusion.
Considering the purchasing conditions and the degree
of sophistication of the consumers, the Board found that,
given the nature of Bad Elf’s goods and services, the aver-
age consumer would “exercise a greater degree of care in
making purchasing decisions.” J.A. 42. Accordingly, the
Board found that this factor weighed against finding a like-
lihood of confusion.
The Board next considered Bad Elf’s alleged use of its
mark since November 12, 2019, without any reported inci-
dents of confusion, which the Board found to be a neutral
factor. Finally, the Board considered whether Bad Elf had
the right to exclude third parties from using its mark. Ab-
sent evidence of a right to exclude, the Board found this
factor to be neutral.
The Board balanced the factors and determined that
“[a]lthough we find that the relevant consumers are likely
to exercise some degree of care, this is outweighed by the
strong similarity and identical nature of the marks, the re-
latedness of the goods and services, and overlapping estab-
lished, likely-to-continue channels of trade.” J.A. 44.
Thus, the Board found there to be a likelihood of confusion
between both (1) Bad Elf’s FLEX mark for its class 9 goods
and Flex’s FLEX PULSE for its class 9 goods and (2) Bad
Elf’s FLEX mark for its class 39 services and Flex’s FLEX
mark for its class 35 services.
Bad Elf appealed. A separate case also involving Flex’s
marks, Spireon, Inc. v. Flex Ltd., No. 2022-1578 (Fed. Cir.
June 23, 2023), was identified as related, and oral argu-
ment for both cases was held on the same day. On June 26,
2023, the Court issued an opinion in Spireon, holding that
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BAD ELF, LLC v. FLEX LTD. 7
the Board had erred in its treatment of the strength of
Flex’s marks and vacating and remanding for the Board to
reconsider the likelihood of confusion factors in light of the
Spireon opinion. After the Spireon opinion was issued, the
panel ordered supplemental briefing in the present case on
the following question: “What bearing does Spireon, Inc. v.
Flex Ltd., No. 2022-1578 (Fed. Cir. June 23, 2023), have on
the issue of the commercial and conceptual strength of Ap-
pellee’s marks?” Order 2, Dkt. No. 31. The parties submit-
ted supplemental briefing. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(B).
D ISCUSSION
Likelihood of confusion is a question of law based on
underlying factual findings regarding the DuPont factors.
In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir.
2017). We review the Board’s legal conclusions de novo and
factual findings for substantial evidence. Id.
I
This case potentially presents an issue similar to that
involved in Spireon. In Spireon, the applicant was seeking
to register the mark FL FLEX on goods that were similar
to the goods and services registered under Flex’s FLEX,
FLEX (stylized), and FLEX PULSE marks. In the opposi-
tion proceeding, the applicant submitted third-party regis-
trations that were identical to Flex’s FLEX mark for
identical goods or services. We held that, where the third-
party marks are identical marks for identical goods or ser-
vices as the opposer, absent evidence of non-use for the
commercial strength analysis, the marks must be given
substantial weight in both the conceptual strength and
commercial strength analyses. Where the third-party
marks and opposer’s marks are identical marks for identi-
cal goods or services, opposer’s marks nevertheless “will re-
tain some measure of protection against a new registration
for an identical mark for identical goods.” Spireon, slip op.
at 13–14. Where the applicant’s marks and opposer’s
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BAD ELF, LLC v. FLEX LTD. 8
marks are not identical, and the opposer does not prove
non-use of the third-party registrations, “the commercial
strength of the [opposer’s] marks must be considered weak
as to [the applicant’s] non-identical mark,” id. at 14, as was
the case in Spireon.
Under Spireon, the Board must determine whether
third-party prior registrations exist using an identical
mark for identical goods or services as the opposer’s regis-
tered marks, and, if so, whether the opposer’s registered
marks at issue are different from the applicant’s marks for
identical goods or services. Here, the only relevant opposer
mark is FLEX (FLEX PULSE being different from the prior
third-party mark on its face), which indisputably was used
in one earlier third-party-registered mark. However, the
parties disagree whether FLEX was used for identical
goods or services in the earlier third-party-registered
mark. The third-party registration generally covers goods
for software for logistics management. Flex’s FLEX mark
at issue here covers services, including “supply chain man-
agement services; transportation logistics services,
namely, arranging the transportation of goods for others;
logistics management in the field of electronics; . . . [and]
inventory management services for others.” J.A. 100.
While the prior third-party mark covers goods rather than
services, the goods covered are nonetheless virtually iden-
tical to the services covered by Flex’s FLEX mark. See In
re Detroit Athletic Co., 903 F.3d 1297, 1307 (Fed. Cir. 2018)
(goods and services may be compared for assessing the
DuPont factors).
If the third-party marks and opposer’s marks are iden-
tical, as here, then the opposer’s marks and the applicant’s
marks are compared to see if they are identical or non-iden-
tical for identical goods or services. Here, the parties agree
that one of Flex’s and one of Bad Elf’s marks (FLEX) are
the same and appear to agree that the goods and services
covered by Bad Elf’s FLEX (GPS apparatus and receivers,
and GPS navigation services) and the services covered by
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BAD ELF, LLC v. FLEX LTD. 9
Flex’s FLEX (logistics management services) are not iden-
tical. Indeed, the Board found the services covered by each
party’s FLEX mark to be “complementary,” J.A. 38, not
identical. Therefore, we come to the same conclusion as we
did in Spireon, that is, that the conceptual and commercial
strength of the opposer’s mark is substantially diluted.
With respect to the Board’s analysis of the conceptual
strength of Flex’s marks, we also note an inconsistency in
the Board’s reasoning. The Board found that the “third-
party registrations are related to [Flex’s] transportation or
logistics services, and therefore have some probative
value.” J.A. 29 (emphasis added). But the Board found
that this evidence was nonetheless “insufficient in number
to be probative of any conceptual weakness of FLEX for the
goods or services listed in [Flex’s] pleaded registrations.”
J.A. 29. In short, the Board claimed to give the evidence
probative value but ultimately did not give it any weight in
the conceptual strength analysis. Having determined that
the evidence was probative, the Board erred in failing to
give it weight in the strength analysis.
The probative value of evidence of third-party registra-
tions is to show that a mark is conceptually weak. Strength
is not an all-or-nothing measure, but rather varies along a
spectrum. See Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 2017) (per
curiam). Thus, it is inconsistent to give evidence of third-
party registrations probative value, but then find that the
evidence in no way weakens opposer’s marks.
Regarding the FLEX PULSE mark, the Board inde-
pendently found a likelihood of confusion between Flex’s
FLEX PULSE for its class 9 goods and Bad Elf’s FLEX for
its class 9 goods. But in analyzing the strength of the
FLEX PULSE mark, the Board treated it the same as the
FLEX mark itself. Given our conclusions with regard to
the FLEX mark, the Board must reconsider the strength
determination as to the FLEX PULSE mark as well. If the
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BAD ELF, LLC v. FLEX LTD. 10
FLEX mark is considered to be weak, that may also affect
the Board’s finding that Bad Elf’s FLEX mark and Flex’s
FLEX PULSE mark “are similar in appearance, sound,
connotation and overall commercial impression.” J.A. 23.
The parties also disagree as to whether Spireon is rel-
evant in other respects to this case on the issue of strength.
We think these issues are best addressed by the Board in
the first instance on remand.
We vacate with respect to the Board’s analysis as to the
strength of Flex’s marks and remand to the Board to recon-
sider this DuPont factor (and then to reweigh the DuPont
factors) in light of this opinion and Spireon.
II
Bad Elf also argues that the Board erred with respect
to other issues. Regarding commercial strength, Bad Elf
primarily argues that Flex provided no survey evidence to
show marketplace strength and that the Board erred in not
considering this to be a negative factor. Bad Elf further
argues that the lack of actual confusion was a factor that
favored Bad Elf.
We find neither of these other arguments persuasive.
We therefore affirm in all respects other than the Board’s
analysis of the strength of Flex’s marks as described above
and the ultimate weighing of the DuPont factors.
CONCLUSION
We vacate the Board’s opinion with regard to the
strength of Flex’s marks (an analysis that could also affect
the comparison between the FLEX and FLEX PULSE
marks). In other respects, the Board’s decision is affirmed.
The case is remanded to the Board to reconsider the con-
ceptual and commercial strength of Flex’s marks and re-
weigh the DuPont factors in light of this opinion and
Spireon.
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BAD ELF, LLC v. FLEX LTD. 11
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No Costs.
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