Real World Circumstances Will Not be Considered By an Examining Attorney or the TTAB

March 26, 2014

What This Means to You

  • Do not argue that real world conditions obviate likelihood of confusion before an Examining Attorney.
  • Do not argue that real world conditions obviate likelihood of confusion in a proceeding before the Trademark Trial and Appeal Board (“the Board”).


In Stone Lion Capital Partners, L.P. v. Lion Capital LLP, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) reviewed the Board’s decision in favor of an opposer owning registrations for LION and LION CAPITAL against an applicant for STONE LION CAPITAL. The applicant argued before the Board and the Federal Circuit—to no avail—that real world conditions should obviate any likelihood of confusion. The Federal Circuit affirmed longstanding precedent that real world conditions are not considered in an analysis of a federal trademark application.

Case Background

Stone Lion Capital Partners, L.P. filed a federal trademark application for STONE LION CAPITAL for financial services. After the Examining Attorney allowed the application to publish, Lion Capital LLP filed an opposition based on its existing registrations for LION and LION CAPITAL, both for a wide variety of financial services. The Board found that nearly every one of the DuPont factors (used to determine whether two trademarks are confusingly similar) weighed in favor of Lion Capital and sustained the opposition. The Federal Circuit affirmed the Board’s decision.

Decision Analysis

Stone Lion’s primary argument on appeal was that real world conditions should be taken into account to show that there was no likelihood of confusion in the marketplace. For example, Stone Lion argued that although the identified services were “legally identical” according to the Board, the services were provided through discrete channels of trade. Furthermore, Stone Lion argued that the actual consumers of both parties’ services were highly sophisticated. Both of these arguments were rejected because the Federal Circuit affirmed the longstanding practice of limiting an analysis of an application in this context to the language in that application. This tenet of trademark law exists because a federal registration gives the registrant prima facie evidence of the right to use the registered mark for all of the goods and services named.


This case highlights the difference between federal trademark litigation and litigation over trademark registrations before the Trademark Trial and Appeal Board. During the prosecution of an application, an Examining Attorney will only consider the language in the application. Any argument based on real world conditions will not win the day. On the other hand, while Examining Attorneys should not base their decisions on real world conditions, practitioners should keep them in mind when drafting applications. A carefully drafted application may anticipate and avoid potential pitfalls.