NOTE: This disposition is nonprecedential.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 represented by NICHOLAS HOLMES. 

 JULIA SHURSKY, Sheridan Ross PC, Denver, CO, argued 

for appellee. Also represented by MATTHEW CHRISTIAN 

HOLOHAN, PAMELA NICOLE HIRSCHMAN. 

 ______________________ 

Before DYK, MAYER, and REYNA, Circuit Judges. 

Case: 22-1839 Document: 34 Page: 1 Filed: 08/14/2023
2 BAD ELF, LLC v. FLEX LTD. 

DYK, 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) receivers 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 priority and likelihood of confusion with Flex’s three registered 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 international classification system under the Nice Agreement Concerning 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 management, 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 management, logistics and operation management, 

quality control, inventory management, and scheduling 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 services 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 classes of goods and services. 3 The DuPont factors are: 

(1) The similarity or dissimilarity of the marks in 

their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the 

goods or services as described in an application or 

Case: 22-1839 Document: 34 Page: 3 Filed: 08/14/2023
4 BAD ELF, LLC v. FLEX LTD. 

The Board first considered the similarity or dissimilarity 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, sophisticated 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 evidence 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 effect 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 rendered 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 registrations for goods in class 9, including “FLEX” for “computer 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 complimentary and thus to weigh in favor of a finding of a likelihood of confusion. 

Case: 22-1839 Document: 34 Page: 5 Filed: 08/14/2023
6 BAD ELF, LLC v. FLEX LTD. 

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 likelihood 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 average 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 likelihood of confusion.

The Board next considered Bad Elf’s alleged use of its 

mark since November 12, 2019, without any reported incidents 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. Absent 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 relatedness of the goods and services, and overlapping established, 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 argument 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 Appellee’s marks?” Order 2, Dkt. No. 31. The parties submitted supplemental briefing. We have jurisdiction under 28 

U.S.C. § 1295(a)(4)(B).

DISCUSSION

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 opposition proceeding, the applicant submitted third-party registrations that were identical to Flex’s FLEX mark for 

identical goods or services. We held that, where the thirdparty marks are identical marks for identical goods or services 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 identical goods or services, opposer’s marks nevertheless “will retain 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 

Case: 22-1839 Document: 34 Page: 7 Filed: 08/14/2023
8 BAD ELF, LLC v. FLEX LTD. 

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 registered 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 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. 

While the prior third-party mark covers goods rather than 

services, the goods covered are nonetheless virtually identical 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 identical, as here, then the opposer’s marks and the applicant’s 

marks are compared to see if they are identical or non-identical 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 identical. 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 “thirdparty 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 registrations 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 thirdparty registrations probative value, but then find that the 

evidence in no way weakens opposer’s marks.

Regarding the FLEX PULSE mark, the Board independently 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 

Case: 22-1839 Document: 34 Page: 9 Filed: 08/14/2023
10 BAD ELF, LLC v. FLEX LTD. 

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 relevant 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 reconsider 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 conceptual and commercial strength of Flex’s marks and reweigh 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.

Case: 22-1839 Document: 34 Page: 11 Filed: 08/14/2023