IP Law Daily, TRADEMARK—TTAB: Board sustains North Face’s opposition to Sanyang’s mark in two of seven classes , (Sep 28, 2015)

By Cheryl Beise, J.D.

The North Face has established that Sanyang Industry’s application to register a stylized S mark for items of clothing and retail store services featuring clothing was likely to cause confusion with the North Face’s S-logo design mark, used on its Summit line of clothing, the Trademark Trial and Appeal Board has decided in a ruling designated as precedential (The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., September 18, 2015, Seeherman, E.). However, the North Face (“the opposer”) failed to show that Sanyang’s mark, used in connection with other goods and services—relating primarily to vehicles, motorcycles and scooters—was likely cause confusion with its apparel products.

Sanyang Industry Co., Ltd. (“the applicant”) filed two applications to register an “S-design mark” for a variety of goods and services in International Classes 7, 11, 12, 16, 25, 35, and 37. Each application included the following description: “The colors red, gray, black and white are claimed as a feature of the mark. The mark consists of a stylized GRAY and WHITE stylized ‘S’ outlined in part in BLACK on a RED circular background ringed by a WHITE ring within a GRAY ring.” The applicant is a foreign company whose primary product line in the United States was motorized scooters, which were generally sold since 2006 through motor sports dealerships.

The North Face Apparel Corp. (the opposer) opposed the registration of the mark in both applications on the ground of likelihood of confusion with its S-design mark. The opposer, which licenses its marks to its sister company, The North Face, Inc., has used the S-design trademark since 2000 for various goods, including on its SUMMIT SERIES line of general purpose clothing, outerwear, gloves and hats, and equipment such as backpacks, tents and sleeping bags.

In its likelihood of confusion analysis, the Board focused on the factors relating to the fame of the opposer’s mark, the similarity of the parties’ marks, and the similarity of the parties’ goods and services.

Fame of opposer’s S-design mark. The opposer argued that its S-design mark was famous. While annual sales in the United States of the opposer’s “Summit Series” items were in the millions of dollars, the opposer did not provided any context for measuring its sales figures against other brands. Further, the figures did not reflect what amount was for goods on which the S-design mark was used without SUMMIT SERIES, nor did they indicate how the sales were broken down by goods. The opposer’s advertising figures were even less probative, according to the Board, because they did not reflect the advertising expenditures for goods bearing the S-design mark and included advertising outside of the United States. The opposer submitted five photographs of five celebrities engaged in various activities while wearing the opposer’s apparel, but the dates and context of the photos was not provided. The Board concluded that the opposer failed to meet its burden of proving that its S-design mark was famous.

Similarity of the parties’ marks. The opposer contended that the applicant’s mark was merely the opposer’s mark turned on its side, and pointed to the description the applicant provided in its application that its mark is a stylized “S.”

The Board acknowledged that the applicant considered its mark to represent an arrow or representing “motion.” However, the mark could also “be viewed as an S design, as shown by the fact that in its initial application Applicant identified the literal element of the mark as an ‘S,’” the Board said. While the forward facing angle and the interior circle emphasizing the angle created some visual differences between the marks, the Board determined that the similarities outweighed the differences and the “the overall impression of the marks is so similar that consumers will believe that they identify goods or services emanating from a single source.”

Similarity of the parties’ products. In evaluating the relationship between the parties’ goods and services, the Board evaluated each class separately to determine whether the opposer had shown a likelihood of confusion. It was not necessary that the opposer prove that there was a likelihood of confusion with each item identified in order for the Board to sustain the opposition with respect to a given class, the Board noted.

The applicant’s articles of clothing listed in Class 25 were in part identical to the items listed in the opposer’s registrations. Further, because the identifications in the registrations and application contained no restrictions as to trade channels, these legally identical goods were deemed to be sold in the same channels of trade. In addition, clothing items are generally not purchased with particular care. The Board sustained the opposition as to the applicant’s good in Class 25. The applicant also acknowledged that its retail stores featuring clothing, textiles, and clothing accessories in International Class 35 were “related to” the opposer’s class 25 goods. The Board agreed and sustained the opposition as to the applicant’s Class 35 services as well.

The relatedness of the goods and services in the remaining classes in the applicant’s applications and the opposer’s registrations was “less clear,” the Board said. The opposer argued that the remaining goods were either directly related or complementary, but the opposer’s arguments were not very specific. For example, the opposer asserted that its clothing and equipment were designed for use in outdoor activities, including biking or riding a scooter, and that scooter and bike riders were likely to wear clothing designed for outdoor activities, or carry backpacks and duffel bags while they were traveling on a scooter. The opposer also pointed out that it sponsored biking events. Finally, the opposer invoked the “reasonable expansion” of its business to other goods.

The Board compared the applicant’s goods listed in each of the remaining classes—Classes 7 (lawn mowers, tractors, boat engines, vehicle parts, etc.), 11 (vehicle lights, headlights, reflectors, and air conditioners), 12 (vehicles, automobiles, motorcycles, scooters, bikes, and related parts and accessories), 16 (stickers, envelopes, books, calendars, stationary, et.), and 37 (Automobile, vehicle, and motorcycle maintenance and repair services)—and found that none of them were sufficiently related to the opposer’s goods and services. For example, the fact that the opposer offered a style of jacket called “The North Face Mack Moto Jacket-Men’s” that could be worn while riding a motorcycle or scooter did not make it a complementary good to the applicant’s motorcycles or scooters. Although the opposer presented evidence that clothing and backpacks, on one hand, and electric scooters and motorcycles, on the other, could be sold by the same retailer (e.g., Dick’s Sporting Goods), this overlap in channels of trade was outweighed by the differences in the goods themselves, the Board reasoned.

Conclusion. With regard to Application Serial No. 77375588, the Board dismissed the opposition with respect to all three Classes (11, 27, and 37). With regard to Application Serial No. 77376388, the Board dismissed the opposition with respect to Classes 7 and 16, and sustained the opposition with respect to Classes 25 and 35.

The case is Opposition No. 91187593.

Attorneys: Susan M. Kayser and Lucy Jewett Wheatley (Jones Day) for The North Face Apparel Corp. Glenn J. Dickinson (LightGabler LLP) for Sanyang Industry Co., Ltd.

Companies: The North Face Apparel Corp.; Sanyang Industry Co., Ltd.

Cases: Trademark USPTO