NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: JS ADL, LLC,
Appellant
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2018-2017
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
87200423.
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Decided: July 11, 2019
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THEODORE RAY REMAKLUS, Wood, Herron & Evans,
LLP, Cincinnati, OH, for appellant.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by CHRISTINA J.
HIEBER, JOSEPH MATAL, MOLLY R. SILFEN.
______________________
Before LOURIE, O’MALLEY, and WALLACH, Circuit Judges.
LOURIE, Circuit Judge.
JS ADL LLC appeals from a decision of the Trademark
Trial and Appeal Board (the “Board”) of the United States
Patent and Trademark Office (the “PTO”), affirming the
2 IN RE: JS ADL, LLC
Examining Attorney’s refusal to register its proposed
trademark, , on the ground of likelihood of
confusion. See In re JS ADL, LLC, Serial No. 87200423,
2018 WL 1756608 (T.T.A.B. Mar. 30, 2018) (“Board Deci-
sion”). Because the Board’s fact findings are well-sup-
ported by substantial evidence and it correctly held there
is a likelihood of confusion, we affirm.
BACKGROUND
JS ADL filed intent-to-use Application No. 87200423 to
register its proposed trademark, , on Octo-
ber 12, 2016. JS ADL sought to register the mark for use
in Class 25 of the Principal Register, covering the following
clothing items:
Belts; Gloves; Hats; Headwear; Jackets; Jeans;
Lingerie; Men’s suits, women’s suits; Pants;
Scarves; Shawls; Shirts; Sleepwear; Socks; Suits;
Sweaters; Swimsuits; T-shirts; Underwear
J.A. 21.
The Examining Attorney refused registration on the
ground that JS ADL’s mark would likely be confused with
a previously registered mark, ARTESANO NEW YORK
CITY. See 15 U.S.C. § 1052(d). ARTESANO NEW YORK
CITY is registered under No. 3840723 for “Jeans; Shirts;
Sneakers; Socks; Sweaters; T-shirts; [and] Underwear.”
The Examining Attorney noted that the two words are
highly similar in sound and appearance, and she also found
that “artesano” is the Spanish word for “artisan” and is
therefore considered confusingly similar under the doctrine
of foreign equivalents. J.A. 30. She further cited the simi-
larity of the goods and the substantial overlap between the
goods covered by the cited mark and those for which JS
ADL sought registration. This overlap also creates a pre-
sumption that the goods travel in the same channels of
trade. See Midwestern Pet Foods, Inc. v. Societe des
Produits Nestle S.A.,
685 F.3d 1046, 1053 (Fed. Cir. 2012).
IN RE: JS ADL, LLC 3
JS ADL primarily argued in response that both compo-
nents of ARTESANO NEW YORK CITY are weak and en-
titled to little protection. But the Examining Attorney
rejected this argument because the marks must be com-
pared in their entireties, not as individual words, and, in
any case, even weak marks can give rise to a likelihood of
confusion. See King Candy Co. v. Eunice King’s Kitchen,
Inc.,
496 F.2d 1400, 1401 (CCPA 1974).
JS ADL then appealed to the Board, which affirmed the
Examining Attorney’s refusal to register JS ADL’s pro-
posed mark. Board Decision,
2018 WL 1756608, at *10.
The Board rejected JS ADL’s argument that ARTESANO
NEW YORK CITY is an inherently weak mark and, as
such, is entitled to limited protection.
Id. at *5–7. The
Board also affirmed the Examining Attorney’s findings on
the factor of similarity of the marks. While it declined to
apply the doctrine of foreign equivalents, the Board never-
theless agreed with the Examining Attorney that, because
the two marks are “more similar than dissimilar in appear-
ance and sound” and consumers would likely view “ar-
tesano” only as a novel spelling of “artisan,” the marks
“convey similar overall commercial impressions.”
Id. at
*9–10. The Board also found that “[b]ecause the goods
identified in the application and the cited registration are
in part identical,” the factors of relatedness of goods, chan-
nels of trade, and classes of purchasers weighed in favor of
likelihood of confusion, as did its finding that the goods are
likely to be offered for sale under the same conditions.
Id.
at *2–3.
This appeal followed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(B).
DISCUSSION
We review the Board’s legal determinations de novo
and its factual findings for substantial evidence. Royal
Crown Co. v. The Coca-Cola Co.,
892 F.3d 1358, 1364–65
(Fed. Cir. 2018). A finding is supported by substantial
4 IN RE: JS ADL, LLC
evidence if a reasonable mind might accept the evidence as
adequate to support the finding. Consol. Edison Co. v.
NLRB,
305 U.S. 197, 229 (1938). “Where there is adequate
and substantial evidence to support either of two contrary
findings of fact, the one chosen by the board is binding on
the court regardless of how we might have decided the is-
sue if it had been raised de novo.” Mishara Const. Co. v.
United States,
230 Ct. Cl. 1008, 1009 (1982).
Under the Lanham Act, 18 U.S.C. §§ 1051–1141n, a
trademark applicant is entitled to registration of a pro-
posed mark subject to several restrictions, one of which is
that the proposed mark may not “so resemble[] a mark reg-
istered in the Patent and Trademark Office, or a mark or
trade name previously used in the United States by an-
other and not abandoned, as to be likely, when used on or
in connection with the goods of the applicant, to cause con-
fusion, or to cause mistake, or to deceive . . . .”
Id. § 1052(d).
Likelihood of confusion is a question of law, which we re-
view de novo, but we review the Board’s factual findings
underlying that conclusion for substantial evidence. See In
re Mighty Leaf Tea,
601 F.3d 1342, 1346 (Fed. Cir. 2001)
(citing In re Chatam Int’l Inc.,
380 F.3d 1340, 1342 (Fed.
Cir. 2004)). Any doubt as to likelihood of confusion is re-
solved “against the newcomer because the newcomer has
the opportunity and obligation to avoid confusion with ex-
isting marks.” See Hewlett-Packard Co. v. Packard Press,
Inc.,
281 F.3d 1261, 1265 (Fed. Cir. 2002) (citing In re Shell
Oil Co.,
992 F.2d 1204, 1209 (Fed. Cir. 1993)).
The Board evaluates likelihood of confusion by refer-
ence to the factors set out in In re E.I. DuPont DeNemours
& Co.,
476 F.2d 1357, 1361 (CCPA 1973). But “[n]ot all of
the DuPont factors are relevant to every case, and only fac-
tors of significance to the particular mark need be consid-
ered.” In re Mighty Leaf
Tea, 601 F.3d at 1346. In this
case, the Board considered the DuPont factors relating to
the similarity and nature of the goods, the channels of
trade, classes of consumers, conditions of sale, strength of
IN RE: JS ADL, LLC 5
the cited mark, and the similarity of the marks. See gener-
ally Board Decision,
2018 WL 1756608. JS ADL only dis-
putes the Board’s findings on the latter two DuPont factors,
as well as the Board’s ultimate holding of likelihood of con-
fusion. We address each in turn.
JS ADL first argues, as it did below, that the Board
gave inadequate weight to the purported weakness of
ARTESANO NEW YORK CITY as a registered mark. In
its brief, JS ADL provides many examples of related marks
from third parties containing some variation of ARTISAN
or ARTESANO, in addition to other examples of related
marks containing variants of NY or NEW YORK CITY. JS
ADL further contends that ARTESANO suggests clothing
items made by skilled tradespersons and NEW YORK
CITY is descriptive, and thus, because the formative words
themselves are not distinct, the Board erred in placing any
weight on the strength of ARTESANO NEW YORK CITY.
The PTO responds that the Board’s finding is sup-
ported by substantial evidence and that a mark built with
weak individual components is not necessarily entitled
only to a narrow scope of protection. The PTO further notes
that JS ADL presented no evidence of actual third-party
use, as opposed to third-party trademark registrations,
that would have allowed the Board to find that “consumers
actually are conditioned to distinguishing among marks in-
cluding ARTISAN or NY/NEW YORK.” Appellee Br. 19
(citing Board Decision,
2018 WL 1756608, at *6).
We agree with the PTO. JS ADL only presented evi-
dence that variants of the terms ARTISAN and NY are
themselves suggestive or descriptive, and it is well-estab-
lished that the weakness of the individual components of a
mark is not, of itself, sufficient to prove that their combi-
nation creates a weak mark. See China Healthways Inst.,
Inc. v. Wang,
491 F.3d 1337, 1340 (Fed. Cir. 2007) (“It is
incorrect to compare marks by eliminating portions thereof
and then simply comparing the residue.” (citing Specialty
6 IN RE: JS ADL, LLC
Brands, Inc. v. Coffee Bean Distribs., Inc.,
748 F.2d 669,
673 (Fed. Cir. 1984))); Franklin Mint Corp. v. Master Mfg.
Co.,
667 F.2d 1005, 1007 (CCPA 1981) (“It is axiomatic that
a mark should not be dissected and considered piecemeal;
rather, it must be considered as a whole in determining
likelihood of confusion.”). The Board was entitled to give
little weight to JS ADL’s evidence of third-party trademark
registrations separately including variants of either “arti-
san” or “New York,” especially in view of JS ADL’s failure
to provide evidence of actual third-party use, cf. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U.,
797 F.3d 1363, 1373–74
(Fed. Cir. 2015) (holding that the Board erred in giving lit-
tle weight to evidence of registered third-party marks in
actual use). Thus, substantial evidence supports the
Board’s finding that JS ADL failed to show that
ARTESANO NEW YORK CITY is a weak mark not entitled
to a normal scope of protection.
JS ADL next argues that the Board erred in finding
similarity between the marks. JS ADL generally contends
that the Board placed too much weight on the similarity
between ARTISAN and ARTESANO. See In re Electrolyte
Labs., Inc.,
929 F.2d 645, 647 (Fed. Cir. 1990) (holding that
the Board cannot ignore the less dominant portion of a
cited mark) (citing Spice Islands, Inc. v. Frank Tea & Spice
Co.,
505 F.2d 1293 (CCPA 1974)). In doing so, JS ADL con-
tends, the Board failed to give due consideration to other
differences between the marks, including the NY and NEW
YORK CITY terms and the cross-stitch design portion of JS
ADL’s mark. JS ADL also maintains that the Board erred
in finding that ARTISAN and ARTESANO are highly sim-
ilar in appearance and sound because ARTESANO has an
extra syllable and the words are pronounced differently.
Finally, JS ADL asserts that the Board offered no support
for its conclusion that a consumer would perceive that
ARTESANO has the same meaning as ARTISAN.
IN RE: JS ADL, LLC 7
The PTO argues in response that the Board reasonably
found that the dominant portions of the marks, ARTISAN
and ARTESANO, are confusingly similar. The PTO also
contends that NY and NEW YORK CITY are disclaimed
geographical terms that, along with the small cross-stitch
element in JS ADL’s mark, contribute less to the overall
commercial impression of the marks. See CBS Inc. v. Mor-
row,
708 F.2d 1579, 1581–82 (Fed. Cir. 1983) (“[I]n a com-
posite mark comprising a design and words, the verbal
portion of the mark is the one most likely to indicate the
origin of the goods to which it is affixed.”). The PTO also
argues that substantial evidence supports the Board’s find-
ing that ARTISAN and ARTESANO are confusingly simi-
lar because minor lettering differences may not distinguish
a similar word in a cited mark. See In re Bayer Aktieng-
esellschaft,
488 F.3d 960, 965 (Fed. Cir. 2007).
We agree with the PTO and conclude that substantial
evidence supports the Board’s evaluation of the factor of
similarity between the marks. We first conclude that the
Board did not place undue weight on the ARTISAN and
ARTESANO portions of the marks. We have consistently
held that, while a mark must be considered as a whole,
“[m]ore dominant features will, of course, weigh heavier in
the overall impression of the mark.” In re Electrolyte
Labs.,
929 F.2d at 647 (citing Giant Food, Inc. v. Nation’s Food-
service, Inc.,
710 F.2d 1565, 1570 (Fed. Cir. 1983)). Here,
the Board expressly made findings regarding the other fea-
tures of the marks. While the Board found that NY and
NEW YORK CITY are routinely disclaimed as descriptive
geographical terms, Board Decision,
2018 WL 1756608, at
*8, it found in its ultimate analysis of similarity that both
ARTESANO NEW YORK CITY and sug-
gest clothing created by tradespersons in the City or State
of New York,
id. at *10. And we agree with the PTO that
the Board was entitled to find that the cross-stitch in JS
ADL’s proposed mark only suggests clothing items identi-
fied under the mark and as a result it contributes little to
8 IN RE: JS ADL, LLC
the overall commercial impression of the mark. See
CBS,
708 F.2d at 1581 (“[M]inor design features do not neces-
sarily obviate likelihood of confusion arising from consider-
ation of the marks in their entireties.”).
Nor do we agree with JS ADL that the Board erred in
its analysis of the dominant portion of the mark,
ARTISAN. As the PTO points out, the only differences
between ARTISAN and ARTESANO are the substitution
of the letter “E” for “I” and the addition of the letter “O” at
the end. The Board reasonably found that the terms are
highly similar in appearance and sound. More im-
portantly, the Board also found that and
the cited mark ARTESANO NEW YORK CITY, considered
in their entireties, each suggest clothing made by skilled
tradespersons in New York. Board Decision,
2018 WL
1756608, at *10. The minor distinctions in spelling and
pronunciation advanced by JS ADL do not demonstrate er-
ror in the Board’s analysis of the overall commercial im-
pression of the marks. Cf.
Bayer, 488 F.3d at 965 (“The
appearance and meaning of ASPIRINA and aspirin are
similar. Adding an ‘a’ to aspirin results in virtually no dis-
tinction with respect to the visual impressions of the
terms.”). We therefore find the Board’s analysis of the sim-
ilarity of the marks supported by substantial evidence.
In summary, we conclude that the Board’s fact findings
with respect to the strength of the cited mark and the sim-
ilarity of the marks are well-supported by substantial evi-
dence. Since JS ADL presents no further argument that
the Board’s ultimate determination of likelihood of confu-
sion is in error, we affirm the Board’s decision.
CONCLUSION
We have considered JS ADL’s remaining arguments
but find them unpersuasive. For the foregoing reasons, the
decision of the Board is
AFFIRMED
