THE NORTH FACE APPAREL v. NEUS TRADING, INC., 91190587 (TTAB 9-20-2011)
The North Face Apparel Corp. v. Neus Trading, Inc.
Opposition No. 91190587 to Application Serial No. 77425119United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: September 20, 2011Page 1
[EDITOR'S NOTE: This case is unpublished as indicated by the issuing court.]
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Jordan A. LaVine, Alexis Arena, and Elisa N. Bramble of Flaster Greenberg P.C., for The North Face Apparel Corp.
Larry S. Spokoiny of Lombino Martino, P.S., for Neus Trading, Inc.
Before Quinn, Walters, and Ritchie, Administrative Trademark Judges.
Opinion by Ritchie, Administrative Trademark Judge:
On March 18, 2008, applicant, Neus Trading, Inc., applied to register the mark North Peak and design, as shown below, on the Principal Register for "backpacks; duffle bags; knapsacks" in International Class 18; "sleeping bags" in International Class 20; and "tents," in International Class 22[fn1]:Page 2
On June 10, 2009, opposer, The North Face Apparel Corp., opposed the registration of applicant's mark on the ground that applicant's mark is likely to cause confusion in violation of Section 2(d) of the Trademark Act with, among other registered marks,[fn2] opposer's previously used and registered mark THE NORTH FACE and design,[fn3] as shown below, (Registration No. 983624) for, as relevant, "backpacks" in International Class 22 and "sleeping bags, tents, snowshoes, and skis" in International Class 28:
and opposer's previously used and registered mark THE NORTH FACE and design,[fn4] as shown below, (Registration No. 2097715) for, as relevant, "backpacks" in International Class 18;Page 3
"sleeping bags" in International Class 20; and "tents" in International Class 22:
Opposer maintains its marks enjoy "enormous recognition in the United States among consumers for these products." (Notice at Para. 14).
Applicant denied the salient allegations of the amended notice of opposition. Both parties filed briefs.
The Record
The record consists of the pleadings; the file of the involved application; and the following:
1. The testimonial affidavit[fn5] of Christopher Turk, opposer's Senior Counsel, dated July 16, 2010.
2. The testimonial affidavit of Aaron Carpenter, opposer's Vice-President of Marketing, dated July 15, 2010, together with exhibits thereto.
3. Opposer's eight notices of reliance onPage 4
a. Magazines, news, and other print articles submitted to show the fame of opposer's pleaded marks.
b. Copies of opposer's pleaded THE NORTH FACE and design registrations (including Nos. 983624 and 2097715) showing both the current status of and title to the registrations.
4. The testimonial affidavit of James Suen, applicant's Vice-President, dated September 16, 2010, together with exhibits thereto.
5. Applicant's four notices of reliance on
a. Copies of third-party registrations containing the term "north."
b. Opposer's responses to applicant's discovery requests.
Priority and Standing
As a result of opposer's submission of status and title copies of its THE NORTH FACE and design registrations (No. 983624 and 2097715), among others, opposer has established its priority as well as its standing. See Cunningham v. LaserGolf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy Co. v. Eunice King'sKitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of ConfusionPage 5
Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the relevant, probative evidence in the record. See In re E. I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).See also Palm Bay Imports, Inc. v. Veuve Clicquot PonsardinMaison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc.,315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In reDixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
For purposes of our likelihood of confusion analysis, we will consider the applicable du Pont factors as to pleaded Registration No. 983624, for THE NORTH FACE and design, which has the most relevant goods and mark. If we find a likelihood of confusion as to this mark, then our analysis with regard to the others would be moot. Similarly if we do not, then we would not find it as to the others either. See In re Max CapitalGroup Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Fame
We turn first to the factor of fame because this factor plays a dominant role in cases featuring a famous or strong mark.Kenner Parker Toys Inc. v. Rose Arts Industries, Inc.,963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Famous marks are accorded more protection precisely because theyPage 6
are more likely to be remembered and associated in the public mind than a weaker mark. Id. A famous mark is one "with extensive public recognition and renown."Id. See also Palm Bay Imports Inc. v. Veuve ClicquotPonsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
As described by opposer, "The North Face is an outdoor product company specializing in outerwear, footwear and equipment such as backpacks, tents, and sleeping bags. The equipment lines are catered towards wilderness chic, climbers, mountaineers, skiers, snowboarders, hikers, and endurance athletes." (Carpenter aff., Para. 6). Regarding the relation of the mark to outdoor activities, opposer states: "This name was chosen because the north face of a mountain in the northern hemisphere is generally the most difficult face to climb." (Id., Para. 7).
In determining whether a mark is famous, we may consider relevant financial factors, including those involving sales.Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002); Blue Man ProductionsInc. v. Tarmann, 75 USPQ2s 1811, 1817 (TTAB 2005). In his testimonial affidavit, Mr. Carpenter referenced the following advertising figures for opposer's THE NORTH FACE brand: "$25,000,000 in 2006; $33,000,000 in 2007; $45,000,000 in 2008; $47,000,000 in 2009; andPage 7
$68,000,000 (budgeted) in 2010."[fn6]
(Carpenter aff., Para. 25). Opposer advertises in various sports-related magazines such as Runner's World,Outside, and Men's Journal. However, mainstream media also reports frequently on opposer's company, with many articles discussing the brand THE NORTH FACE, and those who wear it, repeatedly over the past decade in media outlets around the nation,[fn7] including The New YorkTimes, USA Today, The Wall Street Journal, Star Tribune(Minneapolis), The Denver Post, The Sunday Oregonian, theHartford Courant, The Seattle Post-Intelligencer, The AshevilleCitizen-Times (North Carolina), and The BostonGlobe, among others.
The various gear offered under THE NORTH FACE mark are frequently ranked highly in consumer ratings. For example, THE NORTH FACE "Jester" daypack was ranked the highest in 2009 by Consumer Reports for backpack reviews. (Carpenter aff. Para 38, Ex P), and THE NORTH FACE single-track running shoe was awarded "Gear of the Year" byOutside magazine (Id., Ex P) as well as "Best Debut" by Runner's World.
(Id., Para 38). Overall, the brand THE NORTH FACE was ranked 8th in the 2008 Harris Interactive "EquiTrend Brand Equity Study" in ranking "1,000 brands across 39 categories by aPage 8
calculation of familiarity, quality and purchase intent" in the "apparel, footwear and accessories" category. (Id., Para 40, Ex Q).
Describing the frequency with which people, and especially young people, don the attire and other accoutrements offered by opposer under the brand THE NORTH FACE, the United Press International referred to THE NORTH FACE in a 2009 article as "a social phenomenon."
The North Face: A Social Phenomenon: Fairfax, Va-It may be February and freezing, but when Allyson Eades, a freshman at George Mason University came up from Urbana, Va. For school, there was no doubt that her North Face jacket would not be left at home. UPIU March 18, 2009.
Mr. Carpenter attested that, among its other promotional activities, "[t]he company sponsors professional athletes from the worlds of running, climbing, skiing and snowboarding." (Carpenter aff., Para. 6). Many celebrities also wear opposer's THE NORTH FACE branded gear without prompting, and opposer submitted numerous news stories commenting on celebrities as diverse as President Barack Obama and former Spice Girl Victoria Beckham being spotted in THE NORTH FACE branded attire.
Victoria Beckham, never one for sloppy attire, rocked a white North Face ensemble, paired with Chanel skis and poles, during a ski vacation in the French Alps in April. USA Today January 23, 2008.
Apart from the trip to Washington to visit his new home, President-elect Barack ObamaPage 9
has been looking pretty casual of late. Instead of the familiar dark suits and solid dress shirts, he has variously worn a baseball cap with a North Face warm-up jacket, jeans and white sneakers, and a black windbreaker that some observers assumed was leather but, more likely, was nothing fancier than cotton. The New York Times November 13, 2008.
Dressed down to just be Dad: Barack Obama had a "Stars, they're just like us!" moment Monday when he dropped daughters Sasha and Malia off at school in Chicago. Dressed casually in a jacket by The North Face and Nike sweat pants, the president-elect showed his sportier side. Get the rugged look with The North Face Apex Bionic Jacket in deep water blue, $129 at Nordstrom.com. USA Today November 12, 2008.
We conclude that opposer has shown significant market exposure and overall fame amongst the relevant public. The evidence clearly establishes that THE NORTH FACE is a famous mark in connection with casual and outdoor apparel and related gear, including, at least, backpacks, sleeping bags and tents. This fifth du Pont factor strongly favors opposer.
THE GOODS AND CHANNELS OF TRADE
The goods listed in the application are "backpacks; duffle bags; knapsacks" in International Class 18; "sleeping bags" in International Class 20; and "tents," in International Class 22. The goods listed in opposer's Registration No. 983624 are "backpacks" in International Class 22 and "sleeping bags, tents, snowshoes, and skis" inPage 10
International Class 28. We find that these goods overlap and that the mutually identified goods, backpacks, sleeping bags and tents, are legally identical.
Because the noted goods described in the application and the opposer's registration are identical, we must presume that the channels of trade and classes of purchasers for these goods are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) ("Given the in-part identical and in-part related nature of the parties' goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade"); Inre Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) ("Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers"). In other words, notwithstanding the arguments and testimony of applicant to the contrary, we conclude that the channels of trade and classes of purchasers of the parties' goods are the same. Despite what applicant argues regarding its marketing channels and techniques, neither party is restricted in its identification of goods to any particular channels of trade. See OctocomSystems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)Page 11
("[t]he authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed." [citations omitted]).
Accordingly, we must assume that opposer's backpacks, sleeping bags, and tents could be sold by the same distributors or stores, and – given that they are identical goods – side-by-side on the same shelves, as applicant's goods.
These second and third du Pont factors heavily favor finding a likelihood of consumer confusion.
The Marks
We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties.Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin MaisonFondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Preliminarily, we note that the more similar the goods at issue, the less similar the marks need to be for the Board to find a likelihood of confusion. Century21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).Page 12
This is especially true in the case of a famous mark, which enjoys a "wide berth" of protection. See KennerParker Toys Inc. v. Rose Arts Industries, Inc., supra, 22 USPQ2d 1453, 1456.
In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. SanFernando Electric Mfg. Co. v. JFD Electronics ComponentsCorp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); SpoonsRestaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v.Oliver Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant's mark consists of the words "North Peak" in a stylized font:Page 13
The "N" in the word "North" is stylized and pointing diagonally, giving the connotation of a mountain. Similarly, the smaller word "peak," in the context of both the mark and the goods, suggests a mountain peak. When a mark consists of a literal as well as a design element, consumers are more likely to recall the literal element, since consumers are likely to call for, or refer to, the goods by their name. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82
(Fed. Cir. 1983); In re Dakin's Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito ProvisionsCo., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Therefore, we find that the dominant portion of the mark is the words "North Peak" and that the design element primarily reinforces the connotation and commercial impression of the mark as referring to a mountain peak.
Opposer's mark consists of the words "THE NORTH FACE" in the following format:Page 14
It is apparent that the appearance of opposer's mark is not the same as applicant's mark. Opposer's mark is not a standard character mark, although the font and capital letters in which the words THE NORTH FACE are presented are insignificant. Furthermore, it is not uncommon for consumers to shorten a longer mark, and particularly in a situation as this where the article "THE" has no source-indicating value. See In re Abcor Development Corp.,588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: "the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words"). As noted in the quotes above regarding opposer's fame, even news media have referred to opposer's mark as simply "North Face." We find that NORTH FACE is the dominant portion of opposer's mark. Accordingly, while examining and comparing the marks in their entireties, it is appropriate for us to compare as dominant portions of the respective marks, i.e., the words "north face" and "north peak." SeeIn re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985) ("there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.").Page 15
Both marks contain the word, "north" followed by a four-letter word. The term "face" has various definitions, of which the following is most relevant in this context: "an exposed surface of rock" and "the front of something having two or four sides." (Merriam-Webster Dictionary). As such, in the context of opposer's mark and goods, "face" connotes the face of a mountain, particularly the north face of a mountain. Thus, the term "north face" creates a very similar connotation and commercial impression to the term "north peak," vis-à-vis backpacks, sleeping bags, and tents, as outdoors-oriented camping-related products for those who would climb the "north face" or "north peak" of a mountain.
Applicant argues that the term "NORTH" is suggestive, however, in that it has been incorporated by numerous third-parties in their trademark registrations in the relevant classes. In this regard, applicant submitted approximately 17 use-based third-party registrations in Classes 18, 20, and/or 22 that incorporate the term "NORTH." The list includes: NORTHCREST, NORTHLAND, NORTHEAST OUTFITTERS, NESW and design, north american outdoors and design, NORTH PINE and design, NORTHSTAR, TRUE NORTH DESIGNS, TRUE NORTH, N NORTH END and design, NORTHSTAR and design, NORTH END and design, 21 North, NORTH POINT, NORTH PAK, TROON NORTH, NORTH SHORE TRADING and design, YOUR NORTHWEST, NS NORTH SAILS and design, and NORTH SAILS.Page 16
We note however, that third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg.Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office). See also In re HubDistributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw any inferences about which, if any of the marks subject of the third party (sic) registrations are still in use. Because of this doubt, third party (sic) registration evidence proves nothing about the impact of the third-party marks on purchasers in terms of dilution of the mark in question or conditioning of the purchasers as to their weakness in distinguishing source.
In re Hub Distributing, Inc., 218 USPQ at 286.
Applicant did not submit any supporting evidence of third-party use of the term "north" in connection with backpacks, sleeping bags and tents. That said, we recognize the term "north" to have directional significance, and to be somewhat suggestive of mountaineering products. However, we do not find the term to be descriptive of the goods. Moreover, we find applicant's mark to be substantially more similar to opposer's mark in connotation and overallPage 17
commercial impression than any of the noted third-party marks.
We find that the dissimilarities between opposer's and applicant's marks to be outweighed by the similarities in commercial impression, especially in light of fame of THE NORTH FACE mark, and considering the identical nature of the goods. Accordingly, this first du Pont factor weighs in favor of finding a likelihood of confusion.
Consumer Sophistication
Opposer urges us to consider the lack of consumer sophistication and degree of purchaser care likely to exercised for the goods at issue in this proceeding. In this regard, as with the other du Pont factors, we are bound by the parties' respective identifications of goods. OctocomSystems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) ("[t]he authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed." [citations omitted]).
However, while both applicant's and opposer's backpacks, sleeping bags, and tents may be sold toPage 18
knowledgeable, sophisticated consumers, in view of the nature of the goods and the lack of limitations in the class of purchasers, such goods would be purchased by the general consumer, including ordinary consumers. We deem this fourthdu Pont factor to be neutral.
Actual Confusion
The final du Pont factor discussed by the parties is the lack of verifiable instances of actual confusion. Although applicant asserts that the absence of actual confusion suggests no likelihood of confusion, it is not necessary to show actual confusion in order to establish likelihood of confusion.See Weiss Associates Inc. v. HRL Associates Inc.902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Thus, while evidence of actual confusion, if it exists, would strongly support a finding of likelihood of confusion, the absence thereof does not necessarily overcome a finding of likelihood of confusion. Applicant asserts that the parties have overlapped in the marketplace for over a decade. However, applicant's sales volume do not appear to be significant. Applicant's Vice-President testified that "annual sales volume from 2000 to the present has ranged between (approximately) $300,000 to $600,000." (Suen aff., Para. 6). Accordingly, we find this eighth du Pont factor also to be neutral.Page 19
Balancing the Factors
Considering all of the evidence of record as it pertains to the relevant du Pont factors, we conclude that the goods are identical in relevant part, and are likely to be marketed through the same channels of trade to generally unsophisticated consumers. Opposer's THE NORTH FACE and design mark is famous, such that the mark is strong despite the suggestive nature of "north," and the marks have a substantially similar commercial impression. Accordingly, we find a likelihood of consumer confusion between opposer's mark THE NORTH FACE and design and applicant's mark, NORTH PEAK and design for "backpacks; duffle bags; knapsacks; sleeping bags; and tents."
DECISION: The opposition is sustained.
[fn1] Application Serial No. 77425119, based on first use and first use in commerce in all classes on June 30, 1997.
[fn2] Opposer additionally pleaded several marks for THE NORTH FACE and design for various other goods and services. We find it unnecessary to consider them herein.
[fn3] Registered May 14, 1974. Renewed twice. Sections 8 and 15 accepted and acknowledged.
[fn4] Registered September 16, 1997. Renewed. Sections 8 and 15 accepted and acknowledged.
[fn5] The parties agreed via stipulation signed on July 9, 2010 to take and submit testimony in affidavit form.
[fn6] These numbers were confirmed by opposer's response to applicant's Interrogatory No. 7.
[fn7] These articles are relevant and admissible to show what others are writing about opposer, and that opposer and its mark have been the subject of unsolicited publicity.