North 61 LLC v. Sjoklaedagerdin Hf.

• Court: Court of Appeals for the Federal Circuit
• Decided: January 13, 2021
• Docket: 20-1709
• Status: Unpublished

Opinion

Case: 20-1709 Document: 33 Page: 1 Filed: 01/13/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

NORTH 61 LLC, Appellant

v.

SJOKLAEDAGERDIN HF., Appellee ______________________

2020-1709 ______________________

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 91237366. ______________________

Decided: January 13, 2021 ______________________

SCOTT WEAVER JOHNSTON, Merchant & Gould P.C., Minneapolis, MN, for appellant.

MICHELE S. KATZ, Advitam IP, LLC, Chicago, IL, for ap- pellee. ______________________

Before LOURIE, SCHALL, and DYK, Circuit Judges. LOURIE, Circuit Judge. Case: 20-1709 Document: 33 Page: 2 Filed: 01/13/2021

2 NORTH 61 LLC v. SJOKLAEDAGERDIN HF.

North 61 LLC (“North”) appeals from a judgment of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“the Board”) sustaining an opposition and refusing its application to register the mark NORTH 61. Sjoklaedagerdin Hf. v. North 61 LLC, No. 91237366, 2020 WL 1166478 (T.T.A.B. Feb. 11, 2020) (“Decision”). The Board refused North’s application on the ground that its mark NORTH 61 would be confusingly similar to Sjoklaed- agerdin Hf.’s (“Sjoklaedagerdin”) mark 66⁰NORTH. For the reasons set forth below, we affirm. BACKGROUND Sjoklaedagerdin and North both sell apparel. Sjoklaedagerdin has owned the registered mark 66⁰NORTH (standard characters) for use in connection with the sale of apparel and retail-store services since 2016. J.A. 98–100 (Registration 5088873). In 2017, North filed an application to register the mark NORTH 61 (stand- ard characters), also for use in connection with the sale of apparel and retail-store services. Decision, 2020 WL 1166478, at *1. (Application 87358942). 1 Subsequently, Sjoklaedagerdin filed an opposition to North’s mark pursu- ant to 15 U.S.C. § 1052(d), asserting that it would create a likelihood of confusion with Sjoklaedagerdin’s mark 66⁰NORTH. The Board agreed that registration of North’s

1 North sought registration of its mark for use in con- nection with “Bottoms; Hoodies; Shirts; Tank tops; Tops; T- shirts in International Class 25; and On-line retail gift shops; On-line retail store services featuring clothing, sporting goods, novelty items, key chains, mugs, posters and stickers; Retail gift shops; Retail store services featur- ing clothing, sporting goods, novelty items, key chains, mugs, posters and stickers in International Class 35.” De- cision, 2020 WL 1166478, at *1. Case: 20-1709 Document: 33 Page: 3 Filed: 01/13/2021

NORTH 61 LLC v. SJOKLAEDAGERDIN HF. 3

mark would create a likelihood of confusion and thus sus- tained the opposition. The Board evaluated the likelihood of confusion be- tween the two marks by referring to the factors set forth in In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (“the DuPont factors”). The Board first found that the parties’ similar goods, services, channels of trade, and classes of consumers pointed to a likelihood of confusion. Decision, 2020 WL 1166478, at *5. Next, the Board determined that Sjoklaedagerdin’s mark 66⁰NORTH is not conceptually or commercially weak. Id. at *10. Ad- ditionally, the Board determined that the marks are simi- lar because “each combines the word NORTH with a two digit number in the sixties.” Id. at *6. Lastly, the Board found the following DuPont factor to be neutral: length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Id. at *11. The Board weighed the relevant DuPont factors and concluded that North’s mark NORTH 61 is confusingly similar to Sjoklaedagerdin’s mark 66⁰NORTH. Id. It ac- cordingly sustained the opposition and refused North’s ap- plication to register its mark. North appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B). DISCUSSION Under § 2(d) of the Lanham Act, a mark may be re- fused registration on the principal register if it is “likely, when used on or in connection with the goods of the appli- cant, to cause confusion” with another registered mark. 15 U.S.C. § 1052(d). Likelihood of confusion is a legal de- termination based on underlying findings of fact relating to the DuPont factors. DuPont, 476 F.2d at 1361. We re- view the Board’s factual findings on each relevant DuPont factor for substantial evidence, but we review the Board’s weighing of the DuPont factors de novo. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1321 Case: 20-1709 Document: 33 Page: 4 Filed: 01/13/2021

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(Fed. Cir. 2014). A finding is supported by substantial ev- idence if a reasonable mind might accept the evidence as adequate to support the conclusion. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). On appeal, North primarily challenges the Board’s analysis with respect to DuPont factor one, the similarity of the marks, and DuPont factor six, the number and na- ture of similar marks in use on similar goods. We address each argument in turn. I. DuPont Factor One We turn first to North’s argument regarding DuPont factor one. DuPont factor one concerns the “similarity or dissimilarity of the marks in their entireties as to appear- ance, sound, connotation and commercial impression.” DuPont, 476 F.2d at 1361. North first asserts that the Board failed to compare the marks as a whole when con- ducting its similarity analysis. Specifically, North con- tends that the Board failed to properly consider the degree symbol in Sjoklaedagerdin’s mark 66⁰NORTH. According to North, “[w]hile the degree symbol is only one character” it renders 66⁰NORTH substantially different in “appear- ance, sound, meaning, and connotation” from the mark NORTH 61. Appellant Br. at 19. We disagree with North’s assertion that the Board failed to analyze the marks in their entireties. It is not im- proper for the Board to determine that, “for rational rea- sons,” it should give “more or less weight . . . to a particular feature of the mark” provided that its “ultimate conclusion” regarding the similarity of the marks “rests on considera- tion of the marks in their entireties.” Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357 (Fed. Cir. 2000) (citing In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). Here, the Board acknowledged that Sjoklaedagerdin’s mark 66⁰NORTH “includes the symbol °, which is verbalized as the word ‘degree.’” Decision, 2020 WL 1166478, at *6. However, it determined that it should Case: 20-1709 Document: 33 Page: 5 Filed: 01/13/2021

NORTH 61 LLC v. SJOKLAEDAGERDIN HF. 5

accord less weight to the degree symbol because it is “so small and appears in the middle of the mark.” Id. Alt- hough the Board thus accorded less weight to the degree symbol, it still compared the marks in their entireties. It specifically found that the “marks look and sound similar because each combines the word NORTH with a two digit number in the sixties” and that “[t]o the extent the degree symbol in [Sjoklaedagerdin’s] mark” creates any differ- ences “the other similarities between the marks outweigh the differences.” Id. at *6, *8. North next asserts that when conducting its similarity analysis, the Board ignored evidence that the parties’ marks convey distinct commercial impressions. Specifi- cally, North argues that its mark NORTH 61 connotes Min- nesota Highway 61, “a scenic, northbound highway” that “runs through Minnesota.” Appellant Br. at 3. In contrast, North contends that Sjoklaedagerdin’s mark 66⁰NORTH connotes Icelandic imagery because “66⁰” “derives its name from the latitudinal line of the Arctic Circle which touches Súgandafjörður,” the “town in Iceland where [Sjoklaeda- gerdin] was formed.” Id. at 9–10. As support for its argu- ment, North points to the advertising context in which the parties’ marks are displayed, which, according to North, re- flects the commercial impressions that the marks convey to consumers. For example, North cites evidence that it uses its mark in connection with advertisements that “refer[] to Minnesota Highway 61.” Appellant Br. at 33. North con- trasts this evidence with Sjoklaedagerdin’s marketing ma- terials, which display the 66⁰NORTH mark in association with Icelandic imagery. We disagree with North. The Board expressly ad- dressed North’s argument regarding the marks’ commer- cial impressions but found it unpersuasive because “other than the testimony of [North’s] own witnesses, [North] sub- mitted no evidence to demonstrate that consumers under- stand either mark in the manner [North] posits.” Decision, 2020 WL 1166478, at *8. It was reasonable for the Board Case: 20-1709 Document: 33 Page: 6 Filed: 01/13/2021

6 NORTH 61 LLC v. SJOKLAEDAGERDIN HF.

to find in this case that North’s self-serving testimony and marketing materials were insufficient to demonstrate that consumers actually perceive that 66⁰NORTH “connotes [a] geographic location in Iceland” and that NORTH 61 con- notes Minnesota Highway 61. Id. As the Board recognized, North’s “intended interpretation of the mark is not neces- sarily the same as the consumer’s perception of it.” Id. (quoting In re Yale Sportswear Corp., No. 78653373, 2008 WL 2675684, at *4 (T.T.A.B. July 3, 2008)). Accordingly, substantial evidence supports the Board’s determination that the marks 66°NORTH and NORTH 61, when viewed in their entireties, are similar in sound, appearance, mean- ing, and commercial impression. II. DuPont Factor Six We turn next to North’s argument regarding DuPont factor six. DuPont factor six concerns the number and na- ture of similar marks in use on similar goods. DuPont, 476 F.2d at 1361. “[T]hird party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015) (quoting 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11.90 (4th ed. 2015)). North contends that the Board improperly disre- garded evidence of third-party registrations of marks that are similar to Sjoklaedagerdin’s mark 66⁰NORTH. Accord- ing to North, this evidence demonstrate that Sjoklaedager- din’s mark is “weak because it is one of so many similar marks” registered for apparel. Appellant Br. at 40. We disagree. The DuPont factor six analysis concerns an examination of the number of similar third-party marks. Here, the Board considered North’s evidence but determined that it was of limited value because “[n]one of the third-party registrations include 66° or 66 DEGREES Case: 20-1709 Document: 33 Page: 7 Filed: 01/13/2021

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and the word NORTH as elements” and “many of the marks listed contain substantial additional matter” which “reduce[s] their probative value.” Decision, 2020 WL 1166478, at *9–10. It was logical for the Board to afford less weight to North’s evidence given its findings that the marks were dissimilar to Sjoklaedagerdin’s mark. Accord- ingly, the Board’s determination with respect to DuPont factor six is supported by substantial evidence. Because the Board did not err in its conclusion that reg- istration of North’s mark would create a likelihood of con- fusion and because its evaluation of the relevant DuPont factors is supported by substantial evidence, we affirm. CONCLUSION We have considered North’s remaining arguments and find them unpersuasive. For the foregoing reasons, the de- cision of the Board is affirmed. AFFIRMED