CAFC Affirms TTAB: “ARTISAN NY & Design” Confusable With “ARTESANO NEW YORK CITY” for Clothing

In an eight-page opinion, the CAFC upheld the Board’s decision (here) affirming a Section 2(d) refusal to register the word+design mark shown below for various clothing items, finding it likely to cause confusion with the registered mark ARTESANO NEW YORK CITY for overlapping clothing items. On appeal, Applicant JS ADL argued that the cited mark is weak and not entitled to a normal scope of protection, and that in assessing the similarity of the marks the Board put too much weight on the similarity between the words ARTISAN and ARTESANO. The appellate court, however, ruled that substantial evidenced supported the Board’s factual findings and it saw no error in the Board’s conclusion that confusion is likely. In re JS ADL, LLC, Appeal No. 2018-2017 (Fed. Cir. July 11, 2019) [not precedential].

Likelihood of confusion is a question of law, which the CAFC reviews de novo, whereas the Board’s factual findings underlying that conclusion are reviewed for substantial evidence. Applicant JS ADL challenged the Board’s findings as to the strength of the cited mark and the similarity of the marks, as well as the Board’s ultimate holding of likelihood of confusion.

The court agreed with the Board that JS ADL failed to prove that the cited mark is weak. JS ADL presented evidence only that variants of ARTISAN and NY are suggestive or descriptive, but the weakness of individual components does not prove that the combination is weak. Moreover, JS ADL’s evidence of third-party registrations that included variants of ARTISAN or NEW YORK was appropriately given little weight, especially in view of the lack of evidence that these marks were in actual use.

As to the marks, the Board did not place undue weight on the words ARTISAN and ARTESANO. Although marks must be considered in their entireties, there is nothing improper in give the more dominant features greater weight. The Board made express findings regarding other features of the marks, noting that NY and NEW YORK CITY are routinely disclaimed as geographically descriptive terms and finding that the marks both suggest clothing created by tradespersons in the City or State of New York. The Board was also entitled to find that the stitch design in JS ADL’s mark is suggestive of clothing and contributes little to the commercial impression created by the mark.

Nor did the Board err when it analyzed the dominant portion of JS ADL’s mark, the word ARTISAN. The Board reasonably found that the terms ARTISAN and ARTESANO are highly similar in appearance and sound. The minor distinctions in spelling and pronunciation urged by JS ADL do not show that the Board wrongly analyzed the overall commercial impression of the marks.

The CAFC therefore affirmed the Board’s decision.

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TTABlog comment: Is this a double WYHA?