North Face's Opposition to Similar Logo Sustained

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By Blake Brittain

Sept. 21 — A logo that looks similar to another company's logo turned on its side may create a likelihood of confusion, depending on the similarity of goods covered, the Trademark Trial and Appeal Board ruled Sept. 18.

The board noted that on the whole, the similarities between North Face Apparel Corp.'s registered trademark and the logo Sanyang Industries Co.'s wanted to register outweighed their dissimilarities

However, the board found that the degree of similarity wasn't enough to prove a likelihood of confusion if the classes of the goods covered were unrelated.

The board also rejected North Face's argument that some of the dissimilar goods—like North Face's motorcycle jackets and Sanyang's motorcycles—were complementary and therefore related.

However, the board sustained North Face's opposition to Sanyang's application as to goods in classes identical to North Face's, like apparel and retail store advertising, declining to register the mark for goods in those classes based on a likelihood of confusion.

Logo Controversy

Sanyang's logo incorporates a gray-and-white shape resembling an “S” outlined in black on a red circular background surrounded by white and gray rings.

(Click image to enlarge.)

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The logo for North Face's “Summit Series” brand used a similar shape turned 90 degrees counterclockwise, and did not include color or surrounding rings. 

(Click image to enlarge.)

northface2

Sanyang argued that North Face's logo “would be perceived as an abstract image of a mountain”—in part because “Summit Series” goods related to outdoor pursuits like camping and hiking—and that its logo resembled an arrow, creating different commercial impressions.

The board said that the logos had more similarities than dissimilarities, and the overall impression of the marks cut toward a finding of confusion.

However, because the marks weren't identical, the board said that finding a likelihood of confusion in this case would depend largely on the similarities between the goods at issue.

The board sustained North Face's opposition to Sanyang's applications to register its mark for use on apparel and in retail advertising because the “Summit Series” goods overlapped with these classes.

However, the board denied the opposition to Sanyang's applications for use on lawnmowers, vehicles, headlights, vehicle maintenance and paper goods because North Face didn't sell goods in those classes.

North Face argued that confusion was still likely in those classes because it produced related goods that could be sold through the same channels—like motorcycle jackets it said were related to Sanyang's vehicles. The board rejected this argument.

“Merely because goods can be used together is not a sufficient basis on which to find them to be complimentary,” Administrative Trademark Judge Ellen J. Seeherman said.

“Rather, there must be some showing that customers would seek out both types of goods for the same purpose, for example, making an outfit by matching shoes and clothing, or making a sandwich by combining bread and cheese, to show that the goods are complementary,” the board said.

The board also said that differences in the nature of the goods cut against a likelihood of confusion, despite similar channels of trade.

“The evidence provided by the opposer is not sufficient to show that consumers would believe that the same company that sells clothing and tents and backpacks would also sell motorcycles and electric scooters, even when they see the goods offered in the same store,” the board said.

Therefore, the board sustained the opposition as to classes in which North Face sold goods, but dismissed it as to all other classes.

Administrative Trademark Judges Thomas Shaw and Cindy B. Greenbaum joined the opinion.

North Face was represented by Susan M. Kayser of Jones Day, Washington. Sanyang was represented by Glenn J. Dickinson of LightGabler LLP, Camarillo, Calif.

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilzcek@bna.com

Full text at http://src.bna.com/kX.