CAFC Affirms TTAB: NORTH 61 Confusable with 66⁰NORTH for Clothing and Clothing Store Services

The U.S. Court of Appeals for the Federal Circuit ("CAFC") upheld the TTAB's decision (here) sustaining an opposition to registration of the mark NORTH 61 (in standard characters) for various clothing items and for retail store services featuring clothing,, finding a likelihood of confusion with the regsitered mark 66°NORTH (in standard characters) for T-shirts, shirts, and trousers, and for retail clothing store services. North 61 LLC v. Sjoklaedagerdin Hf., 2021 USPQ2d 52 (Fed. Cir. 2021) [not precedential].

Likelihood of confusion is a legal determination based on underlying findings of fact relating to the DuPont factors. The CAFC reviews the Board's factual findings for substantial evidence but it weighs the factors de novo. On this appeal, Appellant North primarily challenged the TTAB's analysis regarding the similarity of the marks (factor one) and the fame (i.e., strength) of Sjoklaedagerdin's mark (factor six).

As to the first DuPont factor, North claimed that the Board failed to compare the marks in their entireties, and in particular that the Board failed to consider the degree symbol in Sjoklaedagerdin's mark. According to North, the degree symbol renders 66⁰NORTH substantially different from NORTH 61. The Board disagrees. The Board acknowledged that Sjoklaedagerdin's mark, "which is verbalized as the word 'degree,'" but it gave the symbol less weight because it is "so small an appears in the middle of the mark." The Board concluded that any difference created by the symbol was outweighed by the similarities.

North next argued that the Board ignored evidence that the parties’ marks convey distinct commercial impressions: i.e., that NORTH 61 connotes Minnesota Highway 61, “a scenic, northbound highway” that “runs through Minnesota,” whereas 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 [Sjoklaedagerdin] was formed.” The CAFC disagreed with North. The Board expressly addressed this argument but found it unimpressive, since there was no evidence (other than testimony of North's own witnesses) regarding consumer understanding of the marks. The Board noted that North's "intended interpretation of the mark is not necessarily the same as the consumer perception of it."

The CAFC ruled that substantial evidence supported the Board's finding that the marks are similar in sound, appearance, meaning, and commercial impression.

As to the sixth DuPont factor, North contended that the Board improperly disregarded evidence of third-party registrations of marks similar to 66⁰NORTH, which registrations demonstrate that the mark is “weak because it is one of so many similar marks” registered for apparel. Again, the court disagreed. The Board determined that the third-party registrations were of limited probative value because none included 66⁰ or 66 DEGREES with the word NORTH, and many of the marks included substantial additional matter. Therefore it was logical for the Board to afford less weight to this evidence "given the Board's findings that the marks were dissimilar to Sjoklaedagerdin's mark." The CAFC concluded that substantial evidence supported the Board's finding with respect to the sixth DuPont factor.

Because the Board did not err in its conclusion that registration 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.

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Text Copyright John L. Welch 2021.