In The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., Opp. No. 91187593 (September 18, 2015), the Trademark Trial and Appeal Board (“TTAB”) handed The North Face Apparel Corp. (“The North Face”) significant victories its battle against Sanyang Industry Co. Ltd.’s (“Sangyang”) registration of its trademark. Sanyang is a Taiwanese company that manufactures and sells a variety of motor vehicles. In the United States, its primary product line is scooters, which are generally sold through motorsports dealerships. In 2008, Sanyang filed two, use-based US trademark applications for its logo:
The two applications claimed a very large number of goods and services in multiple classes: Class 7 (machinery), Class 11 (environmental control apparatus), Class 12 (vehicles), Class 16 (paper goods), Class 25 (clothing), Class 35 (advertising and business), and Class 37 (building construction and repair).
The North Face is an American outdoor product company that specializes in outdoor and athletic clothing, and equipment such as backpacks, tents, and sleeping bags. Its SUMMIT SERIES line employs the registered trademarks:
The North Face opposed registration of Sanyang’s applications, based on priority and likelihood of confusion.
MOTION TO AMEND APPLICATION
As a preliminary matter, the TTAB addressed Sanyang’s Motion to Amend its Answer, which itself attempted to relitigate an earlier-filed Unconsented Motion to Amend the opposed trademark applications. A settled trademark rule of practice prohibits trademark applicants of contested applications from amending the identification of goods in the applications without the consent of the opposing party. 37 CFR § 2.133. In this case, Sanyang filed an Unconsented Motion to Amend to delete certain goods and services in Classes 16 and 35, and all the goods in Class 25. That motion was denied because Sanyang had not complied with the requirements for an unconsented amendment, particularly the entry of judgment against it with respect to the goods proposed to be deleted.
The opposition proceeded to trial, with nothing more being said about the proposed amendment. Then, one week before the close of The North Face’s rebuttal testimony period, Sanyang filed the Motion to Amend the Answer. Although the TTAB found a number of problems with the motion, the principal problem was that Sanyang did not list the goods sought to be deleted. Normally, likelihood of confusion is found as to the entire class if there is likelihood of confusion with respect to any item listed in that class. By moving to delete goods without specifying which ones it sought to delete, Sanyang effectively imposed on The North Face the obligation to prove likelihood of confusion with respect to each of the numerous goods listed in the applications, rather than with respect to one or more (but not necessarily all) goods or services in each class. The TTAB noted that that it did not relish the idea of engaging in that exercise either. Therefore, the TTAB denied Sanyang’s Motion to Amend.
LIKELIHOOD OF CONFUSION
After dismissing the Motion to Amend and disposing of other procedural and evidentiary disputes, the TTAB proceeded to the heart of the matter. The North Face’s priority in its marks was not disputed, so the TTAB simply evaluated the marks for confusing similarity by analyzing the facts based on the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973).
First, the TTAB discussed the du Pont factor of fame. The TTAB noted that The North Face’s evidence of fame was largely based on its sales and advertising figures, which were in the millions of dollars. However, since The North Face failed to provide any context for its figures, the TTAB could not measure those sales against other brands to draw any comparisons. Further, the sales data did not distinguish between the sale and advertising of goods branded with The North Face’s S-Design mark (either with or without the SUMMIT SERIES portion of the mark) and its other goods. Finally, the sales data did not indicate how the sales are broken down by goods (i.e., how much for S-Design apparel versus, say, S-Design tents). Thus, The North Face’s sales and advertising figures, although impressive as raw numbers, were insufficient standing alone to establish fame.
As additional evidence of fame, The North Face introduced five photographs of five celebrities engaged in various activities while wearing apparel branded with the S-Design. However, the existence of the S-Design mark was not highlighted in the photos any way. The TTAB also noted that the evidence lacked information as to where or when these photographs appeared, or what exposure they may have received. Therefore, this submission also fell short of establishing the fame of The North Face’s S-Design mark.
Thereafter, the TTAB simply compared the parties’ marks for similarity in appearance and commercial impression, and similarity of the parties’ goods and services claimed in the opposed applications and cited registrations. Concerning the appearance and overall commercial impression of the marks, the TTAB acknowledged that The North Face more frequently used the SUMMIT SERIES S-Design mark than the S-Design standing alone. Inasmuch as the S-Design conveyed its own commercial impression, that impression was influenced by The North Face’s extensive advertising efforts and promotion of the design in conjunction with the words. overall, however, the TTAB found that the similarities in the parties’ marks outweighed the differences.
The TTAB then compared the parties’ goods. With respect to clothing in Class 25, the TTAB held that the items listed by Sanyang were legally equivalent to those listed in The North Face’s registrations. The opposition to registration of Sanyang’s marks with respect to clothing in Class 25 was sustained.
With respect Class 35, Sanyang’s application identified many distinct services, including “retail stores featuring clothing, textiles, and clothing accessories” in a long list that also included core services such as “online retail store services featuring automobiles, motorcycles and their accessories” and “retail motorcycle parts and accessories stories.” Since operating a retail clothing store was related to The North Face’s Class 25 goods (clothing), and since finding of a likelihood of confusion with respect to those services was sufficient to sustain the opposition as to the entire class, the opposition was sustained with respect to all services listed in Class 35.
For the other classes listed in Sanyang’s applications, the similarity with The North Face’s goods was found to less clear. The North Face was unable successfully to assert that such goods as “vehicle reflectors” or “brake linings for machines” were related to any of its goods. The TTAB reasoned, “[M]erely because a part can be used on a bicycle, and an item of clothing or a backpack can be worn when riding a bicycle, does not make a vehicle reflector or a vehicle headlight and a backpack or outdoor clothing complementary goods.” Therefore, the oppositions to Sanyang’s applications in Classes 11, 12, 16 and 37 were dismissed.
This case reinforces a number of key points of TTAB practice. First, fame is difficult to prove. Although The North Face is a very well-known brand that sells millions of dollars of product a year, it ultimately failed to prove fame because it did not provide specific enough information concerning the reach of the particular marks in question.
Second, as we see in this case, the TTAB does not typically grant unconsented motions to amend the identification of goods in an application after the opposition has been initiated.
This leads to the next crucial point — the more goods and services an applicant includes in any particular class in its application, the greater the likelihood that a challenge will “knock out” the entire class. Trademark applications should exercise caution when drafting the identification of goods to make sure they capture the core goods and services as broadly as necessary without “over-claiming.” In this case, Sanyang’s imprudent inclusion of a claim of “retail stores featuring clothing, textiles, and clothing accessories” in the identification killed the application with respect to its core services of “online retail store services featuring automobiles, motorcycles and their accessories” and “retail motorcycle parts and accessories stories.” Experienced trademark practitioners will recognize Sanyang’s applications as quite typical of non-US registrations, where use in commerce is not necessary and applicants can claim anything and everything in a chosen class for no additional cost and little risk of challenge. Presumably, Sanyang used its non-US registrations as a model for its US applications. That decision led to the loss of the entire application in Class 35.
 The North Face did not add include a separate “fame” count in its Notice of Opposition. Therefore, the TTAB analyzed the possibility that The North Face’s marks were famous only within the context of the du Pont analysis.