USPTO’s Strength Decision Supported by Substantial Evidence

The United States Court of Appeals for the Federal Circuit recently held that the USPTO’s strength finding was supported by substantial evidence when only 8 third-party registrations with no evidence of use were offered by the trademark applicant. The USPTO refused registration of JS ADL LLC’s ARTISAN NY & Design mark in connection with a variety of clothing items and accessories on the ground that it was likely to cause confusion with a prior registered mark for ARTESANO NEW YORK also for a variety of clothing items. The USPTO found that “artesano” is Spanish for “artisan” and JS ADL did not dispute this finding. In doing so, JS ADL’s primary argument was that the words ARTISAN and NEW YORK are so weak that its use of the Spanish word “artesano” and Design element was sufficient to avoid a likelihood of confusion.

To support its argument, in its Office Action response, JS ADL submitted 8 third-party registrations for marks containing the term ARTISAN for various clothing items and accessories. JS ADL actually submitted a total of 10 third-party registrations, but 2 were surnames. JS ADL did not submit any evidence of use for any of these third-party registrations.

The USPTO maintained the registration refusal despite JS ADL’s weakness argument and evidence. Curiously, JS ADL did not submit a Request for Reconsideration and instead chose to simply appeal the USPTO’s decision. To forego a Request for Reconsideration is a gutsy call because the record on appeal is frozen. In other words, all the trademark applicant’s evidence – save for some limited exceptions – must be submitted to during the prosecution of the application. To JS ADL’s credit, the TTAB has not been consistent on whether evidence of use is required in order to establish trademark weakness. Just two months ago, the Board found trademark weakness relying only on third-party registrations, no evidence of use. In this case, it turned out to be a mistake for JS ADL not to submit a Request for Reconsideration.

The Trademark Trial and Appeal Board affirmed the USPTO’s registration refusal and JS ADL appealed that decision to the United States Court of Appeals for the Federal Circuit. The Federal Circuit reviews the TTAB’s factual findings for substantial evidence. Where there is adequate
and substantial evidence to support either of two contrary
findings of fact, the one chosen by the TTAB is binding on
the Federal Circuit regardless of how the Court might have decided the issue if it had been raised de novo. This makes a reversal on appeal very difficult because the benefit of the doubt favors the Board.

The Federal Circuit agreed with the USPTO that JS ADL’s evidence did not establish that ARTESANO NEW YORK is a weak mark. First, the Court held that evidence purporting to show that the individual components of a composite mark are weak does not necessitate a finding that the combined terms also form a weak mark. Second, JS ADL did not offer any evidence of use for the marks displayed in the third-party registrations. Accordingly, the Federal Circuit affirmed that USPTO’s finding on strength.

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