NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: JS ADL, LLC,

Appellant

______________________

2018-2017

______________________

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

87200423.

______________________

Decided: July 11, 2019

______________________

THEODORE RAY REMAKLUS, Wood, Herron & Evans, 

LLP, Cincinnati, OH, for appellant. 

 THOMAS W. KRAUSE, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Andrei Iancu. Also represented by CHRISTINA J.

HIEBER, JOSEPH MATAL, MOLLY R. SILFEN. 

______________________

Before LOURIE, O’MALLEY, and WALLACH, Circuit Judges.

LOURIE, Circuit Judge.

JS ADL LLC appeals from a decision of the Trademark 

Trial and Appeal Board (the “Board”) of the United States 

Patent and Trademark Office (the “PTO”), affirming the 
2 IN RE: JS ADL, LLC

Examining Attorney’s refusal to register its proposed 

trademark, , on the ground of likelihood of 

confusion. See In re JS ADL, LLC, Serial No. 87200423, 

2018 WL 1756608 (T.T.A.B. Mar. 30, 2018) (“Board Decision”). Because the Board’s fact findings are well-supported by substantial evidence and it correctly held there 

is a likelihood of confusion, we affirm.

BACKGROUND

JS ADL filed intent-to-use Application No. 87200423 to 

register its proposed trademark, , on October 12, 2016. JS ADL sought to register the mark for use 

in Class 25 of the Principal Register, covering the following 

clothing items:

Belts; Gloves; Hats; Headwear; Jackets; Jeans; 

Lingerie; Men’s suits, women’s suits; Pants; 

Scarves; Shawls; Shirts; Sleepwear; Socks; Suits; 

Sweaters; Swimsuits; T-shirts; Underwear

J.A. 21. 

The Examining Attorney refused registration on the 

ground that JS ADL’s mark would likely be confused with 

a previously registered mark, ARTESANO NEW YORK 

CITY. See 15 U.S.C. § 1052(d). ARTESANO NEW YORK 

CITY is registered under No. 3840723 for “Jeans; Shirts; 

Sneakers; Socks; Sweaters; T-shirts; [and] Underwear.” 

The Examining Attorney noted that the two words are 

highly similar in sound and appearance, and she also found 

that “artesano” is the Spanish word for “artisan” and is 

therefore considered confusingly similar under the doctrine 

of foreign equivalents. J.A. 30. She further cited the similarity of the goods and the substantial overlap between the 

goods covered by the cited mark and those for which JS 

ADL sought registration. This overlap also creates a presumption that the goods travel in the same channels of 

trade. See Midwestern Pet Foods, Inc. v. Societe des 

Produits Nestle S.A., 685 F.3d 1046, 1053 (Fed. Cir. 2012). 
IN RE: JS ADL, LLC 3

JS ADL primarily argued in response that both components of ARTESANO NEW YORK CITY are weak and entitled to little protection. But the Examining Attorney 

rejected this argument because the marks must be compared in their entireties, not as individual words, and, in 

any case, even weak marks can give rise to a likelihood of 

confusion. See King Candy Co. v. Eunice King’s Kitchen, 

Inc., 496 F.2d 1400, 1401 (CCPA 1974).

JS ADL then appealed to the Board, which affirmed the 

Examining Attorney’s refusal to register JS ADL’s proposed mark. Board Decision, 2018 WL 1756608, at *10. 

The Board rejected JS ADL’s argument that ARTESANO 

NEW YORK CITY is an inherently weak mark and, as 

such, is entitled to limited protection. Id. at *5–7. The 

Board also affirmed the Examining Attorney’s findings on 

the factor of similarity of the marks. While it declined to 

apply the doctrine of foreign equivalents, the Board nevertheless agreed with the Examining Attorney that, because

the two marks are “more similar than dissimilar in appearance and sound” and consumers would likely view “artesano” only as a novel spelling of “artisan,” the marks 

“convey similar overall commercial impressions.” Id. at 

*9–10. The Board also found that “[b]ecause the goods 

identified in the application and the cited registration are 

in part identical,” the factors of relatedness of goods, channels of trade, and classes of purchasers weighed in favor of 

likelihood of confusion, as did its finding that the goods are 

likely to be offered for sale under the same conditions. Id. 

at *2–3.

This appeal followed. We have jurisdiction under 28 

U.S.C. § 1295(a)(4)(B). 

DISCUSSION

We review the Board’s legal determinations de novo

and its factual findings for substantial evidence. Royal 

Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 1364–65

(Fed. Cir. 2018). A finding is supported by substantial 
4 IN RE: JS ADL, LLC

evidence if a reasonable mind might accept the evidence as 

adequate to support the finding. Consol. Edison Co. v. 

NLRB, 305 U.S. 197, 229 (1938). “Where there is adequate 

and substantial evidence to support either of two contrary 

findings of fact, the one chosen by the board is binding on 

the court regardless of how we might have decided the issue if it had been raised de novo.” Mishara Const. Co. v. 

United States, 230 Ct. Cl. 1008, 1009 (1982). 

Under the Lanham Act, 18 U.S.C. §§ 1051–1141n, a

trademark applicant is entitled to registration of a proposed mark subject to several restrictions, one of which is 

that the proposed mark may not “so resemble[] a mark registered in the Patent and Trademark Office, or a mark or 

trade name previously used in the United States by another and not abandoned, as to be likely, when used on or 

in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . . .” Id. § 1052(d). 

Likelihood of confusion is a question of law, which we review de novo, but we review the Board’s factual findings 

underlying that conclusion for substantial evidence. See In 

re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2001) 

(citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed. 

Cir. 2004)). Any doubt as to likelihood of confusion is resolved “against the newcomer because the newcomer has 

the opportunity and obligation to avoid confusion with existing marks.” See Hewlett-Packard Co. v. Packard Press, 

Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002) (citing In re Shell 

Oil Co., 992 F.2d 1204, 1209 (Fed. Cir. 1993)). 

The Board evaluates likelihood of confusion by reference to the factors set out in In re E.I. DuPont DeNemours 

& Co., 476 F.2d 1357, 1361 (CCPA 1973). But “[n]ot all of 

the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601 F.3d at 1346. In this 

case, the Board considered the DuPont factors relating to 

the similarity and nature of the goods, the channels of 

trade, classes of consumers, conditions of sale, strength of 
IN RE: JS ADL, LLC 5

the cited mark, and the similarity of the marks. See generally Board Decision, 2018 WL 1756608. JS ADL only disputes the Board’s findings on the latter two DuPont factors, 

as well as the Board’s ultimate holding of likelihood of confusion. We address each in turn.

JS ADL first argues, as it did below, that the Board 

gave inadequate weight to the purported weakness of 

ARTESANO NEW YORK CITY as a registered mark. In 

its brief, JS ADL provides many examples of related marks 

from third parties containing some variation of ARTISAN 

or ARTESANO, in addition to other examples of related

marks containing variants of NY or NEW YORK CITY. JS 

ADL further contends that ARTESANO suggests clothing 

items made by skilled tradespersons and NEW YORK 

CITY is descriptive, and thus, because the formative words 

themselves are not distinct, the Board erred in placing any 

weight on the strength of ARTESANO NEW YORK CITY.

The PTO responds that the Board’s finding is supported by substantial evidence and that a mark built with

weak individual components is not necessarily entitled 

only to a narrow scope of protection. The PTO further notes 

that JS ADL presented no evidence of actual third-party 

use, as opposed to third-party trademark registrations,

that would have allowed the Board to find that “consumers 

actually are conditioned to distinguishing among marks including ARTISAN or NY/NEW YORK.” Appellee Br. 19

(citing Board Decision, 2018 WL 1756608, at *6). 

We agree with the PTO. JS ADL only presented evidence that variants of the terms ARTISAN and NY are 

themselves suggestive or descriptive, and it is well-established that the weakness of the individual components of a 

mark is not, of itself, sufficient to prove that their combination creates a weak mark. See China Healthways Inst., 

Inc. v. Wang, 491 F.3d 1337, 1340 (Fed. Cir. 2007) (“It is 

incorrect to compare marks by eliminating portions thereof 

and then simply comparing the residue.” (citing Specialty 
6 IN RE: JS ADL, LLC

Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 

673 (Fed. Cir. 1984))); Franklin Mint Corp. v. Master Mfg. 

Co., 667 F.2d 1005, 1007 (CCPA 1981) (“It is axiomatic that 

a mark should not be dissected and considered piecemeal; 

rather, it must be considered as a whole in determining 

likelihood of confusion.”). The Board was entitled to give 

little weight to JS ADL’s evidence of third-party trademark 

registrations separately including variants of either “artisan” or “New York,” especially in view of JS ADL’s failure 

to provide evidence of actual third-party use, cf. Jack 

Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. 

New Millennium Sports, S.L.U., 797 F.3d 1363, 1373–74 

(Fed. Cir. 2015) (holding that the Board erred in giving little weight to evidence of registered third-party marks in 

actual use). Thus, substantial evidence supports the 

Board’s finding that JS ADL failed to show that 

ARTESANO NEW YORK CITY is a weak mark not entitled 

to a normal scope of protection. 

JS ADL next argues that the Board erred in finding 

similarity between the marks. JS ADL generally contends 

that the Board placed too much weight on the similarity 

between ARTISAN and ARTESANO. See In re Electrolyte 

Labs., Inc., 929 F.2d 645, 647 (Fed. Cir. 1990) (holding that 

the Board cannot ignore the less dominant portion of a 

cited mark) (citing Spice Islands, Inc. v. Frank Tea & Spice 

Co., 505 F.2d 1293 (CCPA 1974)). In doing so, JS ADL contends, the Board failed to give due consideration to other 

differences between the marks, including the NY and NEW 

YORK CITY terms and the cross-stitch design portion of JS 

ADL’s mark. JS ADL also maintains that the Board erred 

in finding that ARTISAN and ARTESANO are highly similar in appearance and sound because ARTESANO has an 

extra syllable and the words are pronounced differently.

Finally, JS ADL asserts that the Board offered no support 

for its conclusion that a consumer would perceive that 

ARTESANO has the same meaning as ARTISAN. 
IN RE: JS ADL, LLC 7

The PTO argues in response that the Board reasonably 

found that the dominant portions of the marks, ARTISAN 

and ARTESANO, are confusingly similar. The PTO also 

contends that NY and NEW YORK CITY are disclaimed 

geographical terms that, along with the small cross-stitch 

element in JS ADL’s mark, contribute less to the overall 

commercial impression of the marks. See CBS Inc. v. Morrow, 708 F.2d 1579, 1581–82 (Fed. Cir. 1983) (“[I]n a composite mark comprising a design and words, the verbal 

portion of the mark is the one most likely to indicate the 

origin of the goods to which it is affixed.”). The PTO also 

argues that substantial evidence supports the Board’s finding that ARTISAN and ARTESANO are confusingly similar because minor lettering differences may not distinguish 

a similar word in a cited mark. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 965 (Fed. Cir. 2007). 

We agree with the PTO and conclude that substantial 

evidence supports the Board’s evaluation of the factor of

similarity between the marks. We first conclude that the 

Board did not place undue weight on the ARTISAN and 

ARTESANO portions of the marks. We have consistently 

held that, while a mark must be considered as a whole, 

“[m]ore dominant features will, of course, weigh heavier in 

the overall impression of the mark.” In re Electrolyte Labs., 

929 F.2d at 647 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983)). Here, 

the Board expressly made findings regarding the other features of the marks. While the Board found that NY and 

NEW YORK CITY are routinely disclaimed as descriptive 

geographical terms, Board Decision, 2018 WL 1756608, at 

*8, it found in its ultimate analysis of similarity that both 

ARTESANO NEW YORK CITY and suggest clothing created by tradespersons in the City or State 

of New York, id. at *10. And we agree with the PTO that 

the Board was entitled to find that the cross-stitch in JS 

ADL’s proposed mark only suggests clothing items identified under the mark and as a result it contributes little to 
8 IN RE: JS ADL, LLC

the overall commercial impression of the mark. See CBS, 

708 F.2d at 1581 (“[M]inor design features do not necessarily obviate likelihood of confusion arising from consideration of the marks in their entireties.”). 

Nor do we agree with JS ADL that the Board erred in 

its analysis of the dominant portion of the mark, 

ARTISAN. As the PTO points out, the only differences 

between ARTISAN and ARTESANO are the substitution 

of the letter “E” for “I” and the addition of the letter “O” at 

the end. The Board reasonably found that the terms are 

highly similar in appearance and sound. More importantly, the Board also found that and 

the cited mark ARTESANO NEW YORK CITY, considered 

in their entireties, each suggest clothing made by skilled 

tradespersons in New York. Board Decision, 2018 WL 

1756608, at *10. The minor distinctions in spelling and 

pronunciation advanced by JS ADL do not demonstrate error in the Board’s analysis of the overall commercial impression of the marks. Cf. Bayer, 488 F.3d at 965 (“The 

appearance and meaning of ASPIRINA and aspirin are 

similar. Adding an ‘a’ to aspirin results in virtually no distinction with respect to the visual impressions of the 

terms.”). We therefore find the Board’s analysis of the similarity of the marks supported by substantial evidence. 

In summary, we conclude that the Board’s fact findings 

with respect to the strength of the cited mark and the similarity of the marks are well-supported by substantial evidence. Since JS ADL presents no further argument that 

the Board’s ultimate determination of likelihood of confusion is in error, we affirm the Board’s decision. 

CONCLUSION

We have considered JS ADL’s remaining arguments 

but find them unpersuasive. For the foregoing reasons, the 

decision of the Board is

AFFIRMED