Tuesday, January 27, 2009

Stylized "FRANCO FERRARI" Confusingly Similar to "FERRARI" and "FRANCO FERRARO," Says TTAB, Frankly

Rejecting Applicant's feeble contention that its mark (shown below) is a "distinctive design mark," the Board affirmed the PTO's Section 2(d) refusals to register, finding the mark likely to cause confusion with the registered marks FERRARI and FRANCO FERRARO, all for clothing and/or fabrics in classes 24 and 25. In re Franco Ferrari, S.r.l., Serial No. 76545104 (January 8, 2009) [not precedential].

The Board agreed with Examining Attorney John Hwang that Applicant Franco Ferrari, S.r.L. was seeking to register the words FRANCO FERRARI in a stylized font, and that Applicant's mark "is not so extreme or highly stylized that the wording in the mark is unrecognizable or that it is essentially a design mark which conveys a distinct impression separate from the words."

First, the mark is displayed as a signature is displayed, on one line, and looks like a signature. Second, an elevated dot appears on the right side of the mark in the position where the dot on a lower case letter “i” would appear. Third, several letters are recognizable in the mark, such as the letters "a," "o," "f"and “i,” which signal consumers that the letters spell something, and that the mark is not a design. Once the purchaser perceives the letters in the mark, the purchaser will try and determine what the wording is. Fourth, the mark does not resemble anything except a signature and contains no geometric shapes or patterns.

Further undermining Applicant's lame contention that its mark is a "design mark" were its argument that its mark is different in sound from FERRARI, its identification of the mark as "FRANCO FERRARI" in its original application papers, and its statement during prosecution that "Applicant is using the trademark as a signature in stylized type." The Board not surprisingly concluded that the mark is a stylized depiction of the words FRANCO FERRARI, and not a design.

Moreover, the stylized lettering of Applicant's mark "does not serve to distinguish applicant's mark from the cited marks." Because the cited marks are in standard characters, they are not limited to depiction in any particular form.

As to the FRANCO FERRARO citation, "[i]n view of the broadest possible modes of display we must accord registrant's mark, including a display similar to that of applicant's mark," the Board found the marks to be "highly similar in sound, appearance, meaning and commercial impression."

With regard to the FERRARI citations, "[e]ven with the addition of FRANCO to FERRARI, the meaning and commercial impression of applicant's mark remains the same as the meaning and commercial impression of registrant's marks, i.e., as a name. The addition of FRANCO merely emphasizes that FERRARI is an individual's name, rather than a place or some other thing." Thus despite the addition of FRANCO, the Board found the marks to be similar.

Next, Applicant argued that "it is entitled to registration because the FERRARI marks registered despite the existence of the FRANCO FERRARO registration," but the Board was unmoved. First, the Board is not bound by prior examination decisions, and second, "applicant's mark is closer to FRANCO FERRARO and to FERRARI than FERRARI is to FRANCO FERRARO." [TTABlog query: What if someone tried to register FERRARO FERRARI?]

In one last gasp, Applicant contended that it sells its goods to the "finest high fashion retailers in the United States," suggesting that care is exercised by purchasers. The Board pointed out, however, that the goods identified in the application are not limited to "high fashion goods" but encompass even inexpensive clothing items. [TTABlog query: I wonder if Applicant's goods ever find their way into Filene's Basement?]

Weighing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusals to register.

Text Copyright John L. Welch 2009.


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