Thursday, April 08, 2010

Test Your TTAB Judge-Ability: Is "EMIDIO TUCCI" Confusingly Similar to "EMILIO PUCCI" for Overlapping Goods?

One key point: the Board found EMILIO PUCCI to be a famous mark for clothing and accessories. Not surprisingly, the Board sustained a Section 2(d) opposition to registration of the mark EMIDIO TUCCI in the two stylized forms shown below, for perfume, cosmetics, clothing, and leather goods, finding the mark likely to cause confusion with the previously used and registered mark EMILIO PUCCI for apparel (mainly ladies'), leather goods, perfumes and lotions. Emilio Pucci Int. B.V. v. El Corte Ingles, S.A., Oppositions Nos. 91169638 and 91177724 (April 1, 2010) [not precedential].

The Board spent a dozen pages of its 34 page opinion discussing various evidentiary objections, with the bottom line being the admission of the evidence but mostly with little weight being accorded to it.

Long use of the EMILIO PUCCI mark, significant sales and advertising expenditures, unsolicited mentions in U.S. media, and the testimony of Applicant's own witness that the mark is "famous," led the Board to conclude that the mark has achieved fame for clothing and accessories.

Applicant argued that the fame of the EMILIO PUCCI mark is limited to "a small group of upper crust super rich people" who are sophisticated purchasers, and not including "the average Joe." The Board disagreed, noting the evidence of long use, extensive advertising, and extensive mention in the general press.

By way of analogy, it could hardly be denied that ROLLS-ROYCE is a very well-known brand of automobile, although only a small fraction of the population can actually afford to purchase one. [I own a Matchbox version. Doesn't that count? - ed.]

The Board pointed out that the fame of a mark "may easily exceed the group of consumers who are immediately able to and willing to purchase the goods."

The Trademark Act protects marks even in this larger group because both consumer confusion and harm to business reputation can result from the sale of cheaper goods under a similar mark, and because socioeconomic classes are not static. [I aspire to own a real RR one day. And also to fly to Mars. - ed.]

As to the goods, the Board found them to be "largely identical or closely related." Consequently, the Board must assume that the goods travel in the same channels of trade to the same classes of consumers. Applicant argued that Opposer's goods are extremely expensive and thus purchased by sophisticated consumers, but the Board pointed out that there are no such limitations in Opposer's registrations. In any case, "the mere fact that goods are expensive does not mean that their purchasers are sophisticated or immune from source confusion." [And vice versa: just because consumers are sophisticated does not mean that the goods are expensive. - ed.].

As to the marks, the Board found the similarities to outweigh the differences. The have similar connotations, both being "Italian-sounding personal names," and both giving the impression that the goods are "designed by, or received the personal approval of, the person named in the mark."

Balancing the relevant du Pont factors, the Board found confusion likely.

Applicant proposed that confusion would be avoided if its goods were limited to sale to men, but the Board rejected that notion, since Opposer in fact sells some men's products, and so such an amendment would not be effective.

The Board declined to pursue the issue of whether women buy men's clothing and vice versa.

Text Copyright John L. Welch 2010.


Post a Comment

<< Home