Test Your TTAB Judge-Ability: Is DA VINCI Confusingly Similar to L'IL DAVINCI and DON DAVINCI for Clothing?
This applicant sought to register the mark DA VINCI for various clothing items, but the PTO refused registration under Section 2(d), deeming the mark confusingly similar to the registered marks L’IL DAVINCI and DON DAVINCI for identical or related clothing items. Applicant argued that the word "DAVINCI" is diluted, that the space between "DA" and "VINCI" in its mark makes a difference in connotation and commercial impression because only its mark evokes Leonardo Da Vinci, and that DAVINCI is not the dominant element in the cited marks. How do you think this came out? In re da Vinci, S.A., Serial No. 77651154 (April 30, 2012) [not precedential].
The Board found that all three marks "share the connotation and commercial impression of Leonardo da Vinci." The space or absence of a space cannot distinguish the marks because the three marks are in standard character form, and the Board must consider the marks "regardless of font style, size or color." In fact, Applicant itself submitted the examples below, showing use of the cited marks in a manner that could be perceived as "Da Vinci."
The Board further found that DON and L'IL do not dominate the cited marks. These terms merely modify DAVINCI, a well-known historical character. Even if DON is perceived as a person name (rather than as the Spanish word for a gentlemen or nobleman), "it does not detract from the impression of being a Da Vinci." [Huh? Don Da Vinci as in Leonardo Da Vinci? Or just some ordinary Da Vinci? - ed.]
Although the first word in the mark is often the part most likely to be remembered, here the strong commercial impression of the well-know figure Leonardo da Vinci is overpowering.
A "handful" of third-party registrations for marks incorporating the term DAVINCI are not binding on the Board. Moreover each mark includes other matter that serves to distinguish them from each other.
In sum, the Board found the applied-for mark to be substantially similar to each of the cited marks.
As to the weakness of the term DAVINCI, the four registrations proffered (including the two cited registrations) do not support "a finding that DAVINCI has a specific meaning in this field such that consumers would look to other elements to determine source."
Moreover, even if these four coexisting registrations do limit the scope of DAVINCI when registered with other distinguishing elements, "the scope of protection is still broad enough to prevent the registration of a highly similar mark that contains no distinguishing element for identical goods."
And so the Board affirmed the refusals to register.
TTABlog comment: Do you think DON DAVINCI and L'IL DAVINCI evoke Leonargo da Vinci? Maybe L'IL DAVINCI for children's clothing, but Don?
Text Copyright John L. Welch 2012.