Monday, July 30, 2012

"VALENTINO RUDY" Confusingly Similar to "VALENTINO" for Clothing, Says TTAB

The Board sustained a sextet of oppositions to registration of VALENTINO RUDY (Stylized) for various goods in classes 9, 14, 18, 24, 25, and 28, including watches, spectacles, fabric, clothing, and sporting goods, in view of the registered mark VALENTINO for identical or closely related goods. Although third-party uses showed that the VALENTINO mark exists in a "somewhat crowded field," these third-party uses did not render Opposer's mark weak. Valentino, S.p.A. v. Matsuda & Co., Opposition No. 91174169 (July 18, 2012) [not precedential]

Opposer objected to Applicant Matsuda's introduction of evidence of third-party use, which evidence was not produced during discovery but was later acquired. The Board overruled the objection, stating that any failure by Applicant to supplement its discovery responses could be eliminated or minimized during Opposer's rebuttal testimony period.

Turning to the substantive issues, perhaps the most (or only) interesting issue involved Matsuda's class 28 goods: "sporting equipment, namely, golf clubs, golf irons, golf bags." Although Opposer does not use, and has not registered the VALENTINO mark, for golf stuff, third-party registrations and website evidence demonstrated that clothing and golf stuff are related for Section 2(d) purposes.

Of course, when the goods are identical or closely related, the Board must presume that they travel in the same channels of trade to the same classes of consumers. Moreover, the identified goods include products purchased with no more than ordinary care.

Furthermore, when the goods are identical or closely related, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board found the marks VALENTINO and VALENTINO to be "highly similar." Matsuda's mark VALENTINO RUDY incorporates Opposer's mark in its entirety, and the marks are similar in appearance and pronunciation.

Moreover, the general commercial impression of both marks, VALENTINO and VALENTINO RUDY, is that of a person’s name. It is highly likely that consumers will believe that both marks identify a real person and that applicant’s mark is merely the complete, full name of the individual whose first name is Valentino.

Based on Opposer's use of the VALENTINO marks since 1992, the Board found the mark to be commercially strong.

As to the sixth du Pont factor, "the number and nature of similar marks in use on similar goods,"Matsuda submitted a "sizeable number of third-party uses of “Valentino,” but except for one, they include the word "Valentino" in the "second, less dominant, position." But the Board drew "an inference that consumers have come to recognize that several other entities use the term VALENTINO as part of their mark in connection with products that may be used to accessorize clothing items." Nonetheless, "the existence of these third-party uses has not rendered Opposer's mark weak."

Balancing the relevant du Pont factors, the Board found confusion likely, and it sustained the opposition.

TTABlog comment: Opposer's licensee won a similar Section 2(d) case back in 2010 [TTABlogged here].

Text Copyright John L. Welch 2012.


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