Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 GIULIANO CECCATO
MANIFATTURA LANE GAETANO MARZOTTO & FIGLI, S.P.A.
July 27, 1994
Hearing: February 15, 1994
Opposition No. 78,134, to application Serial No. 73/644,847 filed February 17, 1987.
Before Seeherman, Hanak and Hohein
Administrative Trademark Judges
Opinion by Seeherman
Administrative Trademark Judge
Giuliano Ceccato has opposed the application of Manifattura Lane Gaetano Marzotto & Figli S.p.A, by merger with Lebolemoda S.p.A., to register DUCA D'AREZZO, as shown below, as a trademark for men's suits, jackets and trousers. [FN1]
As grounds for opposition, opposer has alleged that since prior to the September 1986 date of first use claimed by applicant, opposer has used the mark DUCA D'AOSTA on clothing in commerce with the United States; that it owns a federal registration for DUCA D'AOSTA and design (shown below) for men's clothing--namely suits, jackets, trousers, pants, shirts, sweaters, pullovers, blouses, scarves, mufflers, ties, socks, coats, overcoats, raincoats, shorts and T-shirts [FN2]; and that applicant's mark as used on its identified items of men's clothing so resembles opposer's mark as used on men's clothing that it is likely to cause confusion or mistake or to deceive.
In its answer applicant denied all the allegations in the notice of opposition, and also counterclaimed to cancel opposer's registration on the grounds that opposer's mark consists of or is a simulation of the coat of arms or other insignia of a foreign nation, in violation of Section 2(b) of the Act; and that the mark consists of a name of a particular living individual which has been registered without his written consent, in violation of Section 2(c) of the Act. [FN3] Opposer denied these allegations in its answer to the counterclaim.
The record includes the pleadings; the file of the opposed application and the registration sought to be cancelled; opposer's pleaded registration for DUCA D'AOSTA and design for various items of men's clothing; and applicant's answers and supplemental answers to opposer's combined interrogatories and document production request, submitted by opposer under a notice of reliance. [FN4] Applicant has submitted, pursuant to a notice of reliance, opposer's responses to applicant's interrogatories. The parties also stipulated to a modification of the procedure for taking testimony on written questions, and the written testimony, with exhibits, of opposer's witness, Guiliano Ceccato, also forms part of the record.
The parties have fully briefed the case, [FN5] and both were represented at an oral hearing before the Board.
Although applicant is the petitioner in the counterclaim to cancel opposer's registration for DUCA D'AOSTA and design, and opposer is the respondent, we will continue to refer to the opposer/respondent as "opposer" and to the applicant/petitioner as "applicant" throughout this opinion.
*2 Applicant's first ground for cancellation is based on applicant's contention that opposer's registration was obtained contrary to the provisions of Section 2(c) of the Act. It is applicant's position that the mark, DUCA D'AOSTA and design, consists of or comprises a name identifying a particular living individual, and that the registration was obtained without this individual's written consent. Specifically, applicant asserts that Duca Amedeo Di Savoia Aosta is known as Duca D'Aosta, and that he acquired his title through inheritance.
Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c), prohibits the registration of a mark which, inter alia, consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.
An initial question arises as to whether applicant may bring this claim. It has not asserted any relationship whatsoever with the individual which it contends is the Duca D'Aosta and, although it stated at oral argument that a Section 2(c) prohibition may be asserted by anyone, i.e., that it is a "flat-out bar," it has not cited any cases in support of this position. In our own review of the case law involving Section 2(c) grounds, we have been unable to find any inter partes cases in which a party not in privity or having any relationship with the individual named has succeeded in bringing such a claim. [FN6] On the contrary, there are two cases which state that a party to a suit cannot assert a Section 2(c) claim on behalf of an unrelated third-party.
In Capetola v. Orlando, 426 F.Supp. 616, 617-18, 194 USPQ 319, 320 (E.D.Pa.1977), plaintiffs sued for trademark infringement and unfair competition. Defendant moved to dismiss the complaint on the grounds that the registration asserted by plaintiffs, for the mark THE DAWN, was invalid and subject to cancellation because the application for registration failed to show that Dawn Robertson had consented in writing to the use of her name as a service mark. The Court stated:
The short answer to this argument is that defendants have no standing to raise it. Dawn Robertson is not complaining about the use of her name without written consent and the very fact that she has joined as a plaintiff in this lawsuit certainly negates any inference that she has not in fact consented to use of the mark.
In Gilbert/Robinson Inc. v. Carrie Beverage-Missouri Inc., 989 F.2d 985, 26 USPQ2d 1378, 1381 (8th Cir.1993), Gilbert/Robinson, the owner of a registration for HOULIHAN'S OLD PLACE, had sued Carrie for trademark infringement. Carrie asserted as a counterclaim that, during the prosecution of its application before the Patent and Trademark Office, Gilbert had responded to the Examining Attorney's inquiry as to whether the name in the mark was that of a particular living individual by stating that it was a fictitious name, despite the fact that Gilbert had based the mark on the name of the site's previous tenant, Tom Houlihan. The Court found that Carrie failed to prove a cognizable Lanham Act injury:
*3 Section 1052(c) [Section 2(c) of the Lanham Trademark Act] exists to protect the privacy and property interests of persons whom the public will associate with a mark. Carrie is not in privity with Tom Houlihan and has no standing to vindicate his rights.
We agree with the Courts that applicant herein is precluded from asserting that the registration of opposer's mark was prohibited by Section 2(c) of the Act. The rationale for the proscription of registration in Section 2(c) is to protect living individuals from the commercial exploitation of their names, except where those living individuals agree to such exploitation as evidenced by the written consent by the individual to the applicant's use and registration of his name as a mark. See In re D.B. Kaplan's Delicatessen, 225 USPQ 342 (TTAB1985). See also J. McCarthy, The Rights of Publicity & Privacy, § 6.17[B] (1988). It would be counter to this rationale to interpret Section 2(c) in a manner that would, for example, allow an applicant to scour telephone directories in order to find a listing for someone whose name is used in the opposer's mark, and then counterclaim to cancel the opposer's registration based on this unrelated third-party's name.
We note that the Courts, in the two cases quoted above, have used the term "standing" in rejecting the defendant's Section 2(c) claims. However, we think it is more appropriate not to characterize this as an issue of standing. Rather, an element of the Section 2(c) ground is that the party asserting that ground must have a cognizable or proprietary right in the name. Thus, applicant's failure in this case is not in connection with proving its standing to assert this ground, [FN7] but in proving that it has any linkage or relationship with an individual known as the Duca D'Aosta upon which it could assert this third party's rights. Compare, Holmes Products Corp. v. Duracraft Corporation, --- USPQ2d ----, Op. 90,210 (TTAB March 12, 1994) (opposer held not to have a legally sufficient ground that applicant's mark was likely to cause confusion with registered marks where opposer neither owned the registrations nor was in position of privity with the owners).
We would also point out that even if applicant could assert rights on behalf of the "Duca D'Aosta," applicant has failed to establish that opposer's mark consists of or comprises the name of a particular living individual.
The only evidence submitted by applicant on this claim is opposer's response to applicant's interrogatory as to whether, at the time opposer first adopted his mark or filed his trademark registration, he had "knowledge, of any kind, of the living individual 'Duca D'Aosta' (Duke of Aosta) or of the 'Duca D'Aosta's' family." Opposer's answer was:
Objection, lack of foundation, there is no living "Duca D'Aosta" (Duke of Aosta) and consequently there can be no Duca D'Aosta's family. Insofar as the question pertains to the individual Amadeo D'Aosta who uses the designation (improperly) Duca D'Aosta the answer is yes.
*4 In addition, opposer made of record applicant's responses to opposer's discovery request to identify the particular living individual who was alluded to in applicant's counterclaim. Applicant responded that the living individual Duca D'Aosta is "Duca Amedeo Di Savoia Aosta, (known as 'Duca D'Aosta')," with an address in Italy, who acquired his title through inheritance. With this response applicant provided copies of pages from the October 1988 issue of "Gente Mese" magazine, stating that the article refers to the Duca D'Aosta.
In the magazine article certain phrases have been highlighted, such as "principessa Bianca di Savoia Aosta," "del duca Amedeo d'Aosta," "Bianca d'Aosta," "il duca Amadeo d'Aosta," "il duca Amadeo" and "del padre, il duca Amedeo." However, the article itself is in Italian, with no English translation provided, and we therefore do not know what the article says, or what these highlighted phrases may signify. Applicant is the plaintiff in the counterclaim, and the burden is on it to prove that DUCA D'AOSTA consists or comprises the name of a particular living individual. An untranslated, and therefore unintelligible, magazine article does not constitute such proof. Nor does applicant's response to opposer's interrogatory to identify the living individual referred to in applicant's pleaded counterclaim prove that "Duca Amedeo Di Savoia Aosta (known as 'Duca D'Aosta')" is in fact a particular living individual, or that Duca D'Aosta is his name or the name by which he is known.
This brings us to opposer's response to applicant's interrogatory, in which he stated that there is no living "Duca D'Aosta" but that he was aware of an individual, Amedeo D'Aosta, who improperly uses the designation Duca D'Aosta. Opposer's interrogatory answers also state that he selected the mark DUCA D'AOSTA and design as an arbitrary and fanciful mark and fanciful design.
We cannot conclude from opposer's response that applicant has met its burden in proving that there is, in fact, a particular living individual named "Duca D'Aosta," and that the registration of this name as part of opposer's mark was in violation of Section 2(c) of the Act. At the very least, opposer's response must be seen as contradictory or ambiguous in terms of whether DUCA D'AOSTA is a name.
In addition, both parties in their briefs have referred to "Duca D'Aosta" as a title, and we will therefore deem this to be a stipulated fact. Because "Duca D'Aosta" refers to a position which has been held by various persons through the years (applicant states that this term is a heriditary title), we cannot say, on the record before us, that the phrase refers unequivocally to a particular living individual. Compare, In re Steak and Ale Restaurants of America, 185 USPQ 447, 448 (TTAB1975), in which PRINCE CHARLES was held to be the name of a particular living individual. The Board stated, however:
*5 there is no dispute but that the word "PRINCE", per se, or when linked with a geographical designation, may constitute nothing more than a title where royalty is concerned, but the addition of a given name or a surname to the word "PRINCE" could well serve as a name or "nickname" for a particular living individual who could be identified and referred to in the various walks of life with this appellation.
In the present situation, obviously, the term at issue is the title per se (DUKE linked with a geographical designation), without the addition of a given name or a surname.
Applicant also seeks cancellation of opposer's registration pursuant to Section 2(b) of the Trademark Act. Section 2(b) prohibits the registration of a mark which "consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof."
Ironically, the only evidence we have in connection with this contention has been submitted by opposer. It consists of a page from the "Gente Mese" article referred to above, and was provided by applicant in response to opposer's discovery request to produce "all documents concerning the alleged coat of arms or other insignia of a foreign nation" pleaded in applicant's counterclaim.
Applicant states in its brief that the coat of arms pictured in this article is the coat of arms of the Italian Royal Family. However, applicant has submitted no evidence from which we can ascertain that this design is indeed that coat of arms. As we stated previously, the article is in Italian, and no translation has been provided. Thus, we have no way of knowing whether the article does, in fact, state that this is the coat of arms of the Italian Royal Family. Further, even if we were to assume that the coat of arms depicted in the article was that of the "Italian Royal family," (and in this connection we take judicial notice of the fact that Italy is not a monarchy), this does not prove that the same coat of arms is the insignia of the municipality of Aosta, Italy. [FN8]
Moreover, it is not clear from the wording of Section 2(b) that the prohibition against the registration of the coat of arms of a municipality applies to that of a foreign municipality. The Statute refers to the flag or coat of arms or other insignia of the United States, or any State or municipality, or of any foreign nation. By the manner in which the clauses are arranged, it would appear that the reference to "municipality" in the Statute is to a municipality in the United States, and that prohibition of registration with respect to foreign coats of arms, etc., is to those of the countries themselves, rather than to those of the states or municipalities of the foreign countries. However, in view of applicant's failure to prove that the design in opposer's registration is the coat of arms of the municipality of Aosta, Italy, or a simulation thereof, we need not decide this issue.
Decision on the Counterclaim
*6 Applicant's counterclaim to cancel opposer's registration for DUCA D'AOSTA and design is dismissed.
Opposer's registration for DUCA D'AOSTA and design is of record, and therefore priority is not in issue. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA1974). Moreover, the record shows that opposer began using its mark in commerce with the United States in 1976, while applicant did not begin using its mark until 1986.
The goods of the parties are identical in part and otherwise closely related. Applicant has identified its goods as "men's suits, jackets and trousers," while opposer's registration is for the same goods--men's clothing, namely suits, jackets, trousers and pants--as well as such other articles of men's clothing as shirts, sweaters, pullovers, coats, overcoats and raincoats. Accordingly, the goods of the parties must be deemed to travel in the same channels of trade and to be sold to the same class of consumers. See, Interco Incorporation v. Acme Boot Company, Inc., 181 USPQ 664 (TTAB1974). In addition, the evidence of record shows that applicant's goods are sold through retail stores, specialty stores and boutiques, while opposer's goods are sold through importers/wholesalers who then sell to retail stores. Opposer's clothing is ultimately bought by the general public, particularly from men's clothing stores.
As for the marks (shown below), we find them to be very similar.
The word portions of both are foreign words which begin with the phrase DUCA D', followed by the name of an Italian city which begins with an "A". Because the Italian place names AOSTA and AREZZO may be unfamiliar to consumers, they are likely to have a hazy recollection of them simply as three-syllable Italian geographic names beginning with "A". Thus, consumers, being familiar with opposer's mark DUCA D'AOSTA and design, and encountering applicant's DUCA D'AREZZO mark on identical goods, may well confuse the marks, and misremember one as the other. See Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB1988) (likelihood of confusion found between GOLDTROPFCHEN and GOLDENER TROPFEN: "to those American customers who do not speak German and thus do not know how the respective marks translate into English, we agree with opposers' counsel that both marks may be seen as the familiar word 'gold' 'followed by a jaw-breaking string of consonants.' "). See also Bottega Veneta, Inc. v. Volume Shoe Corp., 226 USPQ 964 (TTAB1985) (likelihood of confusion found between BOTTEGA VENETA and BORSA VENETO). Under actual marketing conditions consumers do not necessarily have the opportunity to make side-by-side comparisons between marks. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255 (TTAB1980).
*7 Moreover, even if consumers were to note the specific differences in the marks, they are still likely to believe that both marks identify goods emanating from a single source. Because the marks follow the same pattern, i.e., DUCA D' followed by the name of an Italian city, and in particular a three-syllable Italian city beginning with an "A", purchasers are likely to view these marks, when used on identical goods, as identifying two different lines of clothing manufactured and sold by a single entity.
In reaching this conclusion, we would point out that we have compared the marks in their entireties, and have noted that opposer's mark contains a design element in addition to the words, and that the typestyle in which the words in the marks are depicted is somewhat different. However, it is well established that there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on the consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.Cir.1985). In this case, we think that it is appropriate to give greater weight to the word portions of the mark, because it is by the words that purchasers will refer to the goods, and the words, rather than the design feature or the stylized lettering, will therefore have a greater impression on them. See, In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB1987). Moreover, the design element in opposer's mark, a coat of arms, reinforces the meaning of the mark as referring to a duke or, in Italian, "duca", while the stylized lettering in both marks creates a similar impression, despite the fact that applicant's mark uses initial capital letters while opposer's mark is all in lower case.
We have also considered, but are not persuaded by, applicant's argument that the only common element in the marks is the phrase "DUCA D", which means "DUKE OF"; that this is a common term of address; and that, because of this, it is a weak element which does not have much effect in distinguishing source. Although "DUKE" may be a well-recognized title, this does not mean that "DUCA D' " is nondistinctive when used as part of a trademark. Applicant has not submitted any evidence to support its contention that this phrase is in frequent use in trademarks (see discussion in footnote 5), nor is there any basis on which we could find that purchasers have been so exposed to trademarks containing the element "DUCA" or "DUKE" that the remaining elements of the marks have a greater source-identifying significance.
Applicant also argues that the marks differ connotatively because "DUCA D'AOSTA" refers to a living individual who is world-renowned, while "DUCA D'AREZZO is a fictitious title of nobility. However, as noted previously, there is no evidence of record which proves that DUCA D'AOSTA is the name of a particular living individual, let alone that purchasers would recognize this phrase as referring to a particular person. Thus, as far as this record is concerned, both marks appear to have a similar connotation--that of Italian ducal titles.
*8 The opposition to the registration of Application Serial No. 73/644,847 for DUCA D'AREZZO is sustained; the counterclaim to cancel opposer's Registration No. 1,107,359 for DUCA D'AOSTA and design is dismissed.
Administrative Trademark Judges Trademark Trial and Appeal Board
FN2. Registration No. 1,107,359, issued November 21, 1978; Section 8 affidavit accepted.
FN3. Applicant also pleaded that opposer's mark consists of or comprises matter which falsely suggests a connection with a living person, the Duke of Aosta, and that it falsely suggests a connection with an institution, the office of the Duke of Aosta and/or the descendants of the Italian Royal Family, in violation of Section 2(a) of the Trademark Act. However, at the oral hearing held before the Board applicant stated that it was not pursuing its Section 2(a) claim, and therefore we have not considered this issue.
It is also noted that applicant's brief includes assertions that opposer, during the prosecution of its application that matured into the registration sought to be cancelled, made material misstatements of fact to the Trademark Examining Attorney without which the mark would not have been allowed for registration. However, aside from the fact that fraud was not pleaded as a ground for the counterclaim, at the oral hearing applicant made clear that fraud is not an issue in this proceeding.
FN4. Responses to document production requests cannot be made of record pursuant to a notice of reliance unless they otherwise could be made of record by notice of reliance under Trademark Rule 2.122(e). Trademark Rule 2.120(j)(3)(ii). However, in their briefs the parties have treated these responses to be of record, and we will therefore deem them to be of record by stipulation of the parties pursuant to Trademark Rule 2.123(b).
FN5. With its main brief applicant attached materials which appear to be information about third-party registrations. Opposer has moved to strike this attachment, as well as the discussion in applicant's brief regarding these materials. At the oral hearing applicant's attorney conceded this motion, which in any case is well taken. Accordingly, the third-party registrations and the arguments based thereon have not been considered.
FN6. We can find only one inter partes case before the Board in which a party not in privity with the individual named in the mark asserted a Section 2(c) claim, Goyescas Corp. v. Editorial America, Inc., 174 USPQ 125 (TTAB1972). That case was primarily brought on the ground of fraud, with the cancellation petitioner asserting that the respondent had committed fraud on the Office because, during the course of prosecution of the application, it had responded to the Examiner's request for a translation of the mark by saying it was coined and had no meaning, and did not advise the Examiner that the mark was an author's pen name. The Board's opinion was primarily devoted to a discussion of the fraud issue, and the only reference to the Section 2(c) claim was in the last paragraph:
Concerning the question of a per se violation of Section 2(c) of the Trademark Act, we feel that since petitioner has failed to establish that it can be damaged by the existence of respondent's registration [petitioner had been enjoined from using its mark, and therefore had not established any rights to the use of its mark], it is not incumbent upon us to make a further finding on whether or not a pseudonym falls within the specific prohibitions of Section 2(c) of the Trademark Act.
FN7. Applicant's standing arises from its position as defendant in the opposition. General Mills, Inc. v. Nature's Way Products, Inc., 202 USPQ 840 (TTAB1979).
FN8. It should also be noted that the statements in this magazine article constitute hearsay and thus cannot be used to prove the truth of the statements made in the article.