Andre Romanelli, Inc.

Trademark Trial and Appeal Board

May 1, 1998

No. 74692688 (T.T.A.B. May. 1, 1998)

Paper No. 10
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 1,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Andre Romanelli, Inc.
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Serial No. 74/692,688
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Myron Amer of Myron Amer, P.C. for Andre Romanelli, Inc.
Katherine Stoides, Trademark Examining Attorney, Law Office
109 (Deborah S. Cohn, Managing Attorney).
_______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 23, 1995, applicant filed an application to
register the mark “MARIO RINALDI” on the Principal Register
for “men’s clothing, namely, suits, pants, jackets, coats,
rainwear, shirts, ties and sweaters,” in Class 25. The
application was based on applicant’s assertion that it
possessed a bona fide intention to use the mark on these
goods in commerce.
The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that applicant’s mark,
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if it were to be used in connection with the goods set forth
in the application, would so resemble the mark shown below,
which is registered1 for “women’s shoes,” that confusion
would be likely.
The Examining Attorney also required applicant to
submit either a statement that the mark is not the name of a
living individual, or, if this is not the case, a consent
from the named individual to applicant’s registration of his
name.2
Applicant responded with argument and evidence in
support of registration. The evidence was a copy of a page
from the Manhattan telephone directory listing twenty-eight
individuals whose surname is “Rinaldi.” Applicant argued
that this evidence shows that the name sought to be
registered does not identify a couturier, but rather, is a
common surname.

1 Reg. No. 678,511, issued to Shwartz & Benjamin, Inc. on May 12,
1959, and renewed in 1979.
2 Although applicant did not satisfy this requirement until after
the appeal had commenced, applicant’s statement that it does not
know of a living individual whose name is “Mario Rinaldi” has
been entered into the record.
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The Examining Attorney was not persuaded to withdraw
the refusal, and in the second Office Action, she made final
the refusal under Section 2(d).
Applicant timely filed a notice of appeal. Both
applicant and the Examining Attorney filed briefs, but
applicant did not request an oral hearing.
After careful consideration of the record and arguments
in this case, we have determined that the refusal under
Section 2(d) is well taken. Our analysis of the issue of
likelihood of confusion in this case involves the two most
basic factors identified in In re E.I. duPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563(CCPA 1973), the
similarities between the marks and the commercial
relationship between the goods set forth in the application
and those specified in the cited registration.
Applicant argues that the marks are not so similar that
they would be likely to cause confusion, especially in light
of the differences between the goods. Applicant further
contends that “MARIO RINALDI” would not be abbreviated as
“RINALDI” alone; that applicant’s mark is no more likely to
cause confusion than are two other registered marks,
“MARINA RINALDI” for “large size outer clothing for women,”3
or “AS I GOT OLDER, I GOT BETTER. CIAO! FRANCESCA RINALDI”

3 Reg. No. 1,563,440, issued to Max Mara Fashion Group S.R.L. on
October 31, 1989;
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for t-shirts,4 in view of the differences in commercial
impression that these marks create; and that men’s apparel
and women’s shoes, although all clothing items, are “not
clearly associated with each other.” (brief, p.4).
None of applicant’s arguments persuades us that
confusion is not likely in this case. To the contrary, we
hold that confusion is likely because applicant’s mark makes
a commercial impression which is quite similar to that of
the cited registered mark, and the goods with which
applicant intends to use its mark are related to the goods
set forth in the registration.
At the heart of our ruling is our conclusion that the
ordinary consumers who are the potential purchasers of the
kinds of clothing items specified in the application and the
registration, respectively, are likely to confuse these
marks because someone who is familiar with either one of
them who then encounters the other is likely to assume that
they are simply two variations of the same mark, one the
complete name, and the other just the surname, but
nonetheless that both indicate source in the same entity.
As the Examining Attorney points out, in the clothing field,
it is not unusual for designers to use as trademarks either
their complete names, such as “Pierre Cardin” or “Giorgio

4 Reg. No. 1,600,957, issued to Constantino Foods, Inc. on
October 31, 1988.
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Armani,” for example, or simply their surnames, i.e.,
“Cardin” or “Armani.”
As noted above, applicant introduced telephone
directory evidence upon which was based the contention that
“Rinaldi” is a common surname, rather than the name of a
couturier. We fail to see how twenty-eight entries in the
Manhattan directory even relate to the question of whether
there is a fashion designer known as either “Mario Rinaldi”
or “Rinaldi.” In any event, that the record does not
establish that either this particular applicant or this
particular registrant is a designer enterprise which engages
in the practice of using both a long version and a short
version of the designer’s name is of no particular
consequence. Consumers who are familiar with the fact that
in the clothing field, sometimes both versions of a name
are used, would understand “Rinaldi,” in the script form
shown in the drawing, as a shortened version of the full
name, “Mario Rinaldi.” Perhaps the registered mark would be
perceived as the signature of such person. It might even be
assumed that Mario Rinaldi uses the script version of his
surname on his menswear, while he uses his full name on his
line of women’s shoes. In any event, it is likely that
consumers would assume a common source for goods bearing
these two marks as long as the goods in question are
commercially related.
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Further, we are not persuaded by applicant’s argument
concerning the third-party registrations which allegedly
coexist without confusion. These two registrations are for
marks which clearly differ in commercial impressions.
“MARINA RINALDI” is simply a woman’s complete name. “AS I
GOT OLDER, I GOT BETTER. CIAO! FRANCESCA RINALDI” combines
the name of a clearly different woman with a slogan about
being older. Confusion may not be likely when the marks
consist of or include the complete names of people who have
the same surname, but different given names, especially when
one of the names is accompanied by a distinctive slogan. In
the case at hand, however, as discussed above, the situation
is quite different. These two names could easily be
understood to refer to the same individual.
The second factor mentioned above is the relatedness of
the goods, and, as we indicated there, we hold that the
products at issue in this case are related in such a way
that confusion would be likely if these similar marks were
used on both registrant’s goods and the goods specified in
the application. Contrary to applicant’s contention that
women’s shoes and the men’s clothing items specified in the
registration are “not clearly associated with each other,”
these goods are plainly related. Many of the same designers
and makers of women’s apparel, including shoes, also market
men’s clothing and shoes. Both types of goods move through
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the same channels of trade to the same ordinary consumers,
who use them for similar purposes. Men purchase clothing
for women as well as for themselves, and women buy clothing
not just for themselves, but for men as well. To take the
position that these products are not commercially related
ignores the reality of the marketplace in the United States
today.
In the absence of evidence to the contrary, we must
agree with the Examining Attorney that these goods are
related, and that the use of these similar marks in
connection with them would likely lead to confusion.
Accordingly, the refusal to register under Section 2(d) of
the Lanham Act is affirmed.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges
Trademark Trial & Appeal Board
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