Calzificio FAP S.p.A.

Trademark Trial and Appeal Board

May 30, 2003

No. 75866321 (T.T.A.B. May. 30, 2003)

Mailed: May 30,2003
Paper No.14
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Calzificio FAP S.p.A.
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Serial No. 75/866,321
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James V. Costigan and Kathleen A. Costigan of Hedman & Costigan,
P.C. for Calzificio FAP S.p.A.
Michael L. Engel, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Calzificio FAP S.p.A. has filed an application to
register the mark "BELLISSIMA BY CALZIFICIO FAP" and design, as
shown below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/866,321
2
for "stockings."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "BELLISSIMO" and design, which is registered, as reproduced
below,
for "children's dresses,"2 as to be likely to cause confusion, or
mistake or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
1 Ser. No. 75/866,321, filed on December 7, 1999, which is based on
Italian Reg. No. 760,688, dated September 22, 1998. While the term
"FAP" is fanciful and has no translation, the English translation of
the word "BELLISSIMA" is "very fine" and that of the word "CALZIFICIO"
is "hosiery factory."
2 Reg. No. 1,334,447, issued on May 7, 1985, which sets forth 1980 as
the date of first use of the mark anywhere and in commerce; combined
affidavit §§8 and 15. The English translation of the word
"BELLISSIMO" is "very beautiful."
Ser. No. 75/866,321
3
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.3
Turning first to consideration of the respective goods,
applicant asserts that its mark "will be applied to women's
stockings" while registrant's mark "will be applied to children's
dresses." According to applicant, "[t]he differences in the
actual goods, without any other factor, is enough to ... obviate
any possible confusion," given that "children's dresses are not
sold in the same venue as women's stockings."
It is well settled, however, that the issue of
likelihood of confusion must be determined on the basis of the
goods as they are set forth in the involved application and the
cited registration, and not in light of what such goods are
asserted to actually be. See, e.g., Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A.
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed.
Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Thus, where an applicant's and a registrant's goods are
broadly described as to their nature and type, it is presumed in
each instance that in scope the application and registration
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
Ser. No. 75/866,321
4
encompass not only all goods of the nature and type described
therein, but that the identified goods move in all channels of
trade which would be normal for those goods and that they would
be purchased by all potential buyers thereof. See, e.g., In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
The Examining Attorney, accurately observing that
applicant's goods are in fact broadly identified in its
application as "stockings," properly points out that, in view of
the above, applicant's and registrant's goods are indeed closely
related items of apparel for children. In particular, he
correctly notes that (underlining in original):
Like registrant's goods, the stockings
marketed by applicant would be worn by
children. Although applicant refers to its
goods as "women's stockings," it did not
limit the identification of goods to
stockings for women, so the identification of
goods must be construed to include stockings
for girls. The intended customers for
applicant's goods are the same as for
registrant's [goods], since adult women, a
substantial portion of which are mothers, are
the primary purchasers of both dresses for
children and stockings. ....
Accordingly, and inasmuch as applicant's stockings and
registrant's children's dresses additionally are products which
would be sold through the same channels of trade, such as the
girls' clothing or children's apparel sections of clothing
stores, department stores and mass merchandisers, it is plain
that confusion as to the source or sponsorship of the goods would
be likely if they are marketed under the same or substantially
similar marks.
Ser. No. 75/866,321
5
Turning, therefore, to consideration of the respective
marks, applicant argues among other things that "the distinctive
visual appearance" of its mark "will clearly distinguish it" from
registrant's mark.4 Specifically, applicant maintains that
visually, as well as aurally, "the terms BELLISSIMA BY CALZIFICIO
4 Applicant asserts, for the first time in its brief, that because
"[t]here is no evidence of wide spread use" of registrant's mark, such
mark cannot be considered famous and therefore entitled to a broad
scope of protection. However, the absence of evidence of use of
registrant's mark is not evidence of the absence of such use nor does
it show that registrant's mark is not famous. Instead, whether such
mark is famous is simply not a relevant du Pont factor in this appeal.
Applicant also contends, likewise for the first time in its
brief, that registrant's mark is weak, and therefore entitled only to
a narrow scope of protection, because "the words 'Bellissimo' and/or
'Bellissima' ... are used in [marks which are the subjects of] a
number of [third-party] registrations on a variety of goods." Aside
from the fact that any information pertaining to such registrations is
untimely at this juncture under Trademark Rule 2.142(d), the Board
does not take judicial notice of third-party registrations. See,
e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Moreover,
even if applicant had timely supported its contention with copies of
the various third-party registrations upon which it purports to rely,
such would not in any event constitute proof of actual use of the
registered marks and that the purchasing public, having become
conditioned to encountering certain products under marks which consist
of or include the terms "BELLISSIMA" or "BELLISSIMO," is therefore
able to distinguish the source thereof based upon differences in such
marks. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) and In re Hub Distributing,
Inc., 218 USPQ 284, 285-86 (TTAB 1983). Nevertheless, inasmuch as
applicant has specifically mentioned in its brief that a third-party
registration for the mark "'DOMINIC BELLISSIMO DB' was allowed over
the ... [cited] registration for 'BELLISSIMO' despite the fact that
both marks were applied to women's apparel and were independently
owned" (emphasis by applicant), and the Examining Attorney in his
brief has responded to applicant's argument that, because "the
differences between the marks was found to be sufficient to
distinguish between the two marks," the same result should occur in
this case, we have considered such. However, as the Examining
Attorney persuasively points out with respect to the mark in the
third-party registration, "the connotation of BELLISSIMO is quite
different in that mark because DOMINIC BELLISSIMO is the name of an
individual." Accordingly, we agree with the Examining Attorney that:
"The use of the term BELLISSIMO as a surname by one other party for
clothing goods hardly allows one to draw the conclusion that the term
is weak and deserving of [but] a limited scope of protection." Given,
however, the lack of proof with respect to any of the other marks
which are assertedly the subjects of third-party registrations, the
Ser. No. 75/866,321
6
FAP create a multi-word mark [which stands] in stark contrast to
the cited BELLISSIMO and design" mark. Applicant emphasizes, in
this regard, that its mark "contains a stylized printed
BELLISSIMA in a 'bridge' like design over the wording BY
CALZIFICIO FAP while the cited mark is the word BELLISSIMO, set
on an angle, in script, with a flower design." In view thereof,
and inasmuch as applicant's mark "when read or spoken is an
eleven syllable phrase" while registrant's mark "is a four
syllable word," applicant insists that contemporaneous use of the
respective marks is not likely to cause confusion.
Although the various differences noted by applicant are
readily apparent on the basis of a side-by-side comparison of the
respective marks, such a comparison is not the proper standard
for determining whether there is a likelihood of confusion. The
correct test, rather, is whether the marks at issue create
basically the same overall commercial impression. The reason for
utilizing such a test, as opposed to basing a decision on a side-
by-side comparison, is that the latter ordinarily is not the way
that customers will be exposed to the respective marks. Instead,
it is the similarity of the general overall commercial impression
engendered by the marks at issue which must determine, due to the
fallibility of memory and the concomitant lack of perfect recall,
whether confusion as to source or sponsorship is likely. The
proper emphasis is thus on the recollection of the average
purchaser, who normally retains only a general rather than a
specific impression of marks. See, e.g., Grandpa Pidgeon's of
number and nature of similar marks in use on similar goods is not a
Ser. No. 75/866,321
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Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574
(CCPA 1973); Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733
(TTAB 1981); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975).
With the foregoing in mind, we agree with the Examining
Attorney that, when considered in their entireties, the marks
"BELLISSIMA BY CALZIFICIO FAP" and design and "BELLISSIMO" and
design are so substantially similar that, when respectively used
in connection with such closely related goods as stockings and
children's dresses, confusion as to source or sponsorship would
be likely to occur. Applicant's mark, as the Examining Attorney
observes in his brief, is dominated by the term "BELLISSIMA" due
to the fact that such term appears in significantly larger
lettering, and hence is much more prominently displayed, than the
disproportionately smaller lettering used for the subordinate
terms "BY CALZIFICIO FAP," which while designating the source of
the "BELLISSIMA" brand of stockings is not likely to be readily
noticed by a harried shopper. Registrant's mark, as the
Examining Attorney further notes in his brief, similarly is
dominated by the term "BELLISIMO" since such term is not only
more prominently displayed than the accompanying flower design,
but it is the only literal element in the mark which serves as a
source indicator. As the Examining Attorney properly points out,
where, as here, a mark consists of a literal portion and a design
portion, it is generally the literal portion which is more likely
to be impressed upon a consumer's memory and to be used in
relevant du Pont factor in this appeal.
Ser. No. 75/866,321
8
calling for and/or asking about the goods. See In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
In view thereof, it is plain that applicant's
"BELLISSIMA BY CALZIFICIO FAP" and design mark and registrant's
"BELLISSIMO" and design mark are substantially similar in sound
and appearance, differing principally only in the vowel which
forms the final letter of the dominant terms "BELLISSIMA" and
"BELLISSIMO." To those consumers who may also be fluent in or
have some knowledge of Italian, the respective marks would also
be substantially similar in connotation, given that the dominant
term "BELLISSIMA" in applicant's mark means "very fine" while the
term "BELLISSIMO," which dominates registrant's mark, connotes
"very beautiful."5 Overall, in light of such similarities, the
marks at issue engender substantially the same commercial
impression, especially when allowance is made for the fallibility
of a consumer's memory with regard to the minor differences
between applicant's mark and registrant's mark.
Accordingly, we conclude that customers who are
familiar or acquainted with registrant's mark "BELLISSIMO" and
design for its "children's dresses" would be likely to believe,
upon encountering applicant's substantially similar mark
"BELLISSIMA BY CALZIFICIO FAP" and design for its "stockings,"
that such closely related goods emanate from, or are sponsored by
or associated with, the same source.
5 Additionally, to such consumers, the phrase "BY CALZIFICIO FAP" in
applicant's mark, which would be regarded as meaning "by FAP hosiery
factory," would have even less possible distinguishing significance
due to the descriptiveness of the term "CALZIFICIO."
Ser. No. 75/866,321
9
Decision: The refusal under Section 2(d) is affirmed.