Emilio Pucci Int. B.V.v.El Corte Ingles, S.A.

Trademark Trial and Appeal Board

Apr 1, 2010

No. 91169638 (T.T.A.B. Apr. 1, 2010)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: April 1, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Emilio Pucci Int. B.V.

v.

El Corte Ingles, S.A.
_______

Opposition No. 91169638
Opposition No. 91177724
_______

Linda K. McLeod and Naresh Kilaru of Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, for opposer.

Michael J. Striker, Esq. for applicant.
_______

Before Holtzman, Walsh, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

This consolidated proceeding concerns two applications
to register stylized marks comprising the words EMIDIO
TUCCI.
• Application No. 766247401 for the following mark:

1 Filed December 15, 2004, pursuant to Trademark Act § 44(e),
based on Spanish Reg. Nos. 1908876, 1908876, and 0855782, and
alleging a bona fide intent to use the mark in commerce. Both
Opposition No. 91169638
Opposition No. 91177724

2
for “perfumery, namely, perfume, toilet water, scented
water, cologne, essential oils for personal use; cosmetics,
namely, body, face and skin moisturizing creams and skin
lotions,” in International Class 3; and “clothing, namely,
hats, belts, stockings, socks and shoes,” in International
Class 25.
• Application No. 766247412 for the following mark:

for “leather handbags, imitation leather sold in bulk;
trunks for traveling; suitcases, billfolds, wallets,
briefcases, umbrellas, parasols, walking sticks, whips and
harness,” in International Class 18.
Opposer, Emilio Pucci Int. B.V., filed an opposition to
registration alleging (1) priority and a likelihood of
confusion with opposer’s previously used and registered
marks, pursuant to Trademark Act § 2(d); 15 U.S.C.
§ 1052(d); and (2) dilution pursuant to Trademark Act
§ 43(c); 15 U.S.C. § 1125(c).
By its answer, applicant denied the salient allegations
of the notices of opposition, and asserted as affirmative
defenses that its applications would be registrable if

subject applications include a statement that EMIDIO TUCCI “is
the name of a deceased individual.”
Opposition No. 91169638
Opposition No. 91177724

3
limited “to those products intended to be used by men only,”
Answer ¶ 16, and that the oppositions are barred by laches
and estoppel.3
We sustain the opposition.
I. Record
A. Evidence
Opposer proffered the following evidence during its
assigned trial periods:
• Testimony of Timothy S. Crout, Retail Director, Emilio
Pucci, Ltd., and accompanying exhibits;

• Opposer’s First Notice of Reliance on the following
four trademark registrations:

Mark Goods Reg. No. Filing Date
EMILIO PUCCI • Ladies' tailored apparel; namely, dresses,
scarves, lingerie, hats, bathing suits, skirts,
blouses, slacks. IC 25
1687909 10/26/1977
EMILIO PUCCI

• Leather goods; namely, ladies' handbags, tote
bags, wallets. IC 18
1689743 10/26/1977
• Footwear. IC 25 3029721 01/07/2003
EMILIO PUCCI • Perfumes and lotions. IC 3
• Eyeglasses and eyeglass cases. IC 9
• Jewelry and items made of precious metal,
namely, necklaces, bracelets. IC 14
3382298 01/07/2003

• Opposer’s Second Notice of Reliance on applicant’s
responses to certain interrogatories;

• Opposer’s Third Notice of Reliance on sample
advertisements featuring the EMILIO PUCCI mark;

2 Filed December 15, 2004, pursuant to Trademark Act § 44(e),
based on Spanish Reg. No. 2027132, and alleging a bona fide
intent to use the mark in commerce.
3 The defenses of laches and estoppel were neither tried nor
briefed, and we therefore consider them to be waived. See
Liberty & Co., Ltd. v. Liberty Trouser Co., Inc., 216 USPQ 66,
n.9 (TTAB 1982).
Opposition No. 91169638
Opposition No. 91177724

4

• Opposer’s Fourth Notice of Reliance on printed
publications;

• Opposer’s Fifth Notice of Reliance on excerpts from a
book titled Emilio Pucci; and

• Opposer’s Rebuttal Notice of Reliance on applicant’s
response to one interrogatory.

During its assigned trial period, applicant proffered the
following evidence:
• Testimony of Deanna Littell, and accompanying exhibits;

• Testimony of Olga Fuchs, and accompanying exhibits;

• Applicant’s First Notice of Reliance on a New York Post
article;

• Applicant’s Second Notice of Reliance on a page of
Google search results; and

• Applicant’s Third Notice of Reliance on a Wikipedia
entry for the term “El Corte Ingles.”

B. Evidentiary Objections
Opposer raised numerous objections during the testimony
of applicant’s witnesses, Ms. Fuchs and Ms. Littell.
Following the introduction of the transcripts, opposer filed
motions to strike the testimony of both witnesses. Ruling
on the motions was deferred until final decision. In
addition to its motion to strike, opposer objected in its
brief and moved to strike all three of applicant’s notices
of reliance.
1. Applicant’s Testimony
Applicant’s witness, Olga Fuchs, identified herself as
Opposition No. 91169638
Opposition No. 91177724

5
an office manager in the law firm of applicant’s counsel.
Fuchs Test. at 16. In connection with this proceeding, she
visited three stores selling goods branded with opposer’s
EMILIO PUCCI marks, two stores run by opposer, and a
Bergdorf Goodman department store. Id. at 4. Ms. Fuchs
testified that goods branded with opposer’s marks were “very
expensive,” id. at 9, 13, that opposer’s stores were in the
same general area as other “high-end stores,” id. at 5, and
that the only men’s items she found in the stores were
neckties, id. at 6, 10.
Opposer objects to all of Ms. Fuchs’ testimony as
irrelevant under Fed. R. Evid. 402. Applicant argues that
the testimony is relevant as it “relates to the type of
product sold by the Opposer; where the products are sold,
and the prices of the products offered for sale.” App. Br.
at 8. We largely agree with opposer.
In considering whether confusion is likely between the
mark in an application and that in a prior registration, it
is well-settled that we are limited to consideration of the
marks vis-à-vis the goods and services set out in the
application and registration, without importing any
extraneous limitations:
[W]here the goods in a cited registration are
broadly described and there are no limitations in
the identification of goods as to their nature,
type, channels of trade or classes of purchasers,
it is presumed that the scope of the registration
Opposition No. 91169638
Opposition No. 91177724

6
encompasses all goods of the nature and type
described, that the identified goods move in all
channels of trade that would be normal for such
goods, and that the goods would be purchased by
all potential customers.

In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart
Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
Here, the goods in opposer’s registrations are not
limited to expensive items or to goods sold only in “high-
end” stores or to wealthy customers. Moreover (with the
exception of the goods in opposer’s 1687909 Registration,
and “ladies’ handbags” in the 1689743 Registration), the
goods in opposer’s registrations are not limited to those
intended only for women. On the contrary, we must consider
the goods covered by opposer’s registrations to include both
expensive and inexpensive goods, sold in all channels of
trade customary for such items, and – unless otherwise
limited – sold for use by both men and women. Ms. Fuchs’
testimony (and that of Ms. Littell) alleging that that the
goods covered by opposer’s registrations are more limited in
reality cannot alter the required construction of the scope
of opposer’s registrations, and is indeed irrelevant.
Nonetheless, we note that opposer presented evidence of
use of its marks on several goods not covered by its
registrations. See infra. The authorities cited above
requiring broad construction of goods or services recited in
a registration do not apply to common-law rights which are
Opposition No. 91169638
Opposition No. 91177724

7
alleged to bar registration. Instead, we consider what
goods opposer actually uses its marks on, and the associated
channels of trade and classes of consumers. See, e.g.,
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB
2009) (where petitioner did not own a registration, he “must
show that he made common-law use of his ... mark in
connection with his alleged services”). To the extent Ms.
Fuchs’ (and Ms. Littell’s) testimony sheds light on any of
opposer’s goods, channels of trade, and classes of consumers
not covered by opposer’s registrations, it is not
irrelevant, and we will consider it accordingly.
Through Ms. Fuchs’ testimony, applicant also identified
and introduced applicant’s exhibits 4 and 5, pages from the
EMIDIO TUCCI and El Corte Ingles websites, respectively.
Opposer moved to strike the latter exhibit as irrelevant,
because applicant’s goods are not sold in the United States.
See Opp. Rebuttal Not. of Reliance (applicant’s objection to
opposer’s interrogatory regarding use on the ground that
“Applicant does not currently sell its products in the
United States.”). Applicant does not respond to opposer’s
motion to strike this exhibit or otherwise explain the
relevance of it. As opposer notes, this Spanish-language
web page does not reflect use of applicant’s mark in the
United States. But more importantly, just as the goods in
opposer’s registrations must be considered based on the
Opposition No. 91169638
Opposition No. 91177724

8
broad identification, the same is true of the goods
identified in the subject applications. E.g., In re La
Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008). To the
extent that applicant seeks by this evidence to narrow our
consideration of its identified goods to those sold at
particular price points, in particular channels of trade or
to particular consumers, we cannot consider it for that
purpose. Because this evidence was properly introduced, we
deny opposer’s motion to strike, although we find that the
evidence is entitled to little or no weight.
It appears that applicant’s other witness, Deanna
Littell, was presented as both an expert witness and as a
fact witness. Like Ms. Fuchs, Ms. Littell visited two of
opposer’s stores in New York City, and Barney’s New York,
which sells opposer’s goods. Like Ms. Fuchs, Ms. Littell
testified as to what she saw as the high price of opposer’s
branded products she found. E.g. Littell Test. at 25.
Applicant also offered Ms. Littell’s testimony as an expert
on the nature of opposer’s goods (particularly the
distinctive patterns often used on opposer’s clothing), id.
at 33-35, and on the purported absence of any confusion
between opposer’s marks and a third party's GUCCI marks
which are alleged to be used in the same market, id. at 35-
36. Ms. Littell also testified that EMILIO PUCCI is “very”
well-known and a “famous” brand. Id. at 75. Opposer moves
Opposition No. 91169638
Opposition No. 91177724

9
to strike Ms. Littell’s testimony, arguing that she does not
qualify as an expert, and that her testimony is irrelevant.
In response, applicant argues that Ms. Littell’s
qualifications “are imposing and surely qualify her as an
expert in the field of fashion.” App. Br. at 5
Ms. Littell testified that she is an expert in consumer
behavior. Littell Test. at 45. We agree with opposer,
however, that Ms. Littell’s testimony did not establish that
she is an expert in that field. She testified that she does
not have an educational background in consumer behavior, id.
at 54-55, that she does not read scholarly journals in the
field, id. at 49, or attend conferences with academics in
the field, id. at 50. Her curriculum vitae does not
indicate that she has published any books or articles in the
field of consumer behavior (or on any other topic), or
presented lectures in the field. Littell Test. exh. 3.
To be sure, consumer behavior is certainly part of the
fashion world in which Ms. Littell has spent a long and
impressive career. But qualifying as an expert in consumer
behavior requires more than the inference of general
knowledge by long practice in the related fields of apparel
design and retail sales. A witness presented as an expert
must demonstrate on the record that she is qualified to
offer opinion testimony “by knowledge, skill, experience,
training, or education....” Fed. R. Evid. 702. Here, the
Opposition No. 91169638
Opposition No. 91177724

10
record indicates that Ms. Littell has no specific training
or education in the field of consumer behavior. While she
has spent many years in the apparel industry, that
experience and training appears to have been focused on
apparel design and prediction of fashion trends, rather than
the observation and analysis of consumer behavior. Finally,
she has exhibited no professional skill in the field, having
no publications or presentations on the subject to her
credit, nor has she been qualified to testify as an expert
in other cases.
On the other hand, the record does detail Ms. Littell’s
work in the fashion industry spanning more than forty years
at a number of firms on two continents. She appears to be
well-aware of the various design houses in the apparel
market, and knowledgeable as to their impact in that market.
Thus, while she does not qualify as an expert in consumer
behavior, we cannot so easily dismiss her testimony as to
opposer’s reputation in the industry. As noted above, she
testified that EMILIO PUCCI is “a very famous brand.”
Littell Test. at 43, 75. At least to that extent, her
testimony appears to be both reliable and directly relevant
to the question of likelihood of confusion. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(Fed. Cir. 1973) (fame of prior mark). Although it does not
appear that Ms. Littell has any scientific foundation for
Opposition No. 91169638
Opposition No. 91177724

11
her testimony (e.g., a trademark survey), we will consider
her testimony as that of an experienced individual in the
field of apparel, and accord it appropriate probative value.
In any event, whether Ms. Littell is qualified as an
expert or not, we find most of her testimony to be of little
relevance. Applicant largely introduces Ms. Littell’s
testimony in an attempt to narrow our consideration of
opposer’s goods to expensive items, sold in exclusive
stores, to discriminating clientele. At least to the extent
it relates to the goods in opposer’s registrations, it is
irrelevant for the reasons discussed in connection with Ms.
Fuchs’ testimony. Likewise, Ms. Littell’s testimony
regarding the “distinctive” fabric designs actually used on
opposer’s goods appears to have little or no relevance.
Opposer’s registrations are not limited to goods featuring
any particular print, and must be construed to include those
bearing any fabric design or no design at all.4
Lastly, Ms. Littell was asked on direct examination:
Q. In your career including to date,
have you ever heard of any instance
of any confusion between the
trademarks Gucci and Pucci?

A. Never.

4 We therefore find it unnecessary to determine whether Ms.
Littell is qualified as an expert in the design of prints. See
Littell Test. at 44.
Opposition No. 91169638
Opposition No. 91177724

12
Littell Test. at 36. Opposer objected on the basis of
relevance and lack of foundation, and renews those
objections in its motion to strike.
We again agree with opposer that this testimony has
very limited, if any, relevance, and no foundation. The
central issue in this case is whether there is a likelihood
of confusion between the marks in the subject applications
and opposer’s registered and previously used marks, not
whether there is actual confusion between opposer’s marks
and those of a third party. Cf. AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403; 177 USPQ 268, 269 (CCPA 1973)
(even the registration of other, arguably confusing marks
does not give applicant the right to register another
confusing mark). While “[t]he number and nature of similar
marks in use on similar goods” is a factor to be considered,
see du Pont, 177 USPQ at 567, there is absolutely no
evidence in this record as to what GUCCI marks are in use,
for what goods, or the length and extent of any such use.
Moreover, the testimony quoted has little relevance because
Ms. Littell was asked about confusion between “Gucci” and
“Pucci.” The marks asserted by opposer comprise the wording
EMILIO PUCCI, not “Pucci.” In short, even if we considered
this testimony at face value, the absence of any actual
confusion between GUCCI and PUCCI sheds no light on whether
Opposition No. 91169638
Opposition No. 91177724

13
there is a likelihood of confusion between EMILIO PUCCI and
EMIDIO TUCCI.
Accordingly, while we deny opposer’s motion to strike
Ms. Littell’s testimony in its entirety, we give most of it
little or no weight.
2. Applicant’s Notices of Reliance
Opposer further moves to strike all three of
applicant’s notices of reliance. Opp. Br. at 4-7. In its
brief, “Applicant concedes that [its second and third
notices of reliance] should not be considered.” App. Br. at
4. We accordingly grant opposer’s motion to strike them.
By its first notice of reliance, applicant seeks to
introduce an article from the New York Post newspaper.
According to applicant, “[t]he article is relevant because
it represents a [sic] instance of a major publication in
which Pucci is referred to among a group of high end
expensive products which are generally purchased by the very
wealthy for purposes including snob appeal.” App. First
Not. of Rel. For the reasons discussed above, this article
cannot be used to narrow the scope of the goods, potential
purchasers, or channels of trade in opposer’s registrations.
Nonetheless, similar to the publications introduced with
opposer’s fourth notice of reliance, the New York Post
article does demonstrate wide exposure of the public to
Opposition No. 91169638
Opposition No. 91177724

14
opposer’s brand.5 Because it is not irrelevant, we will
consider this evidence to the extent indicated.
C. Opposer’s Registrations
As noted, opposer introduced evidence of four
registrations under a notice of reliance. Three of the
registrations were pleaded in the notice of opposition. The
fourth registration, No. 1689743, was not pleaded as a basis
for the opposition. None of the registrations was evidenced
by “a copy ... of the registration prepared and issued by
the Patent and Trademark Office showing both the current
status of and current title to the registration.” Trademark
Rule 2.122(d)(2). We further note that this proceeding
commenced prior to August 31, 2007, the effective date of
the amendment to Trademark Rule 2.122 permitting
introduction of such evidence by way of printouts from the
USPTO’s public electronic databases. See generally,
Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1928
(TTAB 2009).
However, applicant raised no objection to the admission

5 As alluded to by applicant, the author of the article appears
to take a somewhat dim view of opposer’s customers. But as
applicant recognizes, App. Br. at 9, the article is not
admissible for the truth of the matters asserted therein. 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007).
Regardless of the author’s opinion, evidence of the renown of the
prior user’s mark is relevant because the more well-known the
mark, the more likely it is that consumers will be confused by
similar marks used in connection with related goods. See
discussion of fame infra. The salient issue is how well-known
Opposition No. 91169638
Opposition No. 91177724

15
of opposer’s registrations to “show ... that opposer ...
owns valid and subsisting prior registrations for the ...
marks, which are confusingly similar to the EMIDIO TUCCI
mark in the opposed application, and which cover goods that
are identical and closely related to the goods identified in
the opposed application.” Opp. First Not. of Rel. at 2.
The registrations were also discussed in opposer’s opening
brief without comment by applicant. We accordingly find
that the issue of likelihood of confusion with respect to
the ‘743 Registration was tried by implied consent, and that
any objection to the admissibility of opposer’s evidence of
all four registrations under a notice of reliance was
waived. Fed. R. Civ. P. 15(b)(2); Time Warner Entm’t Co. v.
Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002).
II. Discussion
A. Standing and Priority
“Applicant concedes that Opposer has priority of use
and that it is the owner of the pleaded registrations.”
App. Br. at 3. Opposer’s registrations clearly establish
opposer’s standing to oppose registration of applicant’s
marks. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

the prior mark is, not whether opinions of the product, its
source, or its consumers are favorable or unfavorable.
Opposition No. 91169638
Opposition No. 91177724

16
Moreover, because opposer’s pleaded registrations are
of record, priority is not an issue with respect to the
goods set out therein. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In
addition to its pleaded registrations, opposer also
submitted evidence of its prior use of the EMILIO PUCCI mark
on goods not covered by its registrations, including
aftershave, men’s and women’s hats, stockings, satchels and
mail bags for men, travel bags, briefcases, and umbrellas.
See generally, Crout Test. at 17-50, exh. 3–4, 6-9; see Otto
Roth & Co. v. Univ. Foods Corp., 640 F.2d 1317, 209 USPQ 40,
43 (CCPA 1981). We further find opposer’s common-law marks
to be distinctive. Brooks v. Creative Arts By Calloway LLC,
93 USPQ2d 1823, 1830 (TTAB 2010), appeal docketed, No. 09-
10488 (S.D.N.Y. Dec. 28, 2009) (unregistered personal name
mark pleaded by opposer deemed inherently distinctive).
Accordingly, we find that opposer has priority with
respect to the goods recited in its registrations of record
and various other goods on which it uses its mark.
B. Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See du Pont, 177 USPQ 563; see also Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Opposition No. 91169638
Opposition No. 91177724

17
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence
of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
1. The Fame of the Prior Mark – Sales,
Advertising, Length of Use

We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s marks. Fame, when established, is
entitled to great weight in a likelihood of confusion
analysis. See Bose Corp. v. QSC Audio Prod. Inc., 293 F.3d
1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton,
214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); Kenner Parker
Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
Opposition No. 91169638
Opposition No. 91177724

18
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp., 63 USPQ2d at 1305.
Mr. Crout testified that opposer’s business was founded
by Emilio Pucci in Italy in 1947, and that it has been using
the EMILIO PUCCI trademarks since at least the 1950’s.
Crout Test. at 90-91. Opposer’s marks were used in the
United States as early as 1962, see Opp. Third Not. of Rel.,
Charleston Sunday Gazette-Mail (Jul. 8, 1962), and it
appears clear that at least by the late 1960’s, EMILIO PUCCI
was a well-established brand in this country. Celebrities
who were known to wear EMILIO PUCCI apparel include Marilyn
Monroe, Jackie Kennedy, Isabella Rossellini, Madonna, Nicole
Kidman, Jennifer Lopez, Kylie Minogue, and Elizabeth Hurley.
Id. at 89. Mr. Pucci was also known for having designed
uniforms for Braniff Airlines, the mission patch for NASA’s
Apollo 15 mission to the moon, the interior of the Lincoln
Continental automobile, and some furniture. Id. at 91-92.
EMILIO PUCCI branded products are currently sold in the
United States through several channels: directly to the
public in company-owned retail stores, via wholesale sales
by opposer to department stores such as Neiman Marcus, Saks,
Opposition No. 91169638
Opposition No. 91177724

19
Bergdorf Goodman, and Barneys New York, sales directly to
the public by licensees, id. at 11-17, and direct sales via
the Internet, id. at 53-54.
The record further evidences opposer’s promotional
efforts in the United States spanning the past 48 years,
including a number of representative print advertisements in
publications of general circulation, Opp. Third Not. of
Rel., catalogues, Crout Test. exh. 15-16 direct mail, id. at
61, 75, 79, exh. 16, and shopping center guides, id. at 61.
Opposer also conducts “events,” such as large shows, dinners
and brunches to promote its products and brand. Id. at 68,
83. Opposer also submitted extensive evidence of its
unsolicited mention in U.S. publications. Opp. Fourth Not.
of Rel. Such publications include newspapers and magazines
of general circulation, as well as fashion-oriented
periodicals, such as Women’s Wear Daily.
Opposer submitted evidence6 of its retail and wholesale
sales under the mark for calendar years 2003 – 2007 (YTD).
Crout Test. exh. 3, 8. While opposer’s sales figures are
not as large as some we have found to be famous, they are
nonetheless quite substantial, indicating significant sales
in the United States. Similarly, opposer itself spends a
significant amount on advertising in the United States,

6 Because evidence of opposer’s sales and advertising
expenditures were submitted under seal, we refer to them only in
general terms.
Opposition No. 91169638
Opposition No. 91177724

20
independent of any promotional efforts by its department
store customers and licensees.
Finally, as discussed above, applicant’s own witness
testified on the basis of her many years in the apparel
industry that opposer’s EMILIO PUCCI brand is “very” well-
known and is “famous.” While Ms. Littell’s opinion on
opposer’s fame is not necessarily dispositive,7 we give it
significant weight, particularly in light of the other
evidence of the renown of opposer’s marks.
Applicant, noting the “expensive” items its witnesses
found in opposer’s stores, argues that “the alleged fame of
the Emilio Pucci product is directed to a small group of
upper crust super rich people (generally sophisticated
purchasers). There is no testimony that would support any
knowledge of the Emilio Pucci product by the average Joe on
the Street.” App. Br. at 14. We disagree.

7 Although it is not entirely clear, applicant may have elicited
this testimony in the belief that opposer’s fame is a factor
which diminishes any likelihood of confusion (i.e., because
opposer’s brand is so well-known that purchasers would easily
distinguish it from others). This argument has been squarely
rejected by the Court of Appeals for the Federal Circuit:
While scholars might debate as a factual proposition
whether fame heightens or dulls the public’s awareness of
variances in marks, the legal proposition is beyond
debate. The driving designs and origins of the Lanham
Act demand the standard consistently applied by this
court – namely, more protection against confusion for
famous marks.
Kenner Parker Toys, 22 USPQ2d at 1456. In other words, as a
matter of law, no mark is too famous to be confused. To the
contrary, the more well-known the prior user’s mark, the easier
it will be to find a likelihood of confusion in the balancing of
the du Pont factors.
Opposition No. 91169638
Opposition No. 91177724

21
Contrary to applicant’s argument, opposer’s evidence of
long use, advertising, and extensive mention in the general
press makes it clear that “the average Joe on the street”
has indeed been exposed to opposer’s brand. Moreover,
applicant’s premise, that the cost of opposer’s goods limits
its fame to those who can afford them, App. Br. at 13, is
faulty. By way of analogy, it could hardly be denied that
ROLLS-ROYCE is a very well-known brand of automobile,
although only a small fraction of the population can
actually afford to purchase one. Likewise, even if it were
shown that the cost of opposer’s goods places them out of
the reach of the ordinary consumer, that fact alone does not
mean that opposer’s marks can not enjoy significant fame or
renown for trademark purposes. In reality, a brand’s renown
may easily exceed the group of consumers who are immediately
able and willing to purchase the goods. The Trademark Act
protects marks even in this larger group because both
consumer confusion and harm to business reputation can
result from the sale of cheaper goods under a similar mark,
and because socioeconomic classes are not static.
Based on the record in this proceeding (including the
testimony of applicant’s witness), we conclude that
opposer’s mark enjoys (at least) substantial renown with
respect to apparel and accessories. And although applicant

Opposition No. 91169638
Opposition No. 91177724

22
argues that such fame is limited to “upper crust super rich
people,” opposer’s evidence of mainstream advertising and
unsolicited mainstream media attention clearly demonstrates
otherwise.
This factor favors a finding of likelihood of
confusion.
2. The Similarity or Dissimilarity and Nature of
the Goods

As argued by opposer, Opp. Br. at 30-31, many of the
parties’ goods are identical or very closely related. A
comparison of applicant’s identified goods with opposer’s
most similar goods in tabular form is useful:8
App. No. Applicant’s Goods Opposer’s Goods Reg. No. / Testimony
76624740 Perfumery, namely,
perfume, toilet water,
scented water, cologne
Perfumes 3382298
76624740 Essential oils for personal
use; cosmetics, namely,
body, face and skin
moisturizing creams and
skin lotions
Lotions

Aftershave
3382298

Crout Test. at 31
76624740 Clothing, namely, hats Ladies’ tailored apparel;
namely ... hats.

Hats (men’s and women’s)
1687909

Crout Test. at 21-22, exh. 3
76624740 Belts Belts Crout Test. at 23-24
76624740 Stockings, socks Ladies’ tailored apparel;
namely ... lingerie

Stockings
1687909

Crout Test. at 22-23
76624740 Shoes Footwear 3029721
76624741 Leather handbags Ladies’ handbags

Satchels, mail bags for men
1689743

Crout Test. at 24-25, exh. 3
76624741 Imitation leather sold in
bulk
--- ---

8 Opposer’s evidence indicates use of its mark on a number of
goods, many of which are also covered by its registrations.
Where evidence indicates that particular goods are covered by
both use and a registration, for the sake of brevity, only the
registration has been noted. (Goods in use are noted in italics;
goods in opposer’s registrations are in Roman type.)
Opposition No. 91169638
Opposition No. 91177724

23
App. No. Applicant’s Goods Opposer’s Goods Reg. No. / Testimony
76624741 Trunks for traveling;
suitcases
Travel bags (“either rolling or
duffel-size”)
Crout Test. at 29
76624741 Billfolds, wallets Wallets 1689743
76624741 Briefcases Briefcases Crout Test. at 28-29, exh. 3
76624741 Umbrellas, parasols Umbrellas Crout Test. at 23, exh. 3
76624741 Walking sticks, whips and
harness
--- ---

Although applicant contends that “any overlap in goods
is extremely limited to hats and shoes,” App. Br. at 10, it
is quite clear that in fact most of applicant’s goods are
identical to goods covered by opposer’s registrations or use
under the mark. Indeed, only applicant’s identified
“essential oils for personal use,” “imitation leather sold
in bulk,” and “walking sticks, whips, and harness[es]” are
not matched by a legally identical or very closely related
item of opposer’s. And as to those items, the fact that
some of the goods may not be related is irrelevant. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion
must be found if there is likely to be confusion with
respect to any item that comes within the identification of
goods or services in the application).
We find that applicant’s goods are largely identical or
very closely related to opposer’s. This factor favors a
finding of a likelihood of confusion.
Opposition No. 91169638
Opposition No. 91177724

24
3. Trade Channels and Classes of Consumers;
Sophistication of Consumers

[W]here the goods in a cited registration are
broadly described and there are no limitations in
the identification of goods as to their nature,
type, channels of trade or classes of purchasers,
it is presumed that the scope of the registration
encompasses all goods of the nature and type
described, that the identified goods move in all
channels of trade that would be normal for such
goods, and that the goods would be purchased by
all potential customers.

In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart
Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
Further, to the extent that opposer’s goods are legally
identical to those in the subject application, we must
likewise assume that the purchasers and channels of trade
are also identical for such goods. Genesco Inc. v. Martz,
66 USPQ2d 1260, 1268 (TTAB 2003); In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
Applicant suggests that opposers’ customers “are
sophisticated purchasers who will exercise a high degree of
care in any purchase.” App. Br. at 10. Applicant’s
argument appears to be based largely on its contention that
opposer’s goods are extremely expensive. But as noted
above, the goods in opposer’s registrations are ordinary
items of apparel and accessories, and are not limited –
Opposition No. 91169638
Opposition No. 91177724

25
either explicitly or by their nature – to particularly
expensive items. We must therefore construe them to include
all such items, sold to all of the usual purchasers for
them, regardless of the actual retail price of opposer’s
goods.
In the case of apparel and related accessories, the
class of potential consumers is particularly large,
essentially including all adults. There is no evidence in
this record to suggest that this group is particularly
sophisticated or that they exercise unusual care in
decisions to purchase the type of goods at issue here.9
Moreover, to the extent that the price of opposer’s
goods is cognizable (i.e., as to goods not covered by
opposer’s registrations), the mere fact that goods are
expensive does not mean that their purchasers are
sophisticated or immune from source confusion. See In re
Wilson, 57 USPQ2d 1863, 1865-66 (TTAB 2001) (where marks are
very similar and goods related, confusion may be likely even
among sophisticated purchasers); In re Decombe, 9 USPQ2d
1812, 1814-1815 (TTAB 1988) (“Being knowledgeable and/or

9 The cases cited by applicant for the contrary proposition,
Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 217 USPQ 658
(2d Cir. 1983); A&H Sportswear Co. v. Victoria’s Secret Stores,
Inc., 57 F. Supp. 2d 155; 52 USPQ2d 1143 (E.D. Pa. 1999);
Jordache Enter. Inc. v. Hogg Wyld, Ltd., 625 F. Supp. 48, 227
USPQ 794 (D.N.M. 1985), are inapposite. All three are
infringement cases, not cases involving the construction of goods
in a registration and application for purposes of determining
registrability.
Opposition No. 91169638
Opposition No. 91177724

26
sophisticated in a particular field does not necessarily
endow one with knowledge and sophistication in connection
with the use of trademarks.”). But even if it is assumed
that customers for some of opposer’s goods exercise care in
making purchasing decisions, such care “does not necessarily
impose on that class the responsibility of distinguishing
between similar trademarks for similar goods.” In re
Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986).
We find that the parties’ potential customers and
channels of trade are largely identical, and that this
factor favors a finding of a likelihood of confusion.
Further, we find that the potential purchasers of opposer’s
and applicant’s goods are generally not sophisticated, and
exercise no more than ordinary care in purchasing decisions.
4. The Similarity or Dissimilarity of the Marks
in their Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
Opposition No. 91169638
Opposition No. 91177724

27
respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). In
comparing the marks, we keep in mind that “[w]hen marks
would appear on virtually identical goods..., as is the case
here, the degree of similarity necessary to support a
conclusion of likely confusion declines.” In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010), citing Century
21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant seeks to register two stylized versions of
the words EMIDIO TUCCI. Opposer has introduced evidence of
its registration and use of both stylized and standard
character versions of the wording EMILIO PUCCI. Opposer
argues that the marks are “strikingly similar,” Opp. Br. at
28-30, while applicant argues that the marks “sound
completely differently [sic] and look different to the eye,”
App. Br. at 15. We find the marks at issue to share
significant similarities.
Opposer aptly sums up the similarities in the structure
of the marks, pointing out that they
are identical except for two letters (i.e., EMILIO
PUCCI versus EMIDIO TUCCI) located in the
identical positions within the marks (i.e. the
fourth letter of the first word and the first
letter of the second word). The marks have the
identical number of letters and syllables and a
similar structure consisting of a four-syllable
word followed by a two-syllable word.

Opposition No. 91169638
Opposition No. 91177724

28
Opp. Br. at 28.10 In addition, the marks sound similar and
rhyme. Id. at 29.
The marks also have a similar connotation. Both are
Italian-sounding personal names and the stylized versions of
both appear to be signatures. The overall impression of the
marks is that the goods sold under each of them were
designed by, or received the personal approval of the person
named in the mark.
We also consider the marks to be similar in appearance.
Although applicant seeks registration of its marks in
stylized form, three of opposer’s registrations (the ‘909,
‘743, and ‘298 Registrations) are registered in standard
characters. With respect to the goods in those
registrations, we must consider that opposer’s mark could be
used in any stylization, including one similar to that used
by applicant. Phillips Petroleum Co. v. C.J. Webb, Inc. 442
F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) (a mark registered in
standard character or typed form is not limited to being
depicted in any particular manner of display).
Applicant argues that consumers can distinguish the
marks by the different letters used. See App. Br. at 15.

10 While our ultimate focus remains on the marks in their
entireties, it is not inappropriate to consider and analyze the
components of them. “[I]t is these individual aspects that
collectively create a difference in the overall impressions made
by the marks.” Odom’s Tenn. Pride Sausage, Inc. v. FF
Acquisition, LLC, No. 09-1473 , __ F.2d __, 93 USPQ2d 2030, 2032
(Fed. Cir. 2010).
Opposition No. 91169638
Opposition No. 91177724

29
We acknowledge, of course, that the marks are not identical,
and that they can be distinguished when critically viewed or
carefully pronounced together. However, we cannot assume
that potential purchasers will be able to make an unhurried,
side-by-side comparison of the marks. See Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corp., 206 USPQ 255, 259 (TTAB 1980). Rather, “the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks.” Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
We conclude that, considering the marks in their
entireties, applicant’s marks bear strong similarities to
opposer’s pleaded marks. While there are differences in the
marks, the similarities clearly outweigh those differences,
particularly in light of their use on identical and closely
related goods, and in light of the renown of opposer’s
marks. See Kenner Parker Toys, 22 USPQ2d at 1456 (“A strong
mark ... casts a long shadow which competitors must
avoid.”).
This factor weighs in favor of a finding of a
likelihood of confusion.
6. Balancing the Factors
We have carefully considered all of the parties’
evidence and argument, including that which we have not
Opposition No. 91169638
Opposition No. 91177724

30
specifically discussed. We find that opposer enjoys
significant renown in its pleaded marks, that most of the
parties’ respective goods are identical or closely related,
and that the channels of trade and classes of consumer are
largely identical. We further find that the parties’ marks
share significant similarities. We therefore conclude that
applicant’s registration of its EMIDIO TUCCI marks for the
identified goods is likely cause confusion with opposer’s
registered and previously used EMILIO PUCCI marks.
7. Defense – Restriction to Men’s Goods
As an affirmative defense, applicant pleaded in its
answer “that it proposes to amend the Listing of Goods in
[the subject application] to those products intended to be
used by men only.”11 Answer ¶ 16. Applicant’s brief makes
scant mention of its defense – the only substantive argument
is as follows:
Opposer now argues that with respect to clothing,
a differentiation between use by men or women is
not meaningful.

However, most of Applicant’s goods are not items
of clothing. It is believed that no such
amendment should be required in order to obtain
registration. Nevertheless, it is an option for
the Board should it decide to do so.

App. Br. at 16.

11 Opposer sought to strike this defense as improper, incomplete
and indefinite, and as insufficient to avoid a likelihood of
confusion. By order dated August 22, 2006, the Board denied
opposer’s motion to strike.
Opposition No. 91169638
Opposition No. 91177724

31
We construe applicant’s defense as an argument in the
alternative that – in the event the Board finds a likelihood
of confusion with respect to the goods in the applications
as published – applicant is nonetheless entitled to
registration with the proffered restriction. See Trademark
Act § 18, 15 U.S.C. 1068; Trademark Rule 2.133(b); TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 311.02(b),
514.03 (2d ed. rev. 2004). As an affirmative defense,
applicant bears the burden of proving that its restrictive
amendment would avoid any confusion which would otherwise be
likely.
As set out above, it is clear that opposer’s
registrations and common-law use of its mark cover a number
of goods which are legally identical or very closely related
to the goods in the subject applications. With the
exception of the goods in opposer’s ‘909 Registration and
“ladies’ handbags” in its ‘743 Registration, the goods in
opposer’s registrations are not limited to those for use
only by women. In other words, they must be construed to
include such goods for use by men. Moreover, opposer’s
witness, Timothy Crout, testified that opposer uses its mark
on items such as aftershave for men, men’s hats, satchels
and mail bags for men, as well as briefcases and umbrellas,
suitable for use by both sexes. While most of opposer’s
goods are manufactured and sold for women, Mr. Crout
Opposition No. 91169638
Opposition No. 91177724

32
testified that a substantial percentage of opposer’s total
sales were attributable to the sale of men’s items. Crout
Test. at 34.
The fact that applicant’s witnesses testified that they
saw few of opposer’s products for men in the stores that
they visited, is of little significance with respect to the
goods not covered by opposer’s registrations.12 As Mr.
Crout testified, opposer sells products in its own stores,
through department stores, and through licensees. Crout
Test. at 11-17. Applicant’s witnesses visited only a
limited number of outlets; opposer’s two New York City
stores plus one department store each (Barneys New York and
Bergdorf Goodman) at about the same time. It is not clear
whether all of opposer’s retail outlets and department
stores carry the same merchandise, and whether all
merchandise is carried throughout the year. Further,
applicant’s witnesses did not offer any testimony as to
EMILIO PUCCI goods offered through opposer’s licensees or
over the Internet. Finally, opposer offered specific and

12 It is of no significance at all with respect to the goods which
are covered by opposer’s registrations. If applicant believed
that opposer’s registrations were broader than opposer is
entitled to, its remedy was to counterclaim for partial
cancellation under Trademark Act § 18. See Trademark Rule
2.106(b)(2)(ii) (“An attack on the validity of a registration
pleaded by an opposer will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such
registration.”). Absent such a counterclaim, we must consider
opposer’s registrations to be valid and to include all of the
goods listed therein. See Trademark Act § 7(b); 15 U.S.C.
§ 1057.
Opposition No. 91169638
Opposition No. 91177724

33
convincing testimony and evidence of its substantial sales
of men’s items. See generally, Crout Test. at 17-50, exh.
3–4, 6-9. Applicant’s contrary testimony based on a limited
investigation is insufficient to rebut opposer’s evidence on
this point.
In sum, applicant’s proposed amendment does nothing to
limit the goods set out in either opposer’s registrations or
the other goods on which opposer has established prior use
of its mark, both of which categories include items for use
by men.13 Accordingly, we find that applicant has not met
its burden to demonstrate that its proposed restriction
would avoid any likelihood of confusion.
E. Dilution
In light of our finding on the issue of likelihood of
confusion, we find it unnecessary to reach the issue of
dilution. See Miss Universe L.P. v. Cmty. Mktg. Inc., 82
USPQ2d 1562, 1572 (TTAB 2007).
III. Conclusion
In sum, we find that registration of applicant’s EMIDIO
TUCCI marks for the identified goods is likely to cause
confusion with opposer’s pleaded EMILIO PUCCI marks pursuant

13 We also note opposer’s arguments that men’s articles may be
substantially related to those for women, and that women
frequently buy men’s articles as gifts, and vice versa,
suggesting a finding that such goods are either related or that
their purchasers and channels of trade overlap. Because we find
an actual overlap in the goods themselves (even when limited to
men’s articles) we need not discuss these points in detail.
Opposition No. 91169638
Opposition No. 91177724

34
to Trademark Act § 2(d). Moreover, because we find that
opposer’s proffered amendment would not alleviate such
confusion, we decline to accept it. Lastly, we add that, to
the extent that any of the points raised by applicant raise
a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant.
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290-91 (Fed. Cir. 1984).

Decision: Both oppositions are SUSTAINED and registration
to applicant is refused in Application Nos. 76624740 and
76624741.