Fabiano's Sweet Shoppe, LLCv.Fabiano's Homemade Candies, Inc.

Trademark Trial and Appeal Board

Feb 24, 2005

No. 91151432 (T.T.A.B. Feb. 24, 2005)

Mailed: February 24, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Fabiano’s Sweet Shoppe, LLC
v.
Fabiano’s Homemade Candies, Inc.
_____

Opposition No. 91151432
to applicant Serial No. 76268054
filed on June 7, 2001
_____

Malcolm L. McKinnon of McKinnon & McKinnon for Fabiano’s
Sweet Shoppe, LLC.

James R. Duby, Jr. of Gallagher Duby, PLC for Fabiano’s
Homemade Candies, Inc.
_____

Before Hohein, Walters and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
Fabiano’s Homemade Candies, Inc. (a Michigan
corporation) filed an application on June 7, 2001, to
register the mark FABIANO’S on the Principal Register for
“homemade candies” in International Class 30. Applicant’s
claimed date of first use anywhere and first use in commerce
is May 31, 1984. Following a refusal to register under
Section 2(e)(4) of the Trademark Act on the basis that the
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91151432
2
mark is primarily merely a surname, applicant amended its
application to seek registration pursuant to Section 2(f) of
the Trademark Act, based on applicant’s declaration of over
17 years of its substantially exclusive and continuous use
of the mark in commerce.
In its pleading, opposer, Fabiano’s Sweet Shoppe, LLC
(a Michigan limited liability company), relies on common law
rights, asserting priority of use and likelihood of
confusion under Section 2(d) of the Act, 15 U.S.C. §1052(d).
More specifically, opposer alleges that it and its
predecessors in interest have used the name and mark
FABIANO’S in connection with retail store services featuring
ice cream, candy and confections continuously since a time
prior to applicant’s first use and well before applicant’s
filing date; that opposer has established valuable goodwill
in its name and mark through its substantial advertising and
promotional efforts; that opposer has achieved strong sales;
that opposer has received significant press and publicity;
that opposer’s name and mark became well known to consumers
before applicant’s alleged date of first use of its mark;
and that applicant’s mark, when used on applicant’s goods,
so resembles opposer’s name and mark as to be likely to
cause confusion or to cause mistake or to deceive as to the
source or sponsorship of the goods in question.
Opposition No. 91151432
3
The other grounds for opposition pleaded by opposer are
that the primary significance of the mark “FABIANO’S” to the
purchasing public is merely a surname;1 and that applicant’s
mark consists of a name identifying a particular living
individual, Jane Fabiano, who has not given her written
consent to applicant to register the name as a mark, but
instead has given written consent to opposer to use and
register the name as a mark.
In its answer, applicant denies each of the allegations
of the notice of opposition, and asserts the affirmative
defenses of estoppel, laches, acquiescence and unclean
hands.2 In addition, applicant asserts in its affirmative
defenses (paragraph 1) that opposer’s claims against
applicant are barred because opposer cannot establish
priority of use of the name FABIANO’S as opposer’s first use
is on or about April 3, 2000; that “confusing similarity
exists between Opposer’s name FABIANO’S and the Applicant’s
mark”; and that opposer’s junior use of the name FABIANO’S
on its goods is likely to cause confusion with applicant’s
use of its mark. Such allegations are not an “affirmative

1 In light of the fact that applicant seeks registration under
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), it is
presumed that opposer is contending that the mark has not
acquired distinctiveness as identifying applicant as the source
of the goods.
2 Applicant, however, neither submitted evidence during trial nor
argued in its brief about the affirmative defenses of estoppel,
laches, acquiescence and unclean hands. Therefore, those
defenses will not be further considered herein.
Opposition No. 91151432
4
defense,” but rather are in the nature of further denials of
opposer’s claim of priority.3
The record consists of the pleadings; the file of
applicant’s application; opposer’s testimony, with exhibits,
of (i) Kathleen Ghinelli, co-owner of opposer, (ii) Gina
Ghinelli-Mulcahy, co-owner of opposer, (iii) Jane Fabiano, a
co-founder of the original FABIANO’S HOMEMADE CANDIES store
and (iv) Paul Ghinelli, Jane Fabiano’s grandson, who opened
a store in 1997; and applicant’s testimony, with exhibits,
of Madeline Blair, president of applicant.
Both parties filed briefs on the case.4 Neither party
requested an oral hearing.

3 Applicant requested in the prayer for relief in its answer to
the notice of opposition that the Board refuse registration of
opposer’s pending application Serial No. 76330434 (filed October
26, 2001 for the mark FABIANO’S for “retail store services
featuring homemade ice cream, candy and confections”) on the
basis of likelihood of confusion. The Board has no jurisdiction
over opposer’s application which is currently in a suspended
status in Law Office 111. Thus, applicant’s request is denied.
4 Opposer’s brief was timely filed on March 11, 2004.
Applicant’s brief was timely filed on April 12, 2004 (via
certificate of Express Mail), indicating proof of service on
opposer’s attorney by first class mail on that date. Opposer’s
reply brief was due on April 27, 2004. See Trademark Rule
2.128(a)(1). On May 17, 2004 opposer filed a “Declaration
Regarding Untimely Receipt of [Applicant’s Brief]” in which
opposer’s attorney states that his office did not receive
applicant’s brief until May 3, 2004, which was a date after
opposer “could timely file a Reply Brief.” Opposer did not file
either a motion to allow opposer further time to file a reply
brief, or a reply brief with a motion that it be accepted. In
fact, opposer did not indicate in any way that it intended to
file a reply brief. Opposer did not make any request that the
Board take any action regarding opposer’s time to file a reply
brief. Thus, the Board has not done so.
Opposition No. 91151432
5
Family and Store History
This case is a family affair with two sides of the same
family asserting rights in the mark FABIANO’S for homemade
candies. Michael Fabiano worked for General Motors,
Oldsmobile division, but he and his wife Jane occasionally
operated a candy store for a few years at a time in the
1940s and 1950s. Then, in 1980 (after he retired from
General Motors), Michael and Jane Fabiano purchased
“Spagnuolo’s” candy company located in Lansing, Michigan,
and changed the name to FABIANO’S HOMEMADE CANDIES. Michael
and Jane Fabiano made and packaged their own candy. Their
family helped out over the years, including during busy
holiday seasons (e.g., Christmas, Valentine’s Day) and when
Michael Fabiano was ill. Michael and Jane Fabiano operated
the store until 1984 when they sold the business to their
daughters, Madeline Blair and Kathleen Ghinelli.
Specifically, the February 1984 bill of sale document shows
that for $24,000 sellers sold to the buyers “all the right,
title and interest of the Sellers in all of the inventory
and stock of merchandise, name, furniture, fixtures,
machinery, equipment (except dipping equipment) and goodwill
used in and pertaining to the business presently known as
FABIANO’S HOMEMADE CANDIES….” The daughters, as the buyers,
signed a promissory note that the $24,000 including 7%
annual interest would be paid at $250.00 per month
Opposition No. 91151432
6
commencing March 1, 1984. (Kathleen Ghinelli dep., Exh. 1;
see also, Madeline Blair dep., Exh. 1.) (These documents
from 1984 were prepared by Michael and Jane Fabiano’s
attorney.)
The sisters operated the store as a partnership
(without a written contract) until 1995 when, due to the
growth of the business, the sisters incorporated as
“Fabiano’s Homemade Candies, Inc.” (applicant) with 50% of
the stock issued to each of the two sisters, and each one
being an officer/director of the corporation. In that year
applicant opened a second store in Lansing, Michigan.
(Madeline Blair dep., Exh. 5.)5
On April 18, 2000, Kathleen Ghinelli sold all of her
shares (50% of the shares of applicant corporation) to her
nephew Steve Blair (Madeline’s son) for $50,350. By the
terms of the “Stock Sale Agreement,” Kathleen agreed to
immediately resign from her position as a director and
officer and terminate her status as a shareholder of the
corporation. The agreement states that “the sole purpose of
this agreement is to efficiently terminate the shareholder,
director, officer, and employment relationship between
[Kathleen Ghinelli and Fabiano’s Homemade Candies, Inc.].”

5 Also in 1995, the sisters, as a separate partnership (again
with no written contract), purchased a building, moved candy
making equipment there and began candy-making operations under
the name FABIANO’S CANDY KITCHEN. (Madeline Blair dep., pp. 27-
Opposition No. 91151432
7
This “Stock Sale Agreement” refers therein to a
“Partnership Interest Sale Agreement,” also dated April 18,
2000, between Fabiano’s Candy Kitchen (the second
partnership between the sisters) and Steve Blair and
Kathleen Ghinelli. By the terms of the “Partnership
Interest Sale Agreement,” Kathleen Ghinelli sold to Steve
Blair the entirety of her 50% interest in the partnership.
There were two addendums to this partnership sale agreement,
one of which provides, inter alia, that the partnership will
be considered dissolved as of January 1, 2000 and that both
Kathleen Ghinelli and Madeline Blair quitclaimed their
ownership interest in the real estate of Fabiano’s Candy
Kitchen partnership to Fabiano’s Candy Kitchen, LLC and they
assigned their interests in the partnership to Fabiano’s
Candy Kitchen, LLC. (Kathleen Ghinelli dep., pp. 19-23,
Exhs. 2 and 3, and Madeline Blair dep., pp. 35-38, Exhs. 8-
10.) Kathleen Ghinelli testified that she later acquired an
interest in opposer company in late 2000, a few months after
she sold her stock in applicant corporation to Steve Blair.
(Dep., p. 19.)
From mid 1996 to early 1997, Paul Ghinelli (Kathleen’s
son and Madeline’s nephew) worked as a candy cook for
applicant, Fabiano’s Homemade Candies, Inc. After
discussions with family members, including his grandparents,

28.) Kathleen Ghinelli later in 2000 sold her entire interest in
Opposition No. 91151432
8
his mother and his aunt (Madeline Blair), on February 10,
1997, Paul Ghinelli opened a store in Williamston, Michigan,
selling candy and ice cream under the name FABIANO’S
HOMEMADE CANDIES AND ICE CREAM.6 According to Paul
Ghinelli, he wanted to “get into the ice cream business,”
but there were no written agreements about his use of the
Fabiano name (dep., pp. 6-7). Applicant Fabiano’s Homemade
Candies, Inc., and his aunt, Madeline Blair, provided
assistance to him in opening his store (so that it could
open before Valentine’s Day) in particular, supplying him
with the candy and with candy boxes bearing applicant’s name
thereon. In addition, he testified that his store’s address
was included in applicant’s yellow pages telephone book
listings from 1997 through 2000 (Exhs. 5-8), as well as in
advertisements (Exh. 9). About four months after his store
opened, at his aunt’s request, he changed the name of his
store to FABIANO’S HOMEMADE ICE CREAM AND CHOCOLATES. (Dep.,
pp. 8-10.)
According to Madeline Blair, the family simply wanted
to help Paul generally and to help him get his store open by
Valentine’s Day without him having to establish credit.
Applicant was also attempting to control the use of the name

this partnership.
6 Kathleen Ghinelli testified that both she and her sister,
Madeline Blair, granted Paul permission to use the name
FABIANO’S. (Dep., pp. 14-15.)
Opposition No. 91151432
9
FABIANO’S, and it was for those reasons that applicant made
candy and ordered boxes for Paul Ghinelli. She specifically
Opposition No. 91151432
10
testified that she spoke with her nephew Paul Ghinelli about
opening a store in Williamston and told him it was a good
idea, but he did not indicate the name he would use; that he
later said his grandfather (Michael Fabiano) had said it was
ok to use the Fabiano name and that she felt she could do
nothing about it at that point; and that she tried to
control the nature and quality of the goods by providing him
with candy and packaging therefor, and advertisements.
(Dep., pp. 39-41).
On April 8, 2000, Paul Ghinelli executed a bill of sale
to Fabiano’s Sweet Shoppe, LLC (opposer) for the price of
$22,500 which reads, in relevant part, as follows:
“…all the seller’s rights, title, and
interests in the following property:

See attached list

This property is presently located on
the premises commonly known as Fabiano’s
Homemade Ice Cream and Candy….”

(Paul Ghinelli dep., Exh. 11. The “attached list” was not
made of record.)

This was essentially a sale of Paul Ghinelli’s
Williamson, Michigan store to his sister Gina Ghinelli-
Mulcahy, who is now a co-owner (with her mother, Kathleen
Ghinelli) of opposer company. Opposer makes and sells
homemade chocolates and homemade ice cream at that store.
Opposer has filed a trademark application to register the
Opposition No. 91151432
11
mark FABIANO’S for “retail store services featuring homemade
ice cream, candy and confection.” (See e.g., Gina Ghinelli-
Mulcahy dep., p. 8.) Opposer advertises in local newspapers
(in Williamston and Lansing) and on local radio and
television. Opposer has a website “when it’s working” and
the website has been up “on and off” for two years. (Gina
Ghinelli-Mulcahy dep., p. 13.) Opposer spends $20,000
annually on advertising and promotional matters. (Gina
Ghinelli-Mulcahy dep., p. 12.) According to Gina Ghinelli-
Mulcahy, since opposer opened in April 2000, opposer’s sales
have “been good,” growing “a little bit each year” and they
doubled in the most recent year (2002-2003). (Gina
Ghinelli-Mulcahy dep., p. 24.)
Paul Ghinelli currently owns a corporation named
Fabiano’s Homemade Ice Cream and Chocolates, which was
formed sometime in 2000--after he sold his Williamston
store. (Paul Ghinelli dep., pp. 24-25.)
The three entities, applicant, opposer and Paul
Ghinelli’s corporation, all use similar boxes and packaging
for chocolates. (Madeline Blair dep., p. 25, Exhs. 2 and 3
showing FABIANO’S HOMEMADE CANDIES in an oval; Gina
Ghinelli-Mulcahy dep., pp. 12-13, Exh. 12 showing FABIANO’S
SWEET SHOPPE in an oval; and Paul Ghinelli dep., pp. 25-26,
Exh. 10 showing FABIANO’S HOMEMADE CANDIES in an oval.)
Opposition No. 91151432
12
Applicant, Fabiano’s Homemade Candies, Inc., filed its
application to register the mark FABIANO’S on June 7, 2001;
and on May 30, 2001, Madeline Blair as “Authorized Winding
Up Partner” of Fabiano’s Homemade Candies Inc. executed a
nunc pro tunc assignment of rights in the mark FABIANO’S
from the original 1984 partnership to applicant, Fabiano’s
Homemade Candies, Inc. The assignment was recorded with the
Assignment Branch of the USPTO on June 21, 2001. (Madeline
Blair dep., Exh. 7.)
On August 7, 2001, Jane Fabiano (co-owner of the
FABIANO’S HOMEMADE CANDIES store from 1980-1984), executed a
“Consent To Register Name As a Trademark/Service Mark” to
opposer, Fabiano’s Sweet Shoppe, LLC, “to use the name
Fabiano’s and to seek to register of [sic] a
trademark/service mark for use in the field of manufacturing
and retailing of candy, confections and/or ice cream. …”
(Jane Fabiano dep., Exh. 4.)
On July 17, 2001 (approximately 5 weeks after filing
the application involved herein), applicant sent cease and
desist letters to: (i) opposer, Fabiano’s Sweet Shoppe --
Gina Ghinelli, in Williamston, Michigan; (ii) Fabiano’s
Homemade Ice Cream & Chocolates -- Keith Van Noord and Paul
Ghinelli, in Grand Rapids, Michigan; and (iii) Fabiano’s
Homemade Ice Cream & Chocolates -- Paul Ghinelli, in
Lansing, Michigan. (Madeline Blair dep., Exhs. 11-13.)
Opposition No. 91151432
13
There are no other documents of record relating to
title or ownership of the mark, and both parties’ witnesses
essentially testified that several of the arrangements
between different members of the family were not reduced to
any written agreements.
Opposer’s Position
Opposer essentially contends that Michael and Jane
Fabiano owned the business name FABIANO’S HOMEMADE CANDIES
for their candy store; that they sold this trade name and
appurtenant goodwill, but they did not sell their surname
FABIANO’S7 to their daughters, Kathleen Ghinelli and
Madeline Blair, in 1984; that neither Kathleen Ghinelli nor
Madeline Blair formally assigned to either their 1984
partnership or their 1995 corporation the interest they
obtained in 1984 in the name FABIANO’S HOMEMADE CANDIES;
that in 1997 Paul Ghinelli (one of opposer’s predecessors-
in-interest) received consent or permission from applicant
corporation (including the permission of both Madeline Blair
and Kathleen Ghinelli) to use the mark FABIANO’S for his
independent store in Williamston, Michigan; that applicant
acquiesced and ratified the grant to Paul Ghinelli by its
actions of placing advertisements and yellow pages listings
which included Paul Ghinelli’s store listed therein; that

7 FABIANO’S is, of course, the possessive form of the surname
“Fabiano.” Both parties refer to FABIANO’S as the surname and
for the sake of simplicity, we will do likewise.
Opposition No. 91151432
14
Paul Ghinelli sold his store to his sister, Gina Ghinelli-
Mulcahy, in 2000, and she received verbal consent from both
applicant and the family matriarch, Jane Fabiano, to use the
mark FABIANO’S in conjunction with her business, Fabiano’s
Sweet Shoppe, LLC; that while Kathleen Ghinelli sold her
shares in the corporation in 2000, she did not ever execute
a conveyance of her interest in the name/mark FABIANO’S as
conveyed to her in 1984; and that applicant’s chain of title
is defective and the record negates the single source
attributes necessary for applicant to obtain federal
registration.
From this interpretation of the events since 1980,
opposer concludes that it has priority of use of the mark,
essentially because opposer asserts that its rights are
derived from and through Michael and Jane Fabiano, Kathleen
Ghinelli, Paul Ghinelli, as well as through applicant, who
acquiesced and ratified the use of the mark.
Opposer also concludes that (i) FABIANO’S is primarily
merely a surname, which has not acquired distinctiveness as
a mark because it is not associated with a single source;8

8 Opposer contends that not only is there use by both applicant
and opposer of the same mark, but that another branch of Michael
Fabiano’s family (cousins) have used the mark since around 1903
in Holland, Michigan for a candy store. Kathleen Ghinelli
testified that she went to Holland, Michigan to talk to the
cousins about seeking their permission to use the mark and they
granted verbal permission. (Kathleen Ghinelli dep., pp. 24-25.)
However, Madeline Blair was specifically asked if the Holland,
Michigan branch of the family stopped using FABIANO’S and she
replied that the cousins do not use the mark FABIANO’S as they
Opposition No. 91151432
15
and (ii) it is Jane Fabiano who has attained recognition in
the field and the relevant public associates the name with
her, and thus, the mark FABIANO’S identifies her as a
particular living individual, but she has not given
applicant her written consent to register the mark.
In the “Conclusion” portion of opposer’s brief (pp. 22-
23), it asserts that the Board should determine that: (i)
applicant does not have the exclusive right to use the mark
FABIANO’S on “homemade candies”; (ii) opposer possesses
equal or superior rights in the mark; (iii) FABIANO’S is
primarily merely a surname not registrable absent evidence
of acquired distinctiveness; (iv) applicant cannot show
acquired distinctiveness due to the lawful use of the mark
by others; and (v) opposer holds written consent to register
the name FABIANO’S as a mark from the living individual who
is identified by the mark.
Applicant’s Position
Not surprisingly, applicant, based on the same facts
and the same documents, reaches a different conclusion.
Specifically, applicant’s position is that it began its
continuous use of the mark FABIANO’S for homemade candies in
1980 through Michael and Jane Fabiano, who sold the name and
the business to their daughters Kathleen Ghinelli and

now call their store “The Peanut Barrel or something like that.”
(Madeline Blair dep., pp. 13-14.)
Opposition No. 91151432
16
Madeline Blair in 1984; and that the sisters operated as a
partnership until 1995, when they converted the partnership
to a corporation (applicant corporation). Kathleen Ghinelli
subsequently sold her entire share of the corporation in
2000 (as well as her share of the second partnership,
Fabiano’s Candy Kitchen) to Steve Blair.
Applicant argues that Michael and Jane Fabiano sold
their rights in not only the trade name FABIANO’S HOMEMADE
CANDIES but also in the surname mark FABIANO’S in the 1984
sale to Kathleen Ghinelli and Madeline Blair; that the 1984
written contract is clear (including its reference to the
“name” and “goodwill”) and it would be illogical to assume
that purchasers would pay for the words “homemade candies”
as the name and mark for a homemade candy business; that the
surviving founder, Jane, relinquished all rights in and to
the use of FABIANO’S for use on homemade candies and any
related goods and/or services, i.e., she retained no rights
in FABIANO’S as a mark; and that Jane Fabiano thus had
nothing to sell, transfer or consent to use with respect to
the mark FABIANO’S.
Alternatively, applicant argues that if, as argued by
opposer, the term was a surname and not a protectable
trademark, then Michael and Jane Fabiano also had no
protectable right therein when they sold it in 1984 (only
four years after their first use) and that because Jane
Opposition No. 91151432
17
Fabiano has not been in business for herself since that
date, she had no rights in the mark FABIANO’S to transfer to
Paul Ghinelli in 1997, which is a date inferior to
applicant’s first use.
Applicant contends that opposer (Fabiano’s Sweet
Shoppe, LLC) also does not have superior rights or priority
of use over applicant because Kathleen Ghinelli sold all of
her stock in applicant corporation and thus all of her
rights in the mark in 2000, so that she therefore had no
rights to transfer; and that opposer did not receive any
rights in or title to the mark FABIANO’S from Paul Ghinelli
as he did not own the rights to the mark.
Alternatively, applicant contends that if, as argued by
opposer, the term FABIANO’S was a surname and not a
protectable trademark, then Paul Ghinelli’s use of the name
as a mark could not have acquired distinctiveness within
three years when he sold to opposer company (his sister);
that the bill of sale from Paul Ghinelli to opposer does not
even reference a name or mark and makes no reference to the
goodwill thereof (since, as stated previously, the property
list referred to in the document was not introduced into
this record); and that, therefore, opposer’s first use
commences only as of April 2000 when opposer acquired the
store and tangible “property” from Paul Ghinelli, which is a
date inferior to applicant’s first use.
Opposition No. 91151432
18
Applicant also argues that its (and its predecessors)
use of the mark over 20 years has grown and is nationwide
with total sales exceeding $3.5 million, and advertising and
promotional expenditures of about $5000 - $7000 per year;
and that its mark FABIANO’S has acquired distinctiveness
identifying applicant as the source of the goods.
Applicant acknowledges that it (through Kathleen
Ghinelli and Madeline Blair, either individually or as equal
shareholders of applicant corporation) gave Paul Ghinelli an
oral consent to use the name FABIANO’S. But, applicant
contends, this did not transfer rights in the mark and did
not give Paul Ghinelli superior rights in the mark; that
applicant (as a partnership and then as of 1995 as a
corporation) was in business for 13 years prior to Paul
Ghinelli’s first use of the mark, and remains in business
today; and that applicant provided products and packaging
and the like to Paul Ghinelli in order to control the nature
and quality of the goods and services offered at Paul
Ghinelli’s store.
Burden of Proof
The issue before us is not the parties’ respective
rights to use the mark, but rather whether applicant has a
right to register the mark under the provisions of the
Trademark Act. In Board proceedings, our primary reviewing
Court has held that the plaintiff must establish its pleaded
Opposition No. 91151432
19
case (e.g., priority and likelihood of confusion), as well
as its standing, and must generally do so by a preponderance
of the evidence. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000); Martahus v.
Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846,
1850 (Fed. Cir. 1993); Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1554 (Fed. Cir. 1991); and Cerveceria
Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
Discussion
Opposer has established its standing to bring this case
inasmuch as it has proven that it uses the mark FABIANO’S as
part of FABIANO’S SWEET SHOPPE for retail candy and ice
cream store services and as a trademark for candy and ice
cream. See Cunningham v. Laser Golf Corp., supra.
With regard to opposer’s claim that the mark FABIANO’S
is primarily merely a surname under Section 2(e)(4) of the
Trademark Act, 15 U.S.C. §1052(e)(4), this matter is not in
dispute as applicant has acknowledged that its mark is
primarily merely a surname by seeking registration under
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).
Applicant has never argued that the term FABIANO’S is not
primarily merely a surname. Thus, the question becomes
whether applicant has established acquired distinctiveness
of the mark prior to the earliest date on which opposer can
Opposition No. 91151432
20
rely. The acquired distinctiveness of surnames is generally
demonstrated with a minimum of evidence. See Section 2(f)
of the Trademark Act, 15 U.S.C. §1052(f); Trademark Rule
2.41(b); and TMEP §1212.05(a) (3d ed. 2002). Here applicant
has testified as to its use of the mark FABIANO’S for about
20 years (priority is fully discussed later herein), with
sales of over $3.5 million in that time; and it spends about
$5000 - $7000 per year on advertising. We find this is
sufficient to establish that applicant has acquired
distinctiveness in the mark FABIANO’S for homemade candies.
Prior to the earliest date on which opposer can rely
(discussed infra), applicant had substantially exclusive and
continuous use of the mark and thus acquired distinctiveness
therein. Inasmuch as applicant has established acquired
distinctiveness in the mark FABIANO’S, opposer’s surname
claim must fail.9
We turn next to opposer’s claim that the mark FABIANO’S
identifies a particular living individual, and that
applicant does not have the written consent of that
individual to register the mark. See Section 2(c) of the

9 We are mindful of opposer’s argument that the mark does not
identify applicant as the source of the goods because there were
and are uses of the same surname by others (e.g., opposer, Paul
Ghinelli and cousins). As fully addressed later in our
discussion of the priority issue, we find that it is applicant
who has the unbroken chain of title to the mark, and has priority
of use over both opposer and Paul Ghinelli. Thus, the uses by
opposer and Paul Ghinelli do not preclude applicant’s
registration of the mark. And the cousins in Holland, Michigan
no longer use the mark FABIANO’S.
Opposition No. 91151432
21
Trademark Act, 15 U.S.C. §1052(c). The record before us
does not support opposer’s claim that “FABIANO’S” identifies
a particular person with the surname “Fabiano,” and
specifically, Jane Fabiano. The record does show that Jane
Fabiano was a co-founder of the original store in 1980; that
she played a prominent role in the candy store; and that she
continues to play a prominent role in her family. In
particular, after Michael and Jane Fabiano sold the business
to their two daughters, they both remained involved (until
his death) in promoting the store (e.g., pictures of the
whole family, and stories in local newspapers and city
magazines. (Jane Fabiano dep., pp. 7-8.) According to Gina
Ghinelli-Mulcahy, people come into opposer’s store “just
specifically for my mother and grandmother.” (Italics
emphasis added -- dep., p. 16.) The record does not support
a finding that FABIANO’S is perceived by the relevant
purchasing public as specifically identifying Jane Fabiano.
The mark could also identify Michael Fabiano, or his and
Jane’s original “FABIANO’S” store, or other members of the
“Fabiano” family, including those in Holland, Michigan.
Accordingly, opposer’s claim under Section 2(c) must fail.
We turn then to opposer’s claim of priority of use and
likelihood of confusion. Applicant has applied to register
the mark FABIANO’S for “homemade candies.” Opposer has
established that it uses the mark FABIANO’S SWEET SHOPPE for
Opposition No. 91151432
22
a retail store featuring homemade ice cream and homemade
candy and for the candy and ice cream. The marks are highly
similar; and the parties’ goods include an identical item,
specifically, candy. The parties both assert that there is
a likelihood of confusion. We find that there is a
likelihood of confusion in this case where highly similar
marks are used by opposer and applicant on and in connection
with the same goods and related services.10 See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
The question here is one of priority of use and, as
explained above, it is opposer who bears the burden of
proving its priority. Surnames have been placed into the
category of non-inherently distinctive terms which require
proof of acquired distinctiveness for protection. See 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §13:2 (4th ed. 2001); and 1 Jerome Gilson,
Trademark Protection and Practice, §2.03[4][d] (2004). That
is, surnames acquire legally protectable status as marks
only after they have had such an impact upon a substantial

10 Madeline Blair testified that there have been instances of
consumer complaints to applicant corporation regarding the
quality of the candy and the ice cream at opposer’s store (dep.,
pp. 42-43); and that she has to explain it is an independent
store.
Gina Ghinelli-Mulcahy testified that in the past there have
been instances when customers coming into her store were “not
happy” with the candy from applicant’s store, but that it has
“been a long time” since that has occurred as “the public is
starting to realize we’re separate.” (Dep., p. 18.)
Opposition No. 91151432
23
part of the buying public as to have acquired
distinctiveness. See In re I. Lewis Cigar Mfg. Co., 205
F.2d 204, 98 USPQ 265 (CCPA 1953). And, proof of a prior
proprietary right is, of course, a requirement for opposer
to prevail here.
There is no doubt that FABIANO’S is the possessive form
of the original family surname (although “Fabiano” is not
the surname of any individuals now involved in either
applicant or opposer, with the exception of Jane Fabiano11);
that the grandparents (Michael and Jane Fabiano) first used
the mark FABIANO’S HOMEMADE CANDIES for their retail candy
store and for the candy sold there commencing in 1980; that
they sold such business to their two daughters (Madeline
Blair and Kathleen Ghinelli) in 1984; and that this family
has ultimately fractured into two sides over the question of
who is entitled to use and register the mark FABIANO’S for
homemade candies.
Opposer’s theory of its priority of use is flawed
because, inter alia, of the clear language of the 1984 bill
of sale from Michael and Jane Fabiano to their two
daughters. The 1984 sale of the store clearly included the
FABIANO’S name and appurtenant goodwill. We do not agree
with opposer that Michael and Jane Fabiano retained their

11 “Fabiano” was the maiden name of Kathleen Ghinelli and Madeline
Blair, but neither of them uses their maiden name as their
surname.
Opposition No. 91151432
24
trademark rights in the surname “Fabiano” and/or the mark
FABIANO’S. (Also, Jane Fabiano did not retain rights in the
name/mark such that years later she could give consent to
use and register the mark to the Ghinelli branch of the
family.) Thus, the mark FABIANO’S became the property of
the Kathleen Ghinelli and Madeline Blair partnership from
1984 until 1995, and when the partnership was converted to a
corporation (i.e., applicant corporation -- Fabiano’s
Homemade Candies, Inc.), the rights therein transferred to
applicant corporation. In April 2000, Kathleen Ghinelli
clearly sold her entire interest in applicant corporation
and terminated her relationship therewith. Kathleen
Ghinelli retained no rights in the name/mark FABIANO’S.
From the documentation before this Board there is no doubt
that the chain of title in the mark FABIANO’S rests with
applicant corporation.
Although applicant assisted Paul Ghinelli in setting up
his store, there is no evidence of a transfer of applicant’s
rights in the mark FABIANO’S to Paul Ghinelli in 1997.
There is evidence that applicant allowed Paul Ghinelli to
use the mark, but we find it is supported and is reasonable,
as applicant contends, that applicant was caught in a family
matter, and was attempting to control the nature and quality
of the goods and services on and in connection with which
Paul Ghinelli used the mark FABIANO’S. Thus, Paul Ghinelli,
Opposition No. 91151432
25
having acquired no ownership rights in the mark FABIANO’S
from applicant corporation, had no such rights to sell in
2000 when he sold his store to opposer company. Moreover,
and in fact, the April 8, 2000 bill of sale from Paul
Ghinelli to opposer company does not make any reference at
all to the sale of any mark and appears to refer only to
tangible “property” at a specific address (the list of
property which was not made of record herein). See 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §18:2 (4th ed. 2001), and cases and authorities
therein.
Thus, we find that applicant has had continuous use of
the mark FABIANO’S since 1980 based on the original owners’
use thereof. Opposer, on the other hand, has established
first use of the mark FABIANO’S SWEET SHOPPE only as of
April 2000.
On this record, opposer has not proven priority of use
of the mark, and opposer’s likelihood of confusion claim
must fail.12

12 As a postscript to this opposition proceeding, we note
Professor McCarthy’s discussion about various courts’ attempts at
compromise in litigation involving personal names. See
generally, 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, §13:9 (4th ed. 2001). In his discussion,
Professor McCarthy highlights a conflict between two competing
policies: the policy of protecting the senior user and the
consumer from injury resulting from a likelihood of confusion
where similar marks are used versus the policy of recognizing the
limited “right” of a person to use his or her own personal name
as a trade symbol. Regarding the limitations of a person’s
“right” to use the family name, and particularly the more
Opposition No. 91151432
26
Decision: The opposition is dismissed.

“modern” balancing of these competing policies, see Perini Corp.
v. Perini Construction Inc., 915 F.2d 121, 16 USPQ2d 1289, 1291
(4th Cir. 1990); Basile S.p.A. v. Basile, 899 F.2d 35, 14 USPQ2d
1240, 1243 (CADC 1990); Levitt Corp. v. Levitt, 593 F.2d 463, 201
USPQ 513, 516 (2nd Cir. 1979); Taylor Wine Co., Inc. v. Bully
Hill Vineyards, Inc., 569 F.2d 731, 196 USPQ 593, 595 (2nd Cir.
1978); and Ford Motor Co. v. Ford, 462 F.2d 1405, 174 USPQ 456,
458 (CCPA 1972).
The Board lacks the power to fashion such a remedy in
determining the right to register.