Gado S.R.L.v.Jay-Y Enterprise Co., Inc.

Trademark Trial and Appeal Board

Sep 26, 2013

No. 92047433 (T.T.A.B. Sep. 26, 2013)

Hearing

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Cancellation No. 92047433
2

Petitioner brought the cancellation proceeding on the grounds that
defendant’s DG marks so resemble petitioner’s previously used and registered
famous marks, DOLCE & GABBANA, D&G DOLCE & GABBANA, and D&G,
shown below, as well as petitioner’s common law rights in DG (collectively, the
“D&G Marks”), when used on identical or closely related goods, as to be likely to
cause confusion, to cause mistake, or to deceive under Trademark Act Section 2(d),
15 U.S.C. § 1052(d).
DOLCE & GABBANA3 Inter alia, “eyeglasses,” in International Class 9.
4
Inter alia, “clothing for men, women and children,
namely, suits made of leather; shirts; blouses; skirts;
jackets; trousers; shorts; vests; jersey; pajamas;
stockings; singlets; corsets; garters; pants; petticoats;
hats; foulards; neckties; raincoats; overcoats; great-coats;
bathing suits; sports overalls; wind-resistant jackets; ski
pants; belts; furs; scarves; dressing gowns; shoewear,
namely, slippers; shoes; sports shoes; boots,” in
International Class 25.
5
Inter alia, “spectacles, sunglasses, spectacle frames,
spectacle lenses, spectacle cases,” in International
Class 9.

In addition, petitioner alleges that respondent’s marks dilute and/or are
likely to dilute the distinctive quality of petitioner’s marks under Trademark Act
Section 43(c), 15 U.S.C. § 1125. Respondent filed an answer denying all of the
salient allegations in the petition for cancellation and asserting the affirmative

2 Registration No. 2663337, filed November 4, 2001 under Section 1(a) and issued December
17, 2002.
3 Registration No. 1742622, issued December 29, 1992.
4 Registration No. 2096500, issued September 16, 1997.
5 Registration No. 3108433, issued June 27, 2006.
Cancellation No. 92047433
3

defense of laches. Respondent also counterclaimed to cancel petitioner’s D&G
registration on the grounds of priority and likelihood of confusion.6
Both petitioner and respondent objected to certain deposition testimony and
exhibits on a variety of grounds. The case is fully briefed. An oral hearing was held
on March 21, 2013.
Evidentiary Objections
Both parties have filed extensive evidentiary objections. Respondent has
filed a motion to strike testimony and documentary evidence submitted by
petitioner regarding the launch of various Dolce & Gabbana marks in the United
States, and regarding amounts spent by petitioner on advertising. Petitioner, for its
part, objects to respondent’s purchase and sales reports and reprints of its sales
invoices. We now address these objections.
1. The 2001 Annual Review
Respondent first objects to the use of petitioner’s 2001 Annual Review, to
show the launch of the Dolce & Gabbana line, on the grounds that any statements
in the report are hearsay and cannot be used to prove the truth of the matters
asserted.7 We agree with respondent, but only with regard to statements regarding
the history of the Dolce & Gabbana brand, not with regard to the financial
information contained in the review. Annual reports are not admissible to show the
truth of the matters stated therein unless a competent witness has testified to the
truth of such matters. See Midwest Plastic Fabricators Inc. v. Underwriters

6 Respondent also counterclaimed for cancellation of petitioner’s marks based on fraud but
these claims were stricken as improperly pleaded by order of the board on April 15, 2010.
7 Respondent’s Motion to Strike, p. 3.
Cancellation No. 92047433
4

Laboratories Inc., 12 USPQ2d 1267, 1270 n. 5 (TTAB 1989) aff’d, 906 F.2d 1568, 15
USPQ2d 1359 (Fed. Cir. 1990). Petitioner has not provided competent testimony to
support the historical details in the Annual Review, but we find the financial
information contained in the review to be admissible because it was properly
testified to by Paolo Vannucchi who had personal knowledge of the information
through his duties as Director of Planning and Control for Dolce & Gabbana S.R.L.
Even though Mr. Vannucchi joined Dolce & Gabbana in 1999, his testimony clearly
demonstrated that he had assisted in the preparation of the financial information
from petitioner’s business records.8 The objection is affirmed in part and overruled
in part. The 2001 Annual Review will be considered only with regard to the
financial information contained therein.
2. Gabriella Forte’s testimony regarding use of initials by third
parties

Respondent objects to the testimony of Gabriella Forte regarding the practice
of designers to use initials as marks, on the grounds that it is hearsay.9 We
disagree. Ms. Forte has over 30 years of fashion experience and has held senior
positions at firms such as Giorgio Armani and Calvin Klein, as well as at petitioner,
Dolce & Gabbana.10 She is a highly credible witness who demonstrated her
knowledge in matters of style as well as business. Her extensive experience in the
fashion industry easily qualifies her to opine on the practices of fashion designers,
especially ones with which she has worked. The objection is overruled.

8 Paolo Vannucchi testimony, pp. 35-37.
9 Respondent’s Motion to Strike, p. 6.
10 Gabriella Forte testimony, pp. 9-13.
Cancellation No. 92047433
5

3. The remaining objections are not outcome determinative
As will be seen infra, none of the remaining testimony and/or exhibits sought
to be excluded is outcome determinative. Given this fact, coupled with the number
of objections, we see no compelling reason to discuss the remaining objections in a
detailed fashion. Suffice it to say, we have considered all of the testimony and
exhibits submitted by the parties. In doing so, we have kept in mind the various
objections raised by the parties, and we have accorded whatever probative value the
subject testimony and exhibits merit.11
The Record
The record consists of the pleadings and the files of the involved
registrations. In addition, the parties introduced the following evidence into the
record:
• The affidavit of Michael K. Koran, Vice President of Audit Services for the
Audit Bureau of Circulation, with exhibits;
• The deposition of Gabriella Forte, Merchandise Manager and consultant to
Dolce & Gabbana, with exhibits;
• The deposition of Paolo Vannucchi, Director of Planning and Control for
Dolce & Gabbana, with exhibits;
• The deposition of Lou Zollo, Senior Controller for Dolce & Gabbana, with
exhibits;
• The deposition of Roberto Lupano, Media Manager for Planning and Buying
at Dolce & Gabbana, with exhibits;
• The deposition of James Chen, President of Jay-Y Enterprise, with exhibits;

11 Respondent objects to the testimony of Roberto Lupano on the grounds that it is improper
rebuttal in that it was taken on May 6, 2011, during petitioner’s rebuttal testimony period.
Respondent’s Motion to Strike, p. 2. The actual date of the Lupano testimony is unclear.
Both parties refer to the deposition as being taken on May 6, 2011; however, according to
the notary public who certified the testimony, it was taken a year earlier on May 6, 2010,
not 2011. Lupano testimony, pp. 1 & 198. Nevertheless, inasmuch as we have not relied on
the Lupano testimony, respondent’s objection is moot.
Cancellation No. 92047433
6

• The deposition of Teresa Chen, an employee of Jay-Y Enterprise and the wife
of James Chen, with exhibits;
• The deposition of Ward Chen, an employee of Jay-Y Enterprise and the son of
James Chen, with exhibits;
• The deposition of Michael Ou, a computer consultant employed by Jay-Y-
Enterprise, with exhibits;
• Copies of Federal registrations and applications introduced by Petitioner’s
First Notice of Reliance;
• Portions of printed publications introduced by Petitioner’s First Notice of
Reliance and Second Supplemental Notice of Reliance; and
• Respondent’s responses to petitioner’s interrogatories introduced by
Petitioner’s First Notice of Reliance and Second Supplemental Notice of
Reliance.

The Parties
Petitioner is an Italian company which owns the D&G marks identified above
and licenses them to Dolce & Gabbana S.R.L., (hereinafter, “Dolce & Gabbana”), an
Italian entity which makes and sells clothing and accessories, including eyewear.
Dolce & Gabbana began selling clothing under the Dolce & Gabbana mark in 1985
and added a second line of clothing and accessories in approximately 1995 which is
sold under the mark D&G Dolce & Gabbana. The two lines of clothing and
accessories differ mainly in price, and they are generally sold in different stores and
are advertised separately.
Respondent, Jay-Y Enterprise, is a family-owned wholesaler of imported
sunglasses and reading glasses. Respondent has a showroom in Pomona, California
and sells its eyeglass products at trade shows, over the internet, and via catalog.
Cancellation No. 92047433
7

Laches
Prior to our consideration of petitioner’s pleaded claim of priority and
likelihood of confusion, we must first address respondent’s affirmative defense of
laches to determine whether petitioner’s claim is barred thereby.
In order to prevail on the affirmative defense of laches, respondent must
establish that there was undue or unreasonable delay by petitioner in asserting its
rights, and that prejudice to respondent resulted from that delay. See
Bridgestone/Firestone Research Inc. v. Automobile Club de l’Quest de la France, 245
F.3d 1359, 58 USPQ2d 1460, 1462 (Fed. Cir. 2001) (“Mere delay in asserting a
trademark related right does not necessarily result in changed conditions sufficient
to support the defense of laches. There must also have been some detriment due to
the delay.”).
In the context of this proceeding, laches begins to run from the time action
could have been taken against the registration of the involved marks, regardless of
when use of the mark began. National Cable Television Ass’n, Inc. v. American
Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1431-32 (Fed. Cir. 1991).
Petitioner is charged with constructive notice of the registrations when they issued
on June 18, 2002 and December 17, 2002, respectively. See Teledyne Technologies,
Inc. v. Western Skyways, Inc., 78 USPQ2d 1203, 1210 (TTAB 2006), aff’d
unpublished opinion, Appeal Nos. 2006-1366 and 1367 (Fed. Cir. 2006). Thus,
laches begins to run no later than the issue date of the registrations.
Cancellation No. 92047433
8

Petitioner brought this cancellation proceeding on April 26, 2007, less than 5
years after the earliest issue date of respondent’s registrations. Such time periods
cannot generally be viewed as unreasonable, given that the Trademark Act provides
that a cancellation action may be brought on the ground of likelihood of confusion
up until the point that a registration is five years old. Nevertheless, the two factors
of unreasonable delay and prejudice must be considered together.
Respondent argues that it has suffered evidentiary and economic prejudice as
a result of petitioner’s delay in bringing this proceeding.12 We find that
respondent’s proofs fall short of establishing detriment due to the delay. Hornby v.
TJX Companies Inc., 87 USPQ2d 1411, 1419 (TTAB 2008).
Regarding evidentiary prejudice, respondent states that representative
samples of sunglasses and records relating to early sales were no longer kept, but
respondent provides no explanation of when these items might have been disposed
of. In particular, respondent does not argue that these records were disposed of
between the time its marks registered and the filing of this action. Moreover,
respondent freely admits that that it was able to obtain representative samples of
early sunglasses purporting to show the DG marks, as well as related invoices, thus
undercutting any claim of prejudice. Finally, given that respondent filed its
applications for its DG marks over seven years after its claimed dates of first use,
respondent must bear some of the blame for any loss of evidence.
Regarding economic prejudice, the record is devoid of any figures regarding
investments to develop the DG marks, significant advertising expenditures, or the

12 Respondent’s Br. at 38.
Cancellation No. 92047433
9

like. In the absence of such facts, it is impossible to assess the detriment, if any,
suffered by respondent during the alleged delay.
In light of the foregoing, we find that respondent has not demonstrated that
petitioner's claim is barred by laches. We turn then to petitioner’s pleaded ground
of priority and likelihood of confusion.
Standing
Petitioner has shown through the TESS printouts made of record that it is
the owner of the pleaded registrations (Registration Nos. 1742622, 2096500, and
3108433) and that the registrations are valid and subsisting. Because petitioner’s
registrations are of record, petitioner has established its standing. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). For its part, respondent has standing to bring its counterclaims by virtue of
its position as a defendant in this cancellation proceeding. See Finanz St. Honore
B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007).
Priority
To establish priority on a likelihood of confusion claim brought under
Trademark Act Section 2(d), a party must prove that, vis-à-vis the other party, it
owns “a mark or trade name previously used in the United States . . . and not
abandoned. . . .” Trademark Act Section 2, 15 U.S.C. § 1052. A party may establish
its own prior proprietary rights in a mark through ownership of a prior registration,
actual use, or even through use analogous to trademark use, such as use in
Cancellation No. 92047433
10

advertising brochures, trade publications, catalogues, newspaper advertisements
and Internet websites which create a public awareness of the designation as a
trademark identifying the party as a source. See Trademark Act Sections 2(d) and
45, 15 U.S.C. §§ 1052(d) and 1127. See also T.A.B. Systems v. PacTel Teletrac, 77
F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994). In addition, since respondent has
counterclaimed for cancellation of one of respondent’s registrations, each party in
this case bears the burden of establishing its priority in connection with its claims
of likelihood of confusion.
For purposes of establishing priority, either party may rely on its
registrations as proof of constructive use of the marks at least as early as the filing
date of the underlying applications. Trademark Act Section 7(c), 15 U.S.C.
§ 1057(c). A party may prove the date of first use alleged in an underlying
application, if earlier than the filing date, by a preponderance of the evidence.
Hydro-Dynamics Inc. v. George Putnam Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772,
1773 (Fed. Cir. 1987).
On the other hand, a party attempting to establish first use dates earlier
than the dates alleged in its applications or registrations is subject to a higher
evidentiary burden of proof. Such facts must be established by clear and convincing
evidence, as opposed to the preponderance of the evidence standard. See Hydro-
Dynamics Inc., 1 USPQ2d at 1773 (a date of first use earlier than that alleged in the
application is a change of position from one “considered to have been made against
Cancellation No. 92047433
11

interest at the time of filing the application,” and therefore must be established by
“clear and convincing evidence.”); see also Martahus v. Video Duplication Services
Inc., 3 F.3d 417, 27 USPQ2d 1846, 1852 n. 7 (Fed. Cir. 1993); Threshold.TV Inc. v.
Metronome Enterprises Inc., 96 USPQ2d 1031, 1036 (TTAB 2010) (a party “is
entitled to prove an earlier date of use than the date alleged in its application, but
its proof must be clear and convincing and must not be characterized by
contradiction, inconsistencies or indefiniteness.”); and American Hygienic
Laboratories Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB 1989) (holding
testimony of manager regarding use of TIFFANY on compacts nine years earlier
was not clear and convincing absent corroborating documents showing use of the
mark.).
In proving priority, the oral testimony of a single witness may suffice, if
sufficiently probative. However, to be determinative, the testimony must not be
characterized by contradictions, inconsistencies and indefiniteness, but rather must
carry a conviction of accuracy and applicability. B.R. Baker Co. v. Lebow Bros., 150
F.2d 580, 66 USPQ 232 (CCPA 1945). Of course, oral testimony is strengthened by
documentary evidence which corroborates the dates of use. Elder Manufacturing
Co. v. International Shoe Co., 194 F.2d 114, 92 USPQ 330 (CCPA 1952). Finally,
when considering evidence of first use, we must “look at the evidence as a whole, as
if each piece of evidence were part of a puzzle which, when fitted together,
establishes prior use.” West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d
1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994).
Cancellation No. 92047433
12

1. Respondent’s Priority
Respondent is entitled to claim a date of first use of its DG marks at least as
early as the filing date of the applications which matured into the registrations at
issue, i.e., September 19, 2000 for Registration No. 2582314 and November 4, 2001
for Registration No. 2663337. Further, respondent is entitled to prove use of the
mark as of the dates alleged in the applications, i.e., December 1, 1999, by a
preponderance of the evidence. Hydro-Dynamics Inc., 1 USPQ2d at 1773.
As late as November 30, 2007, respondent, in its Responses to Petitioner’s
First Set of Interrogatories, claimed that its date of first use of the DG marks was
December 1999.13 Respondent now claims it used the DG marks much earlier than
the December 1, 1999 date alleged in the underlying applications, and submits
evidence purporting to show first use of the marks as early as early as 1993.
Accordingly, respondent must prove the earlier dates of first use by “clear and
convincing” evidence that is not “characterized by contradictions, inconsistencies
and indefiniteness.” B.R. Baker Co. v. Lebow Bros., 66 USPQ at 236.
In order to establish the earlier priority date, respondent offered the
testimony of three current and former principal employees, James Chen, Teresa
Chen, and Ward Chen, as well as testimony from a computer consultant, Michael
Ou. The testimony was accompanied by exhibits consisting of representative
models of sunglasses bearing the DG marks, numerous purchase and sales records,
and customer invoices printed from respondent’s SBT computerized accounting

13 Respondent’s Responses to Petitioner’s First Set of Interrogatories, Response to
Interrogatory No. 16, p. 11.
Cancellation No. 92047433
13

system which was installed the same year respondent alleges it started using the
DG marks.14 Respondent also submitted copies of printed product catalogs for the
years 1995 through 1998.
We note that although respondent’s evidence related to showing earlier use of
the DG marks is voluminous, the probative value of the evidence is significantly
reduced by a variety of factors, inter alia: critical factual omissions; testimony
contradicted or unsupported by other testimony or by what documentary evidence is
available; a lack of contemporary documentation or advertising showing any use of
DG prior to the filing of the applications; and the imperfect or selective memories of
some of respondent’s principal employees regarding adoption of the DG marks and
the filing of the trademark applications.
The testimony of respondent’s president, James Chen, was vague and evasive
regarding the adoption and registration of the DG marks. Chen founded Jay-Y
Enterprise in 1983 but claimed that he turned over much of the operation of the
company to his wife, beginning in around 1990, except for “managing” respondent’s
relationship with its factories in Taiwan and China.15 Nevertheless, in 2000 and
2001, Chen, as president of Jay-Y Enterprise, signed both underlying applications
which matured into the registrations at issue. His testimony indicates that he had
little, if any, understanding regarding what he was signing and whether the marks
were in use. The following testimony is representative of Chen’s testimony:
Q. “Do you recognize [the stylized DG mark shown in Registration No.
2582314] as a trademark that is owned by Jay-Y?”

14 Michael Ou testimony, p. 11.
15 James Chen testimony, p. 15.
Cancellation No. 92047433
14

A. “I’m not sure. I had signed the [application], but I’m not sure if that
was used or not.”
* * *
Q. “Do you recognize this collection of papers [the application
underlying Registration No. 2663337]?”
A. “Well, basically I really don’t understand the English, but I
remember that there was an application, but it’s been such a long
time ago. . . .”
* * *
Q. At the time you signed it (the application underlying Registration
No. 2582314) do you know whether you understood the document
you were signing?”
A. My wife did tell me about it.”
Q. What did she tell you?
A. Oh, I’m not sure. I don’t remember anymore.
* * *
Q. And did you believe that the declaration [in the application
underlying Registration No. 2582314] was true at the time that you
signed it?”
A. “I believed my wife.”
* * *
Q. “Did you hold the title of president for Jay-Y Enterprise in
November 2001?”
A. “Well just legally, legally the company I was the person who was
responsible, but nobody calls me Mr. President. They just call me
Mr. Chen.”
* * *
Q. Do you recall what your understanding was at the time that you
signed the application?
A. Well it’s whatever she told me, but all the details legally, that I
don’t know.16

In sum, James Chen’s testimony was vague and lacking in any probative value
regarding respondent’s first use of the DG marks and the filing of the applications.

16 James Chen testimony, pp. 29-38.
Cancellation No. 92047433
15

Teresa Chen testified that she began working for respondent in 1987 in “sales
and purchasing,”17 eventually taking over more of respondent’s operations until
around 2004, when her son, Ward Chen, took over.18 Teresa Chen testified
regarding the way in which respondent’s sunglasses were purchased from suppliers
when she began working for respondent:
I would go to the factories, and then they would suggest samples
to me. Then what I liked or what I think would sell, well, then I
would arrange for the colors. Then I would discuss pricing and
then make an order.19

Chen testified that she decided respondent needed to develop its own brands of
sunglasses to better compete in the sunglass market.20 She testified that she came
up with three brands, CG, DG, and Challenger:
Well, when I was thinking about the logo, I was trying to think
about what might be appropriate. So when I saw the Christian
Dior, they have the logo CD, or Calvin Klein, they have CK. So I
came up with the idea of having either CG or DG and also using
the brand Challenger.21

Chen testified she then contacted the factory to have these newly-chosen marks
applied to several styles of sunglasses:
Well, after I thought up the names, then I went to the factory
and asked them to do some drawings for me. And after that I
chose – after I chose the drawings, then I asked them to put it
on one or two styles maybe on the corner of the sunglasses or on
the lens.22

17 Teresa Chen testimony, p. 21.
18 Teresa Chen testimony, p. 48
19 Teresa Chen testimony, p. 22.
20 Teresa Chen testimony, pp. 23, 25-26.
21 Teresa Chen testimony, pp. 27-28.
22 Teresa Chen testimony, p. 30.
Cancellation No. 92047433
16

Chen further testified that each “style or model” of sunglasses sold by respondent
has a “model number[ ] that is unique to each style of sunglass.”23
Teresa Chen’s son and respondent’s current manager, Ward Chen, began
working in the warehouse at Jay-Y in 1997.24 In 1999 he took over additional
duties in the company eventually taking over all management responsibilities in
2004. Ward Chen confirmed respondent’s practice of applying its marks, including
the DG marks, to existing styles of sunglasses offered by respondent’s
manufacturers:
Q. So as to those . . . manufacturers from whom Jay-Y
purchases sunglasses, does Jay-Y also instruct those
manufacturers as to the designs of glasses that it wishes
them to manufacture?
A. Let me explain it to you then. People have different
designs. Then they’ll offer the designs to us. Like, you
know one factory may just have ten designs. So, you
know, we see them. We – okay. We like this one. So we
buy from this guy. And then we put our trademarks on it,
our marks on it.
* * *
Q. [W]as this model shown to you [by the manufacturer] as is
with the letters DG as being available for purchase from a
manufacturer?
A. This one in particular, no. . . . It probably had something
else besides the mark, the logo right here (indicating). . . .
But then we told them to use DG instead of the existing
logo that it had here.25

Respondent’s primary evidence consists of sales records from the SBT
accounting system showing that certain sunglass models, purportedly bearing the

23 Teresa Chen testimony, pp. 74-75.
24 Ward Chen testimony, p. 6.
25 Ward Chen testimony, pp. 20-26.
Cancellation No. 92047433
17

DG marks, were sold by respondent between 1993 and 1998.26 But Teresa Chen
testified that the DG marks were applied to existing sunglass styles offered by
various manufacturers to respondent.27 This testimony exposes a critical
shortcoming in respondent’s proof of priority: Teresa Chen did not testify whether
pre-existing sunglass styles offered by respondent’s manufacturers retained their
model numbers when the DG marks were applied, or whether they were given new
model numbers. Without knowing whether the model numbers changed when the
DG marks were applied to a manufacturer’s existing sunglass styles, we cannot tell,
simply by looking at the model numbers listed on the invoices, whether a particular
model of sunglasses sold in a given year by respondent did or did not bear the DG
marks. That is, the evidence only proves which styles or models were sold in a
given year, not whether those particular models carried the DG marks. In addition,
the evidence does not explain whether respondent ever sold any unbranded models
of the identified sunglasses models either before or after it claims to have affixed
the DG marks to these models. Simply put, the sales records fail to prove by clear
and convincing evidence that the model numbers identified and sold by respondent
carried the DG marks during the period from 1993 to 1998.
We find also that there is a complete lack of contemporary evidence
corroborating use of the DG marks during the period from 1993 to 1998. Further,
testimony purporting to explain the absence of such contemporary evidence is
contradicted by the record. For example, none of respondent’s catalogs from the

26 Teresa Chen testimony, pp. 75-76.
27 Teresa Chen testimony, p. 30.
Cancellation No. 92047433
18

years 1995 to 1998 show any use of the DG marks. Teresa Chen testified that she
asked for the DG marks to be put “on the lens”28 of some of the sunglasses, but
there are no sunglasses bearing the DG marks on the lens in any of respondent’s
catalogs. Many of the sunglass models alleged to bear the DG marks are displayed
in respondent’s catalogs; however, the DG marks are not visible on any of the
sunglasses because the glasses all face forward while the identified sunglasses show
the DG marks on the side of the glasses.29 When asked by petitioner’s counsel why
the DG marks could not be seen on any of the sunglasses in the catalogs, Teresa
Chen stated that the photographers preparing the catalog needed to show the
sunglasses facing forward, thus obscuring a view of the DG marks on the side of the
glasses.30 Teresa Chen also testified that it was “more important” to show the front
of the glasses.31 This testimony, claiming a need to show only the front of the
sunglasses, is clearly contradicted by the fact that respondent’s catalogs present
numerous other sunglass models in a three-quarter perspective showing both the
front and decorative side or temple portion of the glasses.
Similarly, Ward Chen’s testimony regarding his involvement in the decision
to file trademark applications for the DG marks is contradicted by his own
testimony elsewhere in the record. Ward Chen testified that he was not involved in
the decision to register the DG marks and was not involved in the filing of the
applications:

28 Teresa Chen testimony, p. 30.
29 Respondent’s Exhs. 100-130, 132 &135 to Teresa Chen testimony.
30 Teresa Chen testimony, p. 249.
31 Teresa Chen testimony, p. 249.
Cancellation No. 92047433
19

Q. Were you involved in the decision to register the mark
DG?
A. No.
Q. Were you involved in filing the application for the mark
DG?
A. No, I was not.32

But respondent’s responses to Petitioner’s First Set of Interrogatories, prepared by
Ward Chen himself,33 provided a completely different answer—that he was involved
in the filing of the applications for the DG marks.
INTERROGATORY NO. 10:
Identify each person or concern who participated in the decision to
register Respondent’s mark(s) in the United States, and the duties or services
performed by such persons.

RESPONSE TO INTERROGATORY NO. 10:
Ward Chen, Purchasing Director of Respondent; Teresa Chen, General
Manager of Respondent and attorneys representing Respondent.

* * *
INTERROGATORY NO. 12:
Identify all persons or concerns who participated in the decision to file
and the actual filing of the application, Ser. No. 78/026,522 [now Registration
No. 2582314], on or about September 19, 2000.

RESPONSE TO INTERROGATORY NO. 12:
See response to Interrogatory No. 10.34

Thus, Ward Chen initially admitted that he was directly involved in the decision to
register the DG marks, and then later testified that he was not involved in

32 Ward Chen testimony, pp. 40-41.
33 Ward Chen declared that he was “the individual primarily responsible for providing
information relating to . . . Jay-Y’s initial responses to Gado’s interrogatories. . . .”
Declaration of Ward Chen dated August 25, 2009, p. 15.
34 Respondent’s Responses to Petitioner’s First Set of Interrogatories, Response to
Interrogatory Nos. 10 & 12, pp. 8-10.
Cancellation No. 92047433
20

registering the marks. His contradictory statements reduce the credibility of his
testimony and undercut respondent’s proof of priority.
Teresa Chen also testified that respondent was trying to build the DG brand
by highlighting it to potential customers, but this testimony is unsupported by any
documentary evidence.35 There is no mention or use of the letters DG in any
description of respondent’s goods or as part of a model number in any of the
numerous sales records or invoices from 1993 to 1998.36 Except for the catalogs,
which do not show the DG marks, respondent has not submitted any
advertisements, trade show records, or other documents promoting any of its goods,
much less sunglasses bearing the DG marks. It is certainly not necessary to use a
mark in these ways to show use, but the lack of any evidence corroborating
attempts to build the DG brand during this period diminishes the credibility of
respondent’s testimony that it began using the DG marks in 1993.
Finally, no credible explanation was given for why the earlier dates of first
were not included in the applications for registration. Teresa Chen testified only
that the significance of the dates of first use “was not really explained” to her.37
When we look at the evidence of respondent’s priority as a whole, as we must
under West Florida Seafood, we find it does not establish respondent’s use of the DG
marks prior to the date alleged in the applications by clear and convincing evidence.
In particular, the testimony of the Chens is “characterized by contradictions,

35 Teresa Chen testimony, p. 31.
36 It appears that respondent’s sunglasses bearing the DG marks now use the letters DG as
part of the model numbers. Ward Chen testimony, pp. 21-27. There is no testimony or
evidence explaining when or why this practice changed.
37 Teresa Chen testimony, p. 39.
Cancellation No. 92047433
21

inconsistencies and indefiniteness” regarding the adoption and use of the marks.
Respondent’s president, James Chen, had little recollection of signing the
application, much less any recollection about adopting the marks. Teresa Chen’s
testimony was significantly compromised by a lack of contemporary documentation
showing use of the marks and was contradicted by respondent’s catalogs. And Ward
Chen’s testimony was contradicted by respondent’s own answers to petitioner’s
interrogatories which he prepared. Most importantly, the sales invoices do not
corroborate whether the identified sunglass models actually bore the DG marks
during that time period. All in all, we find that respondent’s testimony, rather than
being strengthened by documentary evidence, is weakened by a lack of credible
corroborating evidence showing any use of the DG marks during the period from
1993 to 1998. B.R. Baker Co. v. Lebow Bros., 66 USPQ at 236; Cerveceria
Centroamericana v. Cerveceria India, 892 F.2d 1021, 13 USPQ2d 1307, 1312 (Fed.
Cir. 1989) (the testimony of the witness regarding use was afforded little weight
because it was “to say the least, vague.”). Based on the forgoing, we find that
respondent has not shown use of the DG marks prior to the filing date of the
applications underlying the registrations by clear and convincing evidence.
Teresa Chen’s testimony alone, however, is sufficient to show use of the
marks as of the date alleged in the applications by a preponderance of the evidence.
Teresa Chen testified regarding why she provided the December 1, 1999 dates of
use identified in the applications:
Cancellation No. 92047433
22

Q. [W]ere you the person that provided the date of first use
of the DG marks for the applications that were filed in
2000 and 2001?
A. Yes.
Q. And did you base that date of first use on the date when
Jay-Y first used hang tags in connection with its
sunglasses that included the DG marks?
A. Yes.38

Accordingly, we find that the earliest date of use of the DG marks on which
respondent may rely is December 1, 1999.
2. Petitioner’s Priority
We next examine priority for each of the marks claimed by petitioner.
a. DOLCE & GABBANA, Registration No. 1742622
Petitioner is entitled to rely on the constructive use date of June 27, 1990
established by the section 44(d) priority filing date of the application underlying
this registration. Inasmuch as the filing date underlying this registration predates
the earliest use of the DG marks by respondent, petitioner has established its
priority as to this mark.
b. D&G DOLCE & GABBANA (stylized), Registration No. 2096500
Petitioner is entitled to rely on the constructive use date of November 7, 1995
established by the filing date of the application underlying this registration.
Inasmuch as the filing date of the application underlying this registration predates
the earliest use of the DG marks by respondent, petitioner also has established its
priority as to this mark.

38 Teresa Chen testimony, p. 39
Cancellation No. 92047433
23

c. D&G (stylized), Registration No. 3108433
The June 28, 2004 filing date of the application underlying this registration
postdates the filing dates of respondent’s applications. Petitioner, therefore, may
not rely on the filing date of the application as proof of priority. For petitioner to
show that it has priority, it must prove that it was using the D&G mark on the
goods prior to the date of first use alleged in respondent’s applications, December
1999.
Petitioner argues that the date of its first use of the D&G mark should be “no
later than September 1995” because it has “employed D&G both separately from
and together with Dolce & Gabbana as marks for the D&G Dolce & Gabbana line.”39
Rather than assess this this allegation, we first consider the more directly relevant
allegation regarding petitioner’s use of D&G on eyewear. We will determine
priority based on the eyewear goods in Registration No. 3108433 because these
goods are the ones most closely related to respondent’s goods, and because the
application for these goods alleged a date of first use of 1998, which is prior to any
date that respondent has proven. Moreover, petitioner’s claim that it first used the
D&G mark “no later than September 1995” must be interpreted as applying to
articles of clothing generally, as opposed to eyewear in particular, inasmuch as
petitioner stated that it first used the D&G mark on eyewear when it “launched its
D&G eyewear collection in 1998.”40 Given the forgoing, petitioner must prove its
priority as to first use of the mark as early as 1998 by a preponderance of the

39 Petitioner’s Br. at 15-16.
40 Petitioner’s Br. at 16.
Cancellation No. 92047433
24

evidence. Hydro-Dynamics, 1 USPQ2d at 1773. Petitioner’s testimony and
documentary evidence establish that petitioner used D&G as a mark on sunglasses
as early as 1998.
Petitioner has introduced the testimony of Paolo Vannucchi, the Director of
Planning and Control Worldwide for Dolce & Gabbana. Vannucchi joined Dolce &
Gabbana in March of 1999 and is responsible for “all budgeting processes.”41
Vannucchi authenticated petitioner’s sales figures showing sales of D&G sunglasses
beginning in 1998 and continuing through at least 2009.42 Vannucchi also
authenticated portions of petitioner’s 2001 Annual Review which identified 1998 as
the first year petitioner sold D&G sunglasses. Vannucchi’s testimony sufficiently
explained how he was familiar with the preparation of the Annual Review and the
nature and source of the sales information contained in the review. See
Transamerica Financial Corp. v. Trans-American Collection, 197 USPQ 43, 46 at
n. 6 (TTAB 1977) (“Normally, material contained in an annual report is considered
hearsay if introduced in evidence for the truth of the matter contained therein
unless it is introduced during the course of the taking of the testimony of an
individual who is familiar with the preparation thereof and can explain the nature
and source of the material contained therein.”).
We find this testimony to be credible, probative, and corroborated by
documentary evidence. B.R. Baker Co. v. Lebow Bros., 66 USPQ at 236. Petitioner
is entitled to rely on its use of the D&G marks on sunglasses as early as 1998.

41 Vannucchi testimony, p. 8.
42 Vannucchi testimony, pp. 83-86, Exh. C.
Cancellation No. 92047433
25

d. Petitioner’s Common-Law Use of DG
For a plaintiff to prevail on a claim of likelihood of confusion based on its
ownership of common-law rights in a mark, the mark must be distinctive,
inherently or otherwise, and plaintiff must show priority of use by a preponderance
of the evidence. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40 (CCPA 1981). Respondent has not questioned the distinctiveness of
petitioner's DG mark nor are there any other circumstances in the case which would
have put petitioner on notice of this defense, and we therefore find that the mark is
distinctive. See Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634
(TTAB 2007); Cf. Otto Roth, 209 USPQ at 44 (“Neither the board nor appellee has
questioned the inherent distinctiveness of ESPRIT NOUVEAU, and we therefore
assume it functions as a trademark.”).
A plaintiff may establish its own prior proprietary rights in a mark through
actual use or through use analogous to trademark use, such as use in advertising
brochures, trade publications, catalogues, newspaper advertisements and internet
websites which creates a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act Sections 2(d) and 45, 15
U.S.C. §§ 1052(d) and 1127; T.A.B. Systems, 37 USPQ2d 1879.
In order to establish priority in its DG mark, petitioner must show that it
used the mark in connection with its goods prior to respondent’s date of first use of
December 1, 1999. Petitioner presented both testimony and documentary evidence
to support its alleged date of first use.
Cancellation No. 92047433
26

Gabriella Forte testified that the initials DG are generally used where the
full name Dolce & Gabbana might not be appropriate, presumably due to size or
style considerations:
The initials in Dolce & Gabbana are used, DG specifically, by
the designers as a logo identity of their name. They are always
interspersed in the designs. Sometimes we find it on a tie.
Another time we found it in a belt. . . . It’s used on the
eyeglasses. . . . It’s typical of instead of putting Dolce &
Gabbana, Dolce & Gabbana, Dolce & Gabbana, it’s the
abbreviation that most designers, when they want to graphically
make a quick impact, they use their initials of whatever the
brand name is.43

The letters DG began to appear in connection with respondent’s clothing and
fashion accessories at least as early as 1995. For example, the September 1995
issue of Interview magazine displayed a DG tiepin in a photograph accompanying
the table of contents.44 Gabriella Forte also testified regarding several advertising
photographs from the 1995 season showing the DG mark on purses and belts.45
Most significant, for purposes of this case, are petitioner’s 1998 and 1999-2000
eyeglass catalogs which plainly show use of the letters DG on numerous styles of
eyeglasses as well as forming part of the eyeglass model numbers.46 Petitioner has
shown use of the letters DG as a mark for eyeglasses and sunglasses at least as
early as 1998.

43 Forte testimony, pp. 24-25
44 Forte testimony, p. 138, Exh. 17. Respondent has objected to exhibit 17 as hearsay.
Respondent’s Objections to Evidence in Petitioner’s Reply Brief, p. 7. We overrule this
objection inasmuch as this exhibit shows on its face the use of the letters DG credited to
petitioner in a widely circulated fashion magazine as early as 1995.
45 Forte testimony, pp. 159-165, Exh. 22.
46 Forte testimony, pp. 138-141, Exhs. 20 & 21.
Cancellation No. 92047433
27

Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence relevant to the factors bearing on the likelihood of
confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In considering the evidence of record on these factors, we keep in
mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). Petitioner has the burden to establish that there is a
likelihood of confusion by a preponderance of the evidence.
1. The fame of petitioner’s Dolce & Gabbana marks

This du Pont factor requires us to consider the fame of petitioner’s marks.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales and advertising
expenditures of the goods and services identified by the marks at issue, “by the
length of time those indicia of commercial awareness have been evident,” by
Cancellation No. 92047433
28

widespread critical assessments and notice by independent sources of the products
identified by the marks, as well as by the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and
1309. Although raw numbers of product sales and advertising expenses may have
sufficed in the past to prove fame of a mark, raw numbers alone may be misleading.
Some context in which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
The record clearly establishes the widespread fame of petitioner’s marks,
Dolce & Gabbana, D&G Dolce & Gabbana, and D&G for clothing and fashion
accessories, including sunglasses. Such fame is a critical du Pont factor in
petitioner’s favor in this case.
The Dolce & Gabbana brand entered the U.S. market in the late 1980’s.
Petitioner has submitted representative examples of full-page advertisements it
placed in major fashion magazines beginning as early as October 1989.47
Thereafter, petitioner’s advertisements regularly appeared in some of the most
widely-circulated magazines in the fashion industry, including, Vogue, Vanity Fair,
Esquire, Harper’s Bazaar, Details, GQ Gentleman’s Quarterly, Interview, and W
magazine.48 These advertisements often featured famous actresses and models
such as Isabella Rossellini and Linda Evangelista.49 Between 1989 and 1995, these
magazine advertisements are estimated to have reached over 15 million readers,

47 October 1989 issue of Details magazine. Petitioner’s Notice of Reliance, Exh. 23.
48 Petitioner’s Notice of Reliance, Exhs. 23-48.
49 Petitioner’s Notice of Reliance, Exhs. 23 & 25.
Cancellation No. 92047433
29

according the Audit Bureau of Circulation.50 Petitioner’s advertising expenses for
both lines of clothing during this period, while confidential, are substantial by any
measure and are comparable to advertising expenses of other well-known fashion
brands such as Giorgio Armani and Prada.51
In addition to petitioner’s advertisements which regularly appeared in the
above magazines, petitioner’s two lines of clothing were frequently featured and
promoted in the pages of these magazines as well. Numerous pictorial fashion
articles highlighted petitioner’s clothing collections alongside the collections of other
well-known designers such as Gianni Versace, Yves Saint Laurent, Chanel, and
Prada.52 These numerous articles and references to Dolce & Gabbana products
demonstrate that consumers were widely exposed to petitioner’s brands beginning
as early as 1989 continuing to prior to respondent’s first use of its marks in 1999.53
Petitioner’s sales have grown steadily since introduction of the brand in the
U.S., and show that Dolce & Gabbana has become a major force in the fashion world
in a short period of time. Sales revenues in the United States from the main Dolce
& Gabbana ready-to-wear line rose from 9 million Euros in 1996-1997 to more than
75 million Euros in 2008.54 Sales revenues in the United States from the secondary
or “younger” D&G Dolce & Gabbana ready-to-wear line have enjoyed similar
success, rising from 7 million Euros in 1997-1998 to more than 24 million Euros in

50 Moran testimony, pp. 4-72.
51 Vannucchi testimony, p. 105, Exh. E; Gabriella Forte testimony, pp. 122-123.
52 Petitioner’s Notice of Reliance, Exhs. 23-48.
53 Petitioner’s Notice of Reliance, Exhs. 49-76.
54 Petitioner’s Public Br. at 6; Vannucchi testimony, Exh. C.
Cancellation No. 92047433
30

2005.55 Sales of petitioner’s accessories, i.e., eyewear, fragrances, watches, and
jewelry, have enjoyed similar sales success.56
Petitioner has also enjoyed significant success in placing its clothing in the
consumer spotlight by dressing a number of well-known musical performers, such
as Madonna and Whitney Houston, on their concert tours. Petitioner has provided
dresses for actresses Demi Moore and Susan Sarandon, among others, at the
Academy Awards Ceremonies. Many well-known Hollywood stars have been seen
wearing Dolce & Gabbana: Angelina Jolie, Cameron Diaz, Colin Farrell, and Jude
Law.57 This use of petitioner’s clothing by celebrities and the resulting media
coverage show that petitioner has been able to benefit from the powerful association
between its clothing brand and the trend-setting ability of these celebrities.
Based on the totality of the evidence, we find that, for purposes of likelihood
of confusion, Dolce and Gabbana, D&G Dolce & Gabbana, and D&G are famous
marks for clothing and fashion accessories and they became famous prior to
respondent’s first use of its marks in 1999.
2. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression

We turn next to the du Pont factor which focuses on the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. Du Pont, 177 USPQ at 567.

55 Petitioner’s Public Br. at 7; Vannucchi testimony, Exh. C.
56 Vannucchi testimony, Exh. C.
57 Gabriella Forte testimony, pp. 108 & 169.
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Cancellation No. 92047433
32

Nevertheless, the marks also have some similarities in connotation and commercial
impression. The marks have similar alliteration in that they begin with the letter
“D” followed by the letter “G” or a word beginning with the letter “G.” Additionally,
petitioner’s mark appears in typed form and therefore may be used in any style or
typeface such as those used by respondent. For example, much of petitioner’s
advertising uses the same sans-serif typeface as used by respondent in Registration
No. 2582314 for the mark .58 Most importantly, the record shows that designers
commonly use their initials as shorthand for their names.
Both respondent and petitioner have testified that well-known fashion
designers use their initials in place of their names. Teresa Chen testified that when
she was creating the DG marks she knew that Christian Dior used the “logo CD”
and that Calvin Klein used “CK.”59 Respondent also admitted that it “recognized
that companies like Calvin Klein, Giorgio Armani, and Armani Exchange had had
success in putting two letters together to create their respective logos.”60 Likewise,
petitioner’s witness, Gabriella Forte, stated that “when [designers] want to
graphically make a quick impact, they use their initials of whatever the brand name
is.”61 Forte also testified that both the name Calvin Klein and the initials “CK”
were used on eyewear.62 Petitioner has made of record several marks owned by
Armani and used on articles of clothing which include the initials of the designer:

58 Petitioner’s Notice of Reliance, Exhs. 23-27, 29-30, 32-33.
59 Teresa Chen testimony, pp.27-28.
60 Respondent’s Response to Interrogatory No. 23, Petitioner’s Exhibit 77 to Notice of
Reliance, p. 15.
61 Gabriella Forte testimony, p. 25.
62 Gabriella Forte testimony, p. 58.
Cancellation No. 92047433
33

Registration No. 1221737 for the mark, GA and design, and Registration No.
1578682 for the mark, EMPORIO ARMANI GA and design. Both marks include the
initials GA, short for Giorgio Armani.63
This testimony and evidence, showing that designers commonly shorten their
names to initials, suggests that consumers are accustomed to associating designers
or fashion brands by the corresponding initials for those designers or brands. We
find it likely that respondent’s DG marks would be perceived as related to or as a
shortened or version of petitioner’s Dolce & Gabbana mark. See In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). This seems especially
likely when the marks are applied to an object which may have limited space to
display trademarks, such as a pair of sunglasses.
Respondent argues that there is no evidence to support the finding that
initials were used by designers and fashion brands in connection with clothing lines
at the time it adopted its marks.64 We disagree. As discussed above, Teresa Chen
admitted that at the time she was creating respondent’s marks, she knew of at least
two designers who used initials as shorthand for their names, Christian Dior and
Calvin Klein. Respondent also argues that there is no evidence that two designers
use initials to identify their clothes. This is a distinction without a difference. It is
the brand that is being shortened, not just the designer’s names. Respondent
admitted as much in its response to petitioner’s request for admission when it
recognized that Armani Exchange, among others, had succeeded in “putting two

63 Petitioner’s Notice of Reliance, Exhs. 15 and 16
64 Respondent Br. at 20.
Cancellation No. 92047433
34

letters together” [AX] to create its logo.65 See In re Abcor Development Corp., 588
F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring) (“[U]sers of
language have a universal habit of shortening full names – from haste or laziness or
just economy of words.”); See also Louis Vuitton Malletier v. Dooney & Bourke Inc.,
79 USPQ2d 1481 (2d Cir. 2006) (reversing district court finding that DB monogram
used by Dooney & Bourke was not confusingly similar to LV monogram used by
Louis Vuitton).
Accordingly, we find that the marks are similar in terms of their overall
commercial impression so that confusion as to the source of the goods offered under
the respective marks is likely to result. Midwestern Pet Foods Inc., 103 USPQ2d at
1440.
b. D&G DOLCE & GABBANA (stylized), Registration No. 2096500
and D&G (stylized), Registration No. 3108433

We first note that respondent’s marks consist entirely of the letters DG, in
two stylized forms. In one of respondent’s marks, , the letters appear in nearly
the same typeface as in petitioner’s mark, , albeit with the letters slightly
overlapped.66 Both of petitioner’s marks are dominated by the same letters, D and
G, separated by a non-distinctive ampersand. The name DOLCE & GABBANA in
Registration No. 2096500 appears in much smaller typeface and is less significant
when comparing the marks in their entireties. Similarly, the presence of an
ampersand in petitioner’s marks and the different stylization of the letters in

65 Respondent’s Response to Interrogatory No. 23, Petitioner’s Exhibit 77 to Notice of
Reliance, p. 15.
66 Registration No. 2582314
Cancellation No. 92047433
35

respondent’s mark in Registration No. 2663337 are less significant compared to the
presence of the identical letters, DG versus D&G, and does little to obviate the
similarities between the marks in appearance and sound. Thus, we find that the
dominant portion of all the marks is a combination of the letters D and G.
Moreover, all of the marks convey the same commercial impression of initials
or abbreviations, which in fact they are. Teresa Chen testified that DG was chosen
to stand for “designer glasses”67 and D&G is the abbreviation for the last names of
petitioner’s designers, Domenico Dolce and Stefano Gabbana. “Initials, by their
very nature, are abbreviations, a shortened version designed to be comprehended at
a glance. If the number of letters is the same, and there is a significant overlap in
the letters used, that is generally sufficient to sustain a claim of similarity.”
Continental Connector Corp. v. Continental Specialties, 492 F.Supp. 1088, 207
USPQ 60, 66 (D. Conn. 1979). Given that designers commonly shorten their names
to initials for simplicity, we find that it is likely that respondent’s DG marks would
be perceived as related to or a shortened version of the respondent’s D&G Dolce &
Gabbana mark.68 See Mighty Leaf Tea, 94 USPQ2d at 1260. The different
derivation of the marks is insufficient to distinguish the marks, especially in the
absence of any advertising by respondent to inform consumers as to its intended
significance of the letters DG. See In re General Electric Co., 180 USPQ 542, 544
(TTAB 1973).

67 Teresa Chen testimony, p. 29.
68 Teresa Chen testimony, pp.27-28; see also Respondent’s Response to Interrogatory No. 23,
Petitioner’s Exhibit 77 to Notice of Reliance, p. 15; Gabriella Forte testimony, p. 25.
Cancellation No. 92047433
36

Arbitrary letter combinations, such as we have here, generally have been
found to be similar because it is difficult for consumers to distinguish between
similar letter combinations. Crystal Corp. v. Manhattan Chemical Mfg. Co., 75 F.2d
506, 25 USPQ 5, 6 (CCPA 1935) (“We think that it is well known that it is more
difficult to remember a series of arbitrarily arranged letters than it is to remember
figures, syllables, words, or phrases. The difficulty of remembering such lettered
marks makes confusion between such marks, when similar, more likely.”). See also,
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841
(Fed. Cir. 1990) (“Because it is hard to distinguish between these letters, the mark
TMM is confusing with TMS”); Edison Brothers Stores v. Brutting E.B. Sports-
International, 230 USPQ 530, 533 (TTAB 1986) (EB and EBS for shoes are likely to
cause confusion because “confusion is more likely between arbitrarily arranged
letters than between other types of marks”).
We find that these marks are similar in terms of their overall appearance,
sound, connotation, and commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to result. Du Pont, 177 USPQ
at 567.
c. Petitioner’s Common-Law Use of DG
Petitioner has demonstrated that it has used the letters DG on sunglasses
since at least as early as 1998.69 Inasmuch as respondent’s marks also consist of
the identical letters DG, we find petitioner’s common-law DG mark and

69 See supra pp. 24-26.
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respondent’s DG marks to be similar as to “appearance, sound, connotation and
commercial impression.” DuPont, 177 USPQ at 567.
In view of the foregoing, we find that the similarities of the parties’ marks
outweigh the differences, and therefore the similarity of the marks is a factor that
favors finding that there is a likelihood of confusion.
3. The similarity or dissimilarity and nature of the goods in the
registrations, likely-to-continue channels of trade, and classes of
consumers

We turn next to the similarity of the goods. It is well settled that we must
consider the goods as they are identified in the registrations. Octocom Systems Inc.
v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of registrability of [a] mark must
be decided on the basis of the identification of goods set forth in the application [or
registration] regardless of what the record may reveal as to the particular nature of
[the] goods, the particular channels of trade or the class of purchasers to which
sales of the goods are directed.”).
Respondent’s goods are identified as “sunglasses, optical frames, and reading
glasses” in International Class 9. Petitioner’s goods are identified as, inter alia:
“eyeglasses,”70 “spectacles, sunglasses, spectacle frames, spectacle lenses, spectacle
cases,”71 and a variety of “clothing for men, women and children.”72
Respondent’s and petitioner’s goods are in part identical in that both parties’
registrations identify “sunglasses”; respondent’s “optical frames” and petitioner’s

70 Registration No. 1742622.
71 Registration No. 3108433.
72 Registration No. 2096500.
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“spectacle frames” are legally identical; and petitioner’s broadly-identified
“eyeglasses” can be seen to encompass all of respondent’s goods, as well as
respondent’s “reading glasses.”
Regarding petitioner’s Registration No. 2096500 which identifies variety of
“clothing for men, women and children,” but not eyeglasses, we find these goods are
closely related to respondent’s goods as well. It is common knowledge that
sunglasses and clothing may be complementary products in that consumers may
purchase sunglasses as a fashion accessory. A number of clothing manufacturers
make both clothing and sunglasses. Isabella Forte testified that she worked for two
clothing manufacturers besides Dolce & Gabbana that also made and sold
sunglasses, i.e., Giorgio Armani and Calvin Klein.73 See Catalina, Inc. v. Miller,
dba Fashion Accessories, 123 USPQ 460, 461 (TTAB 1959) (“[P]urchasers familiar
with ‘CATALINA’ sportswear, swimwear, and accessories would be quite likely to
assume that ‘CATALINA’ sunglasses originated with or are in some way connected
with the same producer.”).
To the extent that the parties’ goods are identical, we must presume that
they move through the same channels of trade and are offered to the same classes of
customers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). Accordingly, the three du Pont factors relating

73 Gabriella Forte testimony, pp. 57-58.
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to the similarity or dissimilarity of the goods, the trade channels, and classes of
consumers favor a finding of likelihood of confusion.
4. The variety of goods on which a mark is used
The record shows that petitioner uses the D&G marks on a wide variety of
clothing, as well as clothing accessories, such as perfumes, purses and handbags,
jewelry, watches and, of course, sunglasses and eyeglasses. The fact that petitioner
applies its D&G marks to a variety of clothing articles and accessories makes it
more likely that purchasers, aware of petitioner’s use of the mark on these products,
when seeing a similar mark used in connection with sunglasses, are likely to believe
that these sunglasses are also being produced or sponsored by petitioner. See Nike
Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1195 (TTAB 2007). In contrast,
respondent uses its mark only on sunglasses and reading glasses.
Based on this evidence, we find that this du Pont factor weighs in petitioner’s
favor.
5. The nature and extent of any actual confusion
Respondent has admitted that there has been some actual confusion as to the
source of its goods. Respondent stated in its Responses to Petitioner’s First Set of
Interrogatories:74
INTERROGATORY NO. 26:

(a) Is Respondent aware of any instance of confusion or mistake
regarding it and Petitioner, their respective goods, services, or
businesses, and/or Respondent’s Mark(s) and Petitioner’s Mark(s)?

74 Respondent’s Responses to Petitioner’s First Set of Interrogatories, Response to
Interrogatory Nos. 26 & 27, pp. 16-17.
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(b) Has Respondent received any communication addressed or
directed to, or which mentions, refers or relates in any way to,
Petitioner, Petitioner’s Mark(s), and/or Petitioner’s products/services?
(c) Is Respondent aware of any instance where any person thought,
assumed or otherwise indicated a belief that there is or may be an
association between Respondent and Petitioner, Respondent’s Mark(s)
and Petitioner’s Mark(s), and/or the respective products or services or
businesses of Respondent and Petitioner?

RESPONSE TO INTERROGATORY NO. 26:
(a)-(c) Yes.
INTERROGATORY NO. 27:

(d) If the answer to Interrogatory No 26(a), above, is other than an
unqualified negative, identify each instance of confusion or mistake.
(e) If the answer to Interrogatory No 26(b), above, is other than an
unqualified negative, identify each such communication to which the
interrogatory refers.
(f) If the answer to Interrogatory No 26(c), above, is other than an
unqualified negative, identify each such instance where any person
thought, assumed or otherwise indicated a belief that there is or may
be an association between Respondent and Petitioner and/or their
respective products, services or business.

RESPONSE TO INTERROGATORY NO. 27:
(a)-(c) . . . Sometime between 2005 and 2006, when Petitioner began
using as its logo the letters “DG” in an interlocking manner similar to
Respondent’s Marks, Respondent’s customers began asking
Respondent whether Respondent’s products sold under Respondent’s
marks were Petitioner’s. Because Respondent did not keep logs or
records of these incidents, Respondent does not have more specific
information to provide in response to this interrogatory.

Ward Chen further admitted that he was aware of instances where
Respondent’s glasses were referred to as “knockoffs”:
Q. “Are you aware of any instances of anybody referring to glasses sold
by Jay-Y that feature the DG letters as knockoffs?”
A. “Yes.”
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41

* * *
Q. “[H]ow many times? Do you know?”
A. “A couple of times to my recollection.”75

A showing of actual confusion is highly probative, if not conclusive, of a
likelihood of confusion. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003). These instances of confusion as revealed by
respondent suggest there is at least some confusion in the marketplace as to the
source of the goods. Nevertheless, inasmuch as petitioner has not put forth any
evidence of confusion of its own, and given that the exact nature of the confusion
admitted by respondent is unclear, we find this factor only slightly favors petitioner.
6. Respondent’s “bad faith”
Petitioner also alleges that respondent’s “business practices demonstrate bad
faith and are probative of the substantial possibility of actual confusion.”76
Petitioner points to respondent’s practice of filing trademark applications for marks
which allegedly resemble the marks of other fashion brands, such as Giorgio
Armani and Gucci.77 Respondent, on the other hand, argues that these applications
are inadmissible and irrelevant to the issue of bad faith.78
Establishing bad faith requires a showing, by a preponderance of the
evidence, that a party intentionally sought to trade on the goodwill or reputation
associated with another’s marks. See Big Blue Products Inc. v. International
Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991). However, “an inference

75 Ward Chen testimony, p. 35.
76 Petitioner’s Br. at 31.
77 Petitioner’s Br. at 32-33.
78 Respondent’s Br. at 32.
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of ‘bad faith’ requires something more than mere knowledge of a prior similar
mark.” Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d
1793, 1798 (Fed. Cir. 1987). A finding of bad faith must be supported by evidence of
an intent to confuse, rather than mere knowledge of another’s mark or even an
intent to copy. See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92
USPQ2d 1769, 1782 (2d Cir. 2009) (“[T]he only relevant intent is intent to confuse.
There is a considerable difference between an intent to copy and an intent to
deceive.”).
The filing of an application for a mark that may resemble the mark of
another is not, on its face, evidence of bad faith. Nevertheless, “a party which
knowingly adopts a mark similar to one used by another for related goods should
not be surprised to find scrutiny of the filer’s motive.” L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1442 (TTAB 2012). More likely, respondent’s filing of applications
for marks resembling those of another reflect a fundamental misunderstanding of
trademark law–that a newcomer has a duty to avoid adopting a mark which is
likely to cause confusion with the mark of another. As the Federal Circuit’s has
explained:
The law has clearly been well settled for a longer time
than this court has been dealing with the problem to the
effect that the field from which trademarks can be
selected is unlimited, that there is therefore no excuse for
even approaching the well-known trademark of a
competitor, that to do so raises “but one inference–that of
gaining advantage from the wide reputation established
by appellant in the goods bearing its mark,” and that all
doubt as to whether confusion, mistake, or deception is
likely is to be resolved against the newcomer, especially
Cancellation No. 92047433
43

where the established mark is one which is famous and
applied to an inexpensive product bought by all kinds of
people without much care.

Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281, 1285, (Fed. Cir. 1984) quoting Planters Nut & Chocolate Co. v. Crown Nut Co.,
Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962).
While we have concerns about the propriety of respondent’s business
practices, based on this record, we cannot conclude that respondent acted in bad
faith. This factor is neutral.
Conclusion
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, including ones not specifically discussed
herein, we find that because petitioner’s marks are famous, the marks are similar,
the goods are in part identical and otherwise related, and the channels of trade and
consumers are presumed to overlap, there is a likelihood of confusion between
respondent’s marks and the petitioner’s marks when used in connection with the
identified goods. Lastly, to the extent that any of the points argued by respondent
may raise a doubt about our finding of a likelihood of confusion, we would resolve
that doubt, as we must, in favor of petitioner as the prior user. See Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1569, 218 USPQ 390, 395 (Fed. Cir.
1983); and Century 21 Real Estate Corp., 23 USPQ2d at 1701.
Cancellation No. 92047433
44

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. Community
Marketing. Inc., 82 USPQ2d 1562, 1572 (TTAB 2007).
Decision: Petitioner’s petition for cancellation is granted. Respondent’s
counterclaim to cancel petitioner’s registration is denied. Registration Nos.
2582314 and 2663337 will be cancelled in due course.