Gucci America, Inc.v.UGP, LLC

Trademark Trial and Appeal Board

Jul 13, 2018

No. 91223735 (T.T.A.B. Jul. 13, 2018)

Mailed: July 13, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Gucci America, Inc.

v.

UGP, LLC
___
Consolidated Opposition Nos. 91223733 and 91223735
___
Andrea L. Calvaruso, Ana Y. Correa and Ryan C. Steinman
of Kelley Drye & Warren LLP for Gucci America, Inc.

Edward Raymond and Tatjana Labato for UGP, LLC.
______

Before Wellington, Adlin and Heasley, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant UGP, LLC seeks registration of the marks
and for “electronic cigarettes”1 in

1 Application Serial Nos. 86436040 (the “‘040 Application”), the subject of Opposition No.
91223733, and 86435978 (the “‘978 Application”), the subject of Opposition No. 91223735,
respectively, were each filed on October 27, 2014, based on an alleged intent to use the marks
in commerce under Section 1(b) of the Trademark Act. Both applications indicate that the
This Opinion is not a
Precedent of the TTAB
Opposition Nos. 91223733 and 91223735
2
International Class 34. In its notices of opposition, Opposer Gucci America, Inc.
alleges prior use and registration of the mark GUCCI, in standard characters and a
variety of stylized and design forms, for an exceedingly wide variety of goods and
services, including, for example, leather goods, purses, shoes, clothes, jewelry and
perfume. Many of Opposer’s pleaded registrations are over five years old. As grounds
for opposition, Opposer alleges that use of Applicant’s marks would be likely to cause
confusion with, and dilute, Opposer’s marks. In its answer, Applicant admits that
Opposer owns its pleaded registrations and “the world famous GUCCI mark in the
United States,” and that Applicant’s president and namesake Uberto Gucci “is a blood
relative and great grandson of the famous designer and [Opposer’s] original founder

signature shown in the drawings identifies Uberto Gucci, who provided consent to register
the marks. According to the ‘040 Application, “[t]he mark consists of the wording ‘BY
UBERTO GUCCI’ in gold and white, outlined in black, with ‘UBERTO GUCCI’ underlined
by a gold and white line outlined in black.” According to the ‘978 Application, “[t]he mark
consists of the wording ‘DESIGNED’ in pink, ‘BY’ in gold and white outlined in black and
‘UBERTO GUCCI’ in gold and white outlined in black and underlined by a gold and white
line outlined in black and designs comprising a purple, dark purple, red and pink armor
helmet featuring a pink and dark purple necklace wearing a pink and red crown with black
circular stone designs and red and white diamond and rectangular stone designs. The crown
features a gold top featuring green and white circles and rests on a pink and white cushion.
Attached to both sides of the armor are floral arrangements featuring red, purple, pink, dark
blue, blue-gray, black and purple flowers. Below the armor is a shield outlined in black, with
a yellow top portion featuring a red flower outlined in dark blue and a dark blue carriage
wheel/gear. Below the yellow portion are dark blue and red vertical bars with white borders.
On top of the shield is a red, pink and gold crown with black and white circles on top, black
circle stone designs and red and white diamond and rectangle stone designs. The remaining
white areas in the drawing represent the transparent areas in the mark.” The ‘978
Application includes a disclaimer of DESIGNED BY.
Opposition Nos. 91223733 and 91223735
3
Guccio Gucci.” 4 TTABVUE 2, 3 (Answer ¶¶ 2, 4, 5).2 Applicant denies most of the
other salient allegations in the notice of opposition.
We denied Opposer’s motion for summary judgment on both of its claims in our
May 23, 2017 order (the “Summary Judgment Decision”). 20 TTABVUE. We
nevertheless found, in connection with Opposer’s dilution claim, that there is “no
genuine dispute of material fact that Opposer’s word mark GUCCI became famous
prior to the filing date of the involved intent-to-use applications.” Id. at 8. We further
found that because Opposer did not plead “rights in the GUCCI marks for cigarettes,
cigarette cases, lighters, matches or ashtrays,” and its registrations of GUCCI marks
for these products were cancelled, its evidence of prior use and registration of GUCCI
for these types of products would not be considered. Id. at 7. Opposer did not
thereafter amend its notice of opposition to plead rights in its marks for these
products, Applicant has not admitted that Opposer has trademark rights for these
products and the question was not tried by implied consent. Accordingly, have not
considered Opposer’s trial evidence regarding these products or the marks therefor.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the files of Applicant’s involved applications. In addition, Opposer introduced:

2 Citations are to the record in Opposition No. 91223733 and refer to TTABVUE, the Board’s
online docketing system. Specifically, the number preceding “TTABVUE” corresponds to the
docket entry number(s), and any number(s) following “TTABVUE” refer to the page
number(s) of the docket entry where the cited materials appear.
Opposition Nos. 91223733 and 91223735
4
Trial testimony (by declaration) of Christine Iacuzzo, its
Vice President of Marketing and Communications, and the
exhibits thereto (“Iacuzzo Dec.”). 23 TTABVUE.

Notice of Reliance (“NOR”) on official records, including a
patent application, third party trademark applications,
and two of Applicant’s related, but abandoned and
uninvolved trademark applications. 25 TTABVUE.

NOR on Applicant’s written discovery responses. 26
TTABVUE.

NOR on third-party trademark registrations. 27
TTABVUE.

NOR on printouts from an Office database showing the
status and title to all but one of Opposer’s pleaded
registrations. 28 TTABVUE.3

NOR on Internet printouts. 29 TTABVUE.

Applicant did not take any testimony, submit any evidence or file a Trial Brief.
II. The Parties
Guccio Gucci opened his first GUCCI-branded store in Florence, Italy in 1921,
focusing on leather goods, and eventually offering handbags and luggage. 23
TTABVUE 3 (Iacuzzo Dec. ¶ 2). Since the 1950s, Opposer has used the GUCCI Marks4
(discussed below) in the United States for a wide variety of goods and services. Id.
¶ 5. There are now “approximately 100 GUCCI branded, company-owned/operated

3 Opposer did not introduce its pleaded Registration No. 3660060 into evidence. In any event,
had it been introduced it would be at most cumulative and not change our ultimate decision
or even our discussion of the case.
4 Opposer’s “Gucci Marks” include GUCCI, the Gucci “signature” marks and the Gucci “crest”
marks, as well as those in which Opposer owns common law rights. 23 TTABVUE 4 (Iacuzzo
Dec. ¶ 5).
Opposition Nos. 91223733 and 91223735
5
retail boutiques in the United States … and Puerto Rico alone,” and “Opposer also
distributes its GUCCI branded products on a wholesale basis through high-end retail
department stores such as Neiman Marcus, Saks Fifth Avenue, Nordstrom and
Bloomingdale’s. The dedicated Gucci counters and floor sections within these retail
locations prominently display the GUCCI mark.” Id. ¶¶ 3-4.
Opposer’s product line has expanded significantly over time, and now includes
(and for “decades” has included) footwear, apparel, jewelry, fragrances, cosmetics,
home goods and retail store services. In addition, “for decades” Opposer has also used
GUCCI in connection with some seemingly far-flung products, including bicycles,
automobiles and mobile applications. Id. ¶ 6 and pp. 83, 99, 101, 388, 406
Opposer’s GUCCI Marks include not only GUCCI in standard characters, but also
what Opposer refers to as “signature marks,” a version of which is displayed below
on the left, and “crest marks,” a version of which is displayed below on the right:

Id. ¶ 5. Opposer’s pleaded registrations include, among others:
Mark Reg. No./Issue Date Goods/Services
GUCCI
2(f)
1321864
Feb. 26, 1985

Eyeglasses and parts therefor

GUCCI
2(f)
1200991
July 13, 1982

bracelets, rings, necklaces,
cufflinks, pendants, pins,
money clips, keyrings, all
Opposition Nos. 91223733 and 91223735
6
made wholly or in part of
precious metal
GUCCI
2(f)
1168477
Sept. 8, 1981

neckties; scarves; belts;
footwear; shirts; sweaters;
coats; suits; dressing gowns;
hats; socks; dresses and
bathing suits
GUCCI 1140598
Oct. 21, 1980
Perfume; after-shave; and
cologne
GUCCI
2(f)
4255187
Dec. 4, 2012

Automobiles and bicycles
GUCCI 4563132
July 8, 2014
Handbags, shoulder bags,
clutch bags, tote bags,
briefcases, business card
cases, credit card cases,
backpacks, key cases, passport
cases, cosmetic cases sold
empty, valises, suitcases,
luggage, all the foregoing
being made in whole or in part
of leather; pet accessories,
namely, carriers, collars and
leashes; pet collar accessories,
namely, charms
GUCCI 4563098
July 8, 2014
Protective covers and cases for
mobile electronic
communication devices and
computers; computer
application software for all
mobile devices, namely,
software for providing
information in the field of
fashion, the arts and lifestyle
GUCCI 972078
Oct. 30, 1973
Retail apparel, jewelry and
leather goods store services
GUCCI 4567127
July 15, 2014
Advertising and marketing
services provided by means of
indirect methods of marketing
communications, namely,
social media; retail store and
retail outlet store services
featuring clothing, footwear,
handbags, luggage, small
Opposition Nos. 91223733 and 91223735
7
leather goods, jewelry,
watches, eyewear, fragrances,
and accessories; online retail
stores featuring clothing,
footwear, handbags, luggage,
small leather goods, jewelry,
watches, eyewear, fragrances
and accessories
FLORA BY GUCCI 3627729
May 26, 2009
essential oils for personal use,
perfumes, eau de parfum, eau
de toilette
GUCCI
2(f)
1093769
June 20, 1978

Pens

3061918
Feb. 28, 2006
Wallets, purses, handbags …
business card cases, credit
card cases …

3627732
May 26, 2009
essential oils for personal use,
perfumes, eau de parfum, eau
de toilette

2(f)
4222044
Oct. 9, 2012

Automobiles and bicycles

1097555
July 25, 1978
Neckties, scarves, belts,
footwear, shirts, sweaters,
coats, suits, dresses and
bathing suits

1097483
July 25, 1978
wallets, purses, handbags,
shoulder bags, clutch bags,
tote bags, card cases, key
cases, passport cases, cosmetic
cases, attache cases, valises,
suitcases, duffle bags, necktie
cases, umbrellas, wholly or
partially made of leather
Opposition Nos. 91223733 and 91223735
8

1132675
April 8, 1980
candle holders made wholly or
partly of precious metal,
watches, cufflinks of precious
metal, bracelets, pendants,
earrings, rings, necklaces,
stylized animal containers
made wholly or partly of
precious metal

4555582
June 24, 2014
Bicycles

As indicated, Uberto Gucci is Guccio Gucci’s great grandson. 4 TTABVUE 3
(Answer ¶ 5).5 Applicant concedes that “[t]his familial connection is of public
knowledge.” 26 TTABVUE 14 (Applicant’s response to Interrogatory No. 21(a)).
Uberto Gucci was “Vice President of the Gucci Parfums Spa (Guccio Gucci SPA
related company).” 26 TTABVUE 13 (Applicant’s response to Interrogatory No. 20).
He created the mark in the ‘978 Application “with the ‘use’ of the Gucci family crest
which was existing several hundred years ago and belonging to the Gucci family …
Uberto Gucci’s personal and natural signature was placed on the logo.” 26 TTABVUE
8, 21 (Applicant’s response to Interrogatory No. 2 in each opposition). Opposer has no
business relationship with Applicant or Uberto Gucci, and has not authorized either
to use the GUCCI Marks. 23 TTABVUE 33-34 (Iacuzzo Dec. ¶ 56).

5 Applicant indicates in its discovery responses, however, that Uberto Gucci is Guccio Gucci’s
“grand nephew.” 26 TTABVUE 14 (Applicant’s response to Interrogatory No. 21(a)). Whether
Uberto Gucci is Guccio Gucci’s great grandson or grand nephew is not material to our
decision.
Opposition Nos. 91223733 and 91223735
9
III. Standing and Priority
Opposer’s pleaded registrations, 28 TTABVUE 30-102, establish its standing. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000). Because Applicant has not counterclaimed to cancel any
of Opposer’s pleaded registrations, priority is not at issue with respect to the marks
and goods identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
IV. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”). Opposer bears the burden of establishing that there
is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which there
is evidence or argument, and treat the remaining factors as neutral.
Opposition Nos. 91223733 and 91223735
10
A. The Strength/Fame of Opposer’s Marks
We found in the Summary Judgment Decision that Opposer’s GUCCI mark is
famous for dilution purposes, and Applicant concedes the point. 4 TTABVUE 2-3
(Answer ¶ 2); 20 TTABVUE 8; 26 TTABVUE 15, 39, 43 (Applicant’s responses to
Interrogatory No. 25 and Request for Admission No. 5). This finding and admission
establish that Opposer’s GUCCI mark is exceedingly strong, famous and entitled to
a broad scope of protection against confusion. Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1724 (Fed. Cir. 2012) (“Fame for
likelihood of confusion and fame for dilution are distinct concepts, and dilution fame
requires a more stringent showing.”); Cf. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733 (Fed. Cir. 2017).
In fact, where fame exists, as it does here, it “plays a ‘dominant role in the process
of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude
of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002)(quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000)). A strong mark “casts a long shadow which
competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
While consumer surveys may provide direct evidence of fame, they are not
necessary; indeed, they “rarely appear.” Bose, 63 USPQ2d at 1305. Rather, “fame of
a mark may be measured indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the mark, and by the length of
time those indicia of commercial awareness have been evident.” Id. Other relevant
Opposition Nos. 91223733 and 91223735
11
factors include “length of use of the mark, market share, brand awareness, licensing
activities, and variety of goods bearing the mark.” Coach Servs., 101 USPQ2d at 1720.
We keep in mind that fame remains “a dominant factor in the likelihood of
confusion analysis … independent of the consideration of the relatedness of the
goods.” Recot, 54 USPQ2d at 1898. That is, “when a product reaches the marketplace
under a famous mark, special care is necessary to appreciate that products not closely
related may nonetheless be confused as to source by the consumer because of the fame
of the mark.” Bose Corp., 63 USPQ2d at 1310.
Here, GUCCI is Opposer’s primary trademark, as well as its company and primary
domain name, and has been in extensive use in the United States for over 60 years.
In fact, GUCCI is a “household name.” For example:
“[S]ince Opposer’s first promotion and sale of the products
[bearing the Gucci Marks] in the U.S., the sale of products
bearing the Gucci Marks has generated billions of dollars.”
23 TTABVUE 20 (Iacuzzo Dec. ¶ 15). The record supports
the testimony that the sales were in the “billions,” with a
“b.”

While the specific figures are confidential, between 2010-
2017 alone, Opposer’s sales of products bearing the GUCCI
word mark are a substantial fraction of the total referenced
above, and significantly more than we typically see in
Board cases, even cases involving other famous marks.
Similarly, Opposer’s sales of products bearing the Gucci
“signature” marks during that same time period are quite
impressive, and exceed sales figures which have previously
and consistently been found to support a finding of fame.
Opposer’s sales of products bearing the GUCCI “crest”
marks are also impressive by any measure Id. (Iacuzzo
Dec. ¶¶ 16-17).

Since 2011, Opposer’s advertisements featuring Gucci
Marks have appeared in many well-known publications,
Opposition Nos. 91223733 and 91223735
12
with a combined circulation exceeding 220 million,
including Vogue, New Yorker, Vanity Fair, GQ, Glamour,
Esquire, Harper’s Bazaar, Los Angeles Times, Newsweek,
New York Times Magazine, Wall Street Journal and
Business Week. Id. (Iacuzzo Dec. ¶ 19), 320-323.

While the specific figures are confidential, Opposer has
spent a significant sum advertising and promoting the
Gucci Marks between 2010-2016. Id. (Iacuzzo Dec. ¶ 20).
As with Opposer’s sales figures, its advertising
expenditures are at the highest end of what is typically
seen in Board cases. 24 TTABVUE 35-57 (confidential).

Retailers including Neiman Marcus and Saks Fifth Avenue
also advertise products bearing the Gucci Marks.

Opposer has almost 4.9 million Twitter followers, 17.4
million Instagram followers, almost 16 million Facebook
followers, and has received over 16.2 million Facebook
“likes.” Opposer’s “gucci.com/us” website received almost
83 million visits between 2012-2014, and 105 million
between 2015-August 2017. Approximately 700,000 people
in the United States have downloaded the GUCCI mobile
app. The L2 Digital IQ Index ranks GUCCI first among 85
luxury fashion brands in “digital performance.” 23
TTABVUE 22-23 (Iacuzzo Dec. ¶¶ 22-26), 340, 355, 358.

GUCCI was 47th on Forbes Magazine’s 2017 list of the
world’s most valuable brands, with an estimated “brand
value” of $12.7 billion. Millward Brown’s list of “Top 100
Most Powerful Brands” has included GUCCI from 2006 to
the present, and Interbrand has ranked GUCCI among the
“Best 100 Brands” since 2005. Id. at 24-25 (Iacuzzo Dec.
¶¶ 29-30); 29 TTABVUE 89.

There are a number of books about the GUCCI brand and
family, and GUCCI products have appeared in many
movies and television shows, including The Wolf of Wall
Street, The Blind Side, La Land, Annie, The Americans,
The Today Show and Empire. According to the Huffington
Post, Gucci topped the list of “10 Most Mentioned Fashion
Brands in Hip Hop.” 23 TTABVUE 25-26 (Iacuzzo Dec. ¶¶
33-36); 29 TTABVUE 317-343, 345.

Opposition Nos. 91223733 and 91223735
13
Opposer made of record many depictions of its products being featured in popular
culture (for example, the movie poster below on the left features the GUCCI “horsebit
loafer”), and being worn by famous celebrities (for example, the article below on the
right depicts Princess Grace Kelly, Audrey Hepburn, Jacqueline Kennedy Onassis
and Princess Diana:

23 TTABVUE 711, 713. Applicant admits that GUCCI is a “famous mark” and “world
famous.” 26 TTABVUE 15, 39, 43 (Applicant’s responses to Interrogatory No. 25 and
Request for Admission No. 5).
In short, the evidence of record establishes that Opposer’s GUCCI Marks are
famous, and significantly so. More specifically, not only is the GUCCI word mark
quite famous, but the GUCCI “signature” marks and the GUCCI “crest” marks are
Opposition Nos. 91223733 and 91223735
14
also famous, though less so.6 In addition, the mark FLORA BY GUCCI not only
incorporates the famous GUCCI mark, but in fact its commercial impression is of a
Gucci product, i.e. essential oils for personal use and perfumes named “FLORA”
which are made “by GUCCI.” Thus, in analyzing FLORA BY GUCCI, we take into
account the fame of GUCCI, and as we assess the other du Pont factors, we give the
GUCCI mark’s fame “its full measure of weight.” Recot, 54 USPQ2d at 1898.
B. The Marks
We consider the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). In doing so, we are mindful that “the Lanham
Act’s tolerance for similarity between competing marks varies inversely with the
fame of the prior mark. As a mark’s fame increases, the Act’s tolerance for similarities
in competing marks falls.” Kenner Parker Toys, 22 USPQ2d at 1456. In this case,
given how famous GUCCI and the GUCCI “signature” marks are, the Act’s tolerance
for similarity to those marks is quite low.

6 While the figures are confidential, suffice it to say that from 2010-2017, Opposer’s sales of
goods bearing the GUCCI “signature” marks exceed many millions of dollars, as do its sales
of goods bearing the GUCCI “crest” marks during the same time period, though the sales of
goods under the GUCCI “crest” marks are less than those for goods bearing the GUCCI and
GUCCI “signature” marks. Opposer’s advertising expenditures in connection with the
GUCCI “signature” and “crest” marks are also impressively high, though also confidential.
24 TTABVUE 19-21, 39-41, 43, 45-57 (Iacuzzo Dec. ¶¶ 16, 17, 19, 20 and Exs. D, E, I).
Opposition Nos. 91223733 and 91223735
15
The degree of similarity between the marks is, however, quite high. With respect
to the mark in the ‘040 application, the similarities between it and the GUCCI
standard character and “signature” marks are manifest:
VS. GUCCI and
Because Opposer’s word mark is registered in typed/standard character format,7 it
could be displayed in any font, including the same stylized font as Applicant’s mark.
In re Viterra, 101 USPQ2d at 1910. As for the GUCCI “signature” mark, it and
Applicant’s mark are written in fairly similar and underlined cursive script, with both
“G”s featuring similar and fairly distinctive flourishes. Applicant’s mark and
Opposer’s standard character and “signature” marks all feature the famous name and
mark GUCCI, and while Applicant’s mark prefaces the famous name and mark
GUCCI with “By Uberto,” this is of relatively little significance. Indeed, “Gucci” is an
obvious and famous surname and “Uberto” is an obvious (and also Italian-sounding)
personal name. See generally, In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1945 (Fed. Cir. 2004) (finding JOSE GASPAR GOLD for tequila confusingly

7 See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until
2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the preferred
nomenclature was changed in 2003 to conform to the Madrid Protocol … we do not see
anything in the 2003 amendments that substantively alters our interpretation of the scope
of such marks”).
Opposition Nos. 91223733 and 91223735
16
similar to GASPAR’S ALE for beer, based in large part on affirming findings that “the
first name JOSE and the word GOLD both simply modify the name GASPAR” and
that JOSE “simply reinforces the impression that GASPAR is an individual’s name,”
and thus “does not alter the commercial impression of the mark”); Nina Ricci S.A.R.L.
v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“… the
Board failed to consider the other marks of opposer and their effect on the similarity
or dissimilarity of ETF’s mark. These marks, MADEMOISELLE RICCI,
SIGNORICCI and CAPRICCI, according to Nina Ricci, indicate that the RICCI
surname is a unifying name in opposer’s marks and is the dominant and significant
part of opposer’s marks in identifying its goods.”).
In addition, the record belies any claim that consumers would perceive “By Uberto
Gucci” as distinguishing. First, Applicant’s president Uberto Gucci is related to
Guccio Gucci, the “founder of Opposer’s GUCCI brand.” Moreover, Uberto Gucci “is
formerly the Vice President of the Gucci Parfums Spa (Guccio Gucci SPA related
company).” Applicant itself admits that “[t]his familial connection is of public
knowledge.” 4 TTABVUE 3 (Answer ¶ 5); 26 TTABVUE 14 (Applicant’s response to
Interrogatory No. 21(a)); 26 TTABVUE 13 (Applicant’s response to Interrogatory No.
20). Given the conceded “public knowledge” that Uberto is part of the famous GUCCI
family, and was part of the family business, the public would not be likely to perceive
“By Uberto” as identifying a different source; to the contrary, it would be natural to
assume that family member Uberto is still affiliated with the source of other GUCCI
products, as he once was, and in a leadership capacity. Furthermore, Opposer has
Opposition Nos. 91223733 and 91223735
17
introduced evidence that major fashion industry brands sometimes introduce
“secondary” or “diffusion” product lines, which add a term to a house mark, such as
“by [personal name],” for example: Balmain’s secondary line “Pierre Balmain;” Marc
Jacobs’s secondary line “Marc by Marc Jacobs;” Armani’s secondary line “Emporio
Armani;” and Chloé’s secondary line “See by Chloé.” 23 TTABVUE 33 (Iacuzzo Dec.
¶¶ 53-55); 27 TTABVUE 1-39 (registrations for diffusion product lines); 29 TTABVUE
405-408. And Opposer sometimes prefaces its GUCCI “signature” mark with the
initial “G”:

23 TTABVUE 235, 236, 246. In short, the mark in Applicant’s ‘040 Application
includes the dominant, literal and famous portion of Opposer’s marks, and the visual
and aural distinction in Applicant’s mark, “By Uberto,” only accents the connotation
that, like Opposer’s marks, it identifies the famous GUCCI brand and source.
As for the mark in Applicant’s ‘978 Application, its appearance is obviously
different from GUCCI alone, or in “signature” form. Nevertheless, especially given
the fame of GUCCI, the words DESIGNED BY UBERTO GUCCI should be given
Opposition Nos. 91223733 and 91223735
18
greater weight than the stylization. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will
be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554
(TTAB 1987). In any event, Applicant created the design element of its mark “with
the ‘use’ of the Gucci family crest.” 26 TTABVUE 8, 21 (Applicant’s response to
Interrogatory No. 2 in each opposition). Therefore, the difference in appearance
between this mark and Opposer’s GUCCI word and “signature” marks is not
particularly significant, as the Gucci crest design would heighten, rather than reduce,
the likelihood of confusion, at least among those aware or made aware of the Gucci
crest.
Furthermore, Opposer’s “crest” marks are sufficiently similar in appearance to
Applicant’s design mark for confusion to occur. Both feature a human figure, the
famous name and word mark GUCCI and other similar elements, including flowers,
armor, shields, and Opposer’s helmet and Applicant’s crown. These similarities
should not be surprising given Applicant’s admitted use of the Gucci family crest to
create its involved design mark.
Under the circumstances of this case, including the renown of Opposer’s GUCCI
Marks, Applicant’s marks are also confusingly similar to FLORA BY GUCCI. In fact,
GUCCI is the dominant portion of each, based on its fame, being a surname and its
place in each mark. Both FLORA BY GUCCI and BY UBERTO GUCCI convey that
the associated products are “by,” i.e. originate from, GUCCI, whether “Gucci” is
further identified by a personal name or the product is further identified by, for
Opposition Nos. 91223733 and 91223735
19
example, “Flora.” Therefore, we have taken into account the GUCCI mark’s fame in
analyzing FLORA BY GUCCI. In short, the source of each product will likely be
perceived as “Gucci,” with FLORA BY GUCCI and BY UBERTO GUCCI likely to be
perceived as brand or product extensions.
The similarity of these marks also weighs in favor of finding a likelihood of
confusion.
C. The Goods, Channels of Trade, Classes of Consumers and the Variety
of Goods on Which Opposer’s Marks Are Used
Here, given the exceedingly wide range of goods and services Opposer offers under
its GUCCI Marks, it is appropriate to consider the goods, channels of trade and
classes of consumers (the second, third and fourth du Pont factors) along with “the
variety of goods on which a mark is or is not used” (the ninth factor). Indeed, the
goods Opposer offers under its GUCCI Marks range from handbags to vacuum
bottles, from business card cases to perfumes, from books to bubble bath, from
stationery to bicycle helmets, from eyewear to computer application software for all
mobile devices, from pet accessories to jewelry, from advertising services to bicycles,
from hats to retail and online store services, from money clips to automobiles, from
sunglasses to socks, from fur capes to umbrellas, from candle holders to pens and
from stylized animal containers to shaving preparations.
In other words, Opposer has a proven ability to offer, and a business practice of
offering, goods such as cars, bikes, pens, money clips, mobile apps and other products
no more different from the clothes and handbags for which Opposer is perhaps best
known than electronic cigarettes. See Gucci America v. Gucci, 2009 WL 8531026 at
Opposition Nos. 91223733 and 91223735
20
*17 (S.D.N.Y. 2009) (“the substantial similarity between the Gucci Trademarks and
the marks used by Defendants (i.e. the JENNIFER GUCCI name, the GEMMA
GUCCI name …) ‘entitles [Gucci’s] marks to protection over a broader range of
related products’”) … “because the Gucci Trademarks are ‘famous’ and ‘well known’
… [there is a] greater likelihood that use [of the JENNIFER GUCCI or GEMMA
GUCCI names] on noncompetitive products will cause confusion”) (citations omitted).
Therefore, it would not be a stretch, at all, for consumers to believe that Opposer --
which offers goods somewhat similar in kind or manufacturing requirements to
electronic cigarettes (including essential oils and pens) -- could offer electronic
cigarettes under the GUCCI Marks, given that it has already offered, if not
everything under the sun, then at least an atypically wide range of products and
services. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1195 (TTAB 2007)
(“The fact that opposer applies its marks to a variety of sports products makes it more
likely that purchasers, aware of opposer’s use of the mark on a variety of sports
products, when seeing a similar mark used in connection with backpacks, duffel bags
and other sports bags, are likely to believe that these products are also being produced
or sponsored by opposer.”); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1271 (TTAB 2003)
(“this factor may favor a finding that confusion is likely even if the goods are not
obviously related”); Uncle Ben’s Inc. v. Stubenberg Int’l Inc., 47 USPQ2d 1310, 1313
(TTAB 1998) (“Section 2(d) of the Trademark Act also covers situations where the
public, because of the similarity of the marks, is likely to believe that a recognizably
Opposition Nos. 91223733 and 91223735
21
different product, because of the similarity of the marks, emanates from, or is
authorized, sponsored or licensed by the prior user or registrant.”).
In considering the parties’ goods, we are mindful that they need not be identical
or even competitive in order to find likelihood of confusion. Rather, the question is
whether the goods are marketed in a manner that “could give rise to the mistaken
belief that [the] goods emanate from the same source.” Coach Servs., 101 USPQ2d at
1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See
also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical,
the consuming public may perceive them as related enough to cause confusion about
the source or origin of the goods and services.”); Recot, 54 USPQ2d at 1898 (“even if
the goods in question are different from, and thus not related to, one another in kind,
the same goods can be related in the mind of the consuming public as to the origin of
the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007).
Moreover, not only could the vast scope of Opposer’s goods and services offered
under the Gucci Marks, the familial relationship between Applicant’s and Opposer’s
namesakes, and the close similarity of the parties’ marks give rise to source confusion,
but we must also keep in mind the overwhelming fame of the GUCCI word and
“signature” marks. Indeed, fame is “a dominant factor” in our analysis, “independent
of the consideration of the relatedness of the goods.” Recot, 54 USPQ2d at 1898. See
also Bose Corp., 293 F.3d 1367, 63 USPQ2d at 1310 (“when a product reaches the
marketplace under a famous mark, special care is necessary to appreciate that
Opposition Nos. 91223733 and 91223735
22
products not closely related may nonetheless be confused as to source by the
consumer because of the fame of the mark”).
We are also mindful that while Opposer did not plead or prove that it owns a
“family” of GUCCI marks, “it is, nonetheless, appropriate to note that consumers who
may be familiar with various products in the [Gucci] product line, when confronted
with applicant’s mark, would be likely to view goods marked therewith as additional
products from [Opposer].” In re Hitachi High-Technologies Corp., 109 USPQ2d 1769,
1774 (TTAB 2014). Even “those who do notice the difference in the marks will not
necessarily conclude that there are different sources for the goods, but will see the
marks as variations of each other, pointing to a single source.” Id. This is especially
so because of the admitted “public knowledge” that Uberto Gucci is a member of the
famous Gucci family. See In re Collegian Sportswear Inc., 224 UPQ 174, 176 (TTAB
1984) (“we have considered the ‘OF CALIFORNIA’ portion of the mark but are of the
view that the addition of this term does not obviate likelihood of confusion since
customers familiar with registrant’s ‘COLLEGIENNE’ clothing might believe that
‘COLLEGIAN OF CALIFORNIA’ clothing was a new line of clothing from registrant
featuring a ‘California’ or west coast style”).
Furthermore, while Opposer is a famous “luxury” brand, known primarily for
expensive products, many of its identified goods, including essential oils for personal
use, money clips and pens, are without any limitations, in price, type of consumer, or
otherwise. Opposer offers bottles of nail polish for $29.00, fragrances for as low as
$68.00, and jewelry and accessories starting at less than $100.00. 23 TTABVUE 17
Opposition Nos. 91223733 and 91223735
23
(Iacuzzo Dec. ¶ 7). Based on Opposer’s identifications of these goods without
limitation, we must presume that Opposer could offer “money clips,” “pens” or
“essential oils for personal use” at a low price, to ordinary consumers, and run of the
mill consumer items such as these could be sold in, for example, convenience or drug
stores, which might also offer electronic cigarettes. We must base our decision on the
“least sophisticated potential purchasers” for the goods as identified. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163
(Fed. Cir. 2014) (quoting Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d
1584, 1600 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267
(TTAB 2014)).
Under these circumstances, consumers could very well assume that BY UBERTO
GUCCI is a new line of GUCCI-branded products. In fact, the differences between
what consumers will “smoke” through electronic cigarettes, and the essential oils for
personal use offered under FLORA BY GUCCI, are not so significant that consumers
would not assume an affiliation of some type between Applicant and Opposer. The
same is true of the difference between electronic cigarettes and the pens offered under
GUCCI. That is, the inputs, know-how and manufacturing (or licensing) abilities
needed to offer essential oils for personal use and pens, as Opposer does under its
GUCCI and FLORA BY GUCCI marks, would not be substantially different than
what would be required to offer an electronic cigarette or its contents, which is what
Applicant intends to do under its BY UBERTO GUCCI marks.
Opposition Nos. 91223733 and 91223735
24
In short, given the “known” family connection between Uberto Gucci and the
famous Gucci family, Opposer’s history and fame, the nature of the goods and
similarity of the marks, we find source confusion likely between, at the very least,
Applicant’s mark UBERTO BY GUCCI for electronic cigarettes, and Opposer’s marks
FLORA BY GUCCI for “essential oils for personal use” and “perfumes” (Reg. No.
3627729) and GUCCI for pens and moneyclips (Reg. Nos. 1093769 and 1200991). We
have found confusion likely in analogous circumstances. For example, ENYCE for
custom auto accessories was found confusingly similar to the same mark for clothing.
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (“it is common
knowledge, and a fact of which we can take judicial notice, that the licensing of
commercial trademarks on ‘collateral products’ has become a part of everyday life”).
And LLOYD’S OF LONDON for aftershave was found confusingly similar to the same
mark for insurance services. The Corporation of Lloyd’s v. Louis D’Or of France, Inc.,
202 USPQ 313 (TTAB 1979). The predecessor to our primary reviewing court affirmed
our finding that K2 for “filter cigarettes” is likely to be confused with the same mark
for “snow skis,” stating “[w]hile the goods involved may not be competitive or
intrinsically related, other factors” supported the finding. Philip Morris, Inc. v. K2
Corp., 555 F.2d 815, 194 USPQ 81, 82 (CCPA 1977). See generally, DC Comics v. Pan
Am. Grain Mfg. Co., 77 USPQ2d 1220, 1225-27 (TTAB 2005) (“Because opposer has
used KRYPTONITE as a merchandising mark with respect to a variety of goods;
because consumers recognize that, in the general marketing environment,
merchandising marks are used to identify a variety of goods and services; and because
Opposition Nos. 91223733 and 91223735
25
opposer has used the term KRYPTONITE in connection with the promotion of certain
food and beverage products, we find that, in the sense discussed in
the Recot and Hewlett Packard cases, applicant’s goods and opposer's goods are
related. In short, based on the above, we find that consumers, seeing KRIPTONITA
on prepared alcoholic fruit cocktails, are likely to believe that the mark has been
licensed by opposer for such goods, and that the goods are therefore sponsored by
opposer.”); Time Warner Entm’t. Co. v. Jones, 65 USPQ2d 1650, 1661-62 (TTAB 2002);
Harley-Davidson Motor Co., Inc. v. Pierce Foods Corp., 231 USPQ 857 (TTAB 1986)
(HARLEY-HOG for pork likely to be confused with HARLEY-DAVIDSON and
HARLEY for motor vehicles and a wide range of unrelated consumer products
including beverages and chocolate bars but not meat).8
While we must presume that Opposer’s goods as identified could be offered to
unsophisticated, ordinary consumers, at the same time we also have considered
Opposer’s evidence that electronic cigarettes are sometimes marketed as luxury
products, or to style-conscious consumers. In fact, third parties have attempted to use

8 After filing its involved applications, Applicant sought registration of the same marks
involved here for leather goods and clothing. 25 TTABVUE 134-36, 284-87. This may serve
to suggest a relationship between leather goods and clothing (which Opposer offers under its
marks) and electronic cigarettes. See generally Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990) (finding a relationship
between the applicant’s “modems” and the opposer’s “computer programs,” finding that the
relationship between the goods “is shown,” in part, “by [applicant’s] original application,
which indicates [applicant] itself used the mark OCTOCOM for both modems and computer
programs”).

Opposition Nos. 91223733 and 91223735
26
Opposer’s GUCCI Marks for electronic cigarettes and closely related products such
as “e-cigarette juice” (which is inhaled using an electronic cigarette), until receiving
cease and desist letters from Opposer. 23 TTABVUE 30 (Iacuzzo Dec. ¶ 48) and 802-
817. Perhaps not surprisingly, an article in Business Insider explains that a third-
party markets e-cigarettes which “double as necklaces” and have “all the style of your
designer handbag.” These electronic cigarettes are offered in flavors named to evoke
luxury, such as “Rodeo Drive”:

29 TTABVUE 51. These associations between electronic cigarettes and luxury goods
further support a finding that consumers encountering Applicant’s goods under
Applicant’s involved marks could be confused as to source. Indeed, the involved
applications identify “electronic cigarettes,” also without any limitations, meaning
that Applicant’s goods could include electronic cigarettes aimed at consumers of
luxury/designer goods, and Applicant’s electronic cigarettes could even “double as”
Opposition Nos. 91223733 and 91223735
27
jewelry, or have “all the style” of a designer handbag, or otherwise resemble products
for which Opposer’s GUCCI, GUCCI “signature” and other GUCCI marks are
registered. Consumers could also be confused because Opposer uses GUCCI for retail
jewelry (and other luxury goods) store services (Reg. No. 972078).
These factors also weigh in favor of finding a likelihood of confusion.
V. Conclusion
Because Opposer’s GUCCI and GUCCI “signature” marks are exceedingly famous
and strong, Applicant’s marks contain GUCCI preceded by the personal name of an
individual “known” be a member of Opposer’s founder’s family, the scope of products
offered under Opposer’s marks is so vast, and electronic cigarettes are sometimes
marketed as luxury or fashionable items, including under infringing GUCCI marks,
consumers could believe that Applicant’s goods come from the same source as, for
example, pens offered under the GUCCI mark in Registration No. 1093769, or
essential oils for personal use offered under the FLORA BY GUCCI mark in
Registration No. 3627729. Confusion is therefore likely.

Decision: The oppositions are sustained.9

9 We therefore need not reach Opposer’s dilution claim.