Movado LLCv.Davide Farina and Stefano Farina

Trademark Trial and Appeal Board

Mar 28, 2017

No. 91222400 (T.T.A.B. Mar. 28, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Movado LLC
v.
Davide Farina and Stefano Farina
_____

Opposition No. 91222400
_____

John P. Margiotta and Emily Weiss of Fross Zelnick Lehrman & Zissu, P.C.,
for Movado LLC
L. Jeremy Craft of Craft Chu PLLC,
for Davide Farina and Stefano Farina.
_____

Before Adlin, Goodman and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Davide Farina and Stefano Farina (“Applicants”) have applied to register the word
and design mark

Opposition No. 91222400
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(“FASHION” disclaimed) on the Principal Register for a variety of goods in
International Classes 9, 14, 18, and 25.1 This Opposition centers on Applicant’s Class
14 goods: “Rings; jewelry brooches; ornamental pins; bracelets; pendants; necklaces,
cufflinks; earrings; tie clips; medals and medallions; jewelry, including imitation
jewelry and plastic jewelry; horological and chronometric instruments and parts
thereof; key rings of precious metal; wristwatches.”
Movado LLC has opposed the registration for those goods on the ground of
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
with Opposer’s previously used and registered MOVADO marks. In its Notice of
Opposition, Opposer pleaded ownership of three registrations for such marks, and
attached copies obtained from the Trademark Status and Document Retrieval
(“TSDR”) database, thereby making them of record under Trademark Rule
2.122(d)(1):2
• Registration No. 1294171 for the mark MOVADO in typed format on the
principal Register for “watches and parts therefor” in International Class 14;3

1 Application Serial No. 79149825 was filed on March 21, 2014, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f, requesting extension of protection for International
Registration No. 1210618. The Application states that: “The English translation of ‘Movida’
in the mark is ‘Movement’” and includes this description of the mark:“The mark consists of
the wording ‘FASHION MOVIDA’ in which a circle appears over the letter ‘I’ in ‘MOVIDA’
and a design of a martini glass with a pair of headphones appearing inside a square with
curved corners appears to the left of all the wording.” Color is not claimed as a feature of the
mark.

2 Notice of Opposition ¶ 3 and Exhibit A, 1 TTABVUE 5, 8-18.
3 Issued on the Principal Register on September 11, 1984, Section 8 & 15 declarations
accepted and acknowledged; renewed. Prior to November 2, 2003, “standard character”
marks were known as “typed” drawings. A typed mark is the legal equivalent of a standard
Opposition No. 91222400
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• Registration No. 3785542 for the mark MOVADO in standard characters on
the Principal Register for “horological and chronometric instruments” in
International Class 14;4 and
• Registration No. 4166814 for the mark MOVADO BOLD in standard
characters on the Principal Register for “horological and chronometric
instruments” in International Class 14.5
In their Answer to the Notice of Opposition, Applicants admitted that Opposer is
identified in the USPTO databases as the owner of record for these registrations,6 but
denied all salient allegations of likelihood of confusion. They also raised affirmative
defenses of laches, acquiescence, and estoppel, which were not pursued at trial, and
are therefore waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107
USPQ2d 1750, 1753 (TTAB 2013) aff’d 565 F. Appx. 900 (Fed. Cir. 2014); TBMP §
801.01 (Jan. 2017). The opposition thus centers on the sole issue of whether
Applicants’ mark, as used on the identified goods in International Class 14, so
resembles one or more of Opposer’s pleaded registered marks as to be likely to cause
confusion or mistake, or to deceive the purchasing public. 15 U.S.C. § 1052(d).
I. Standing

Applicants do not challenge Opposer’s ownership of the registered marks of record
in this proceeding, and do not challenge Opposer’s standing to bring this opposition

character mark. Trademark Manual of Examining Procedure (“TMEP”) § 807.03(i) (Jan.
2017).
4 Issued on Dec. 16, 2008, Section 8 & 15 declarations accepted and acknowledged.
5 Issued on July 3, 2012.
6 Answer ¶ 3, 4 TTABVUE 2.
Opposition No. 91222400
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proceeding.7 Because Opposer’s registrations are of record, Opposer has a real
interest in this proceeding and a reasonable basis for its belief of damage. 15 U.S.C.
§ 1063; see Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000); Lipton Ind., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982). Opposer has thus established its standing. See Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025-26 (Fed. Cir. 1999).
II. The Record
The parties stipulated to the introduction of direct testimony by affidavit or
declaration, with exhibits attached, subject to the opposing party’s right to cross-
examine the witness. 7 TTABVUE. The Board approved the parties’ stipulation under
Trademark Rule 2.123(b), 37 CFR § 2.123(b). 8 TTABVUE.
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b),
Applicants’ application file, as well as the following:
A. Opposer’s evidence
• Declaration of Alan Chinich, President-Movado Brand for Movado Group,
Inc., Opposer’s parent company,8 attaching as exhibits:
1. Printouts from Movado’s website showing a selection of MOVADO watches
and other timepieces;

7 Applicants’ trial brief p. 13, 18 TTABVUE 14.
8 9 TTABVUE and 10 TTABVUE (confidential).
Opposition No. 91222400
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2. Printout from the New York Museum of Modern Art website describing the
modern artist Nathan George Horwitt’s design of the “Museum” line of
MOVADO watches, distinguished by the absence of hour markers on the
watch face and the presence of a single circular dot at the 12 o’clock position;
3. Photographs of Opposer’s watches showing the placement of the MOVADO
mark on the watches and hangtags;
4. Photographs of display of MOVADO brand watches in various retail
locations;
5. Spreadsheets showing media in which Opposer advertised its MOVADO
brand products from 2012 to 2015 and the advertisements that appeared in
such media;
6. Spreadsheet showing magazines in which MOVADO brand products were
advertised in 2012;
7. Representative samples of MOVADO’S print advertisements placed in
publications over the years;
8. Screenshots of Movado channels on Google+ and YouTube;
9. Representative samples of outdoor advertisements for MOVADO brand
products―on billboards, in airports, malls and sports stadiums, on transit
shelters and the tops of taxis, and adopt-a-highway signs;
10. Movado advertisements on the New York Post website, Spotify and
Facebook;
11. Web pages from Movado’s website;
Opposition No. 91222400
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12. Information from Google Analytics on the number of visitors to Movado’s
website;
13. Printouts from Movado’s social media accounts on Twitter, Instagram,
Pinterest, and Facebook;
14. Examples of Movado’s keyword advertising on Google;
15. Spreadsheet of Movado’s expenditures from fiscal year 2010 to fiscal year
2016 for MOVADO brand products;
16. Spreadsheet of U.S. retail accounts for MOVADO brand products;
17. Spreadsheet showing unit and dollar sales of MOVADO brand watches and
other timepieces in fiscal year 2015;
18. Selections from press coverage of MOVADO brand products, as well as
Movado-sponsored events and celebrity ambassadors;
19. Printouts from Movado’s website showing articles and editorials in which
MOVADO brand products have been sponsored;
20. USPTO records regarding Opposer’s three subject registrations;
21. Cease-and-desist letters and takedown notices sent by Movado and
responses in which the recipients agree to comply;
22. Movado’s Uniform Domain Name Dispute Resolution Policy (“UDRP”)
complaints and resulting decisions in its favor.
• Opposer’s Notice of Reliance on Applicants’ responses to Opposer’s
interrogatories, exhibit 23;9

9 11 TTABVUE.
Opposition No. 91222400
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• Opposer’s Notice of Reliance on printed publications under Trademark Rule
2.122(e), exhibits 24-94.10
B. Applicants’ evidence
• Declaration of Applicant Stefano Farina,11 attaching as exhibits:
1. William J. Nichols and H. Rosi Song, eds., “Back to the Future: Towards a
Cultural Archive of La Movida”―paper posted at Scholarship, Research,
and Creative Work at Bryn Mawr College (2014);
2. Records of Fashion Movida’s first sale in Italy;
3. Photographs of display of Applicants’ subject mark on goods;
4. Records of Applicants’ European Community registration of the subject
mark;
5. Records of Applicants’ Italian Registration of the subject mark.
• Applicants’ first Notice of Reliance on printed publications under Trademark
Rule 2.122(e) regarding the definition, translation, meaning and commercial
impression of the terms “Fashion” and “Movida”:12
6. Wikipedia encyclopedia entry “La Movida Madrilena”;
7. Merriam-Webster definition of “fashion,” Merriam-Webster.com;
8. Spanish to English translation of “movida” SpanishCentral.com 7/20/2016;
9. “Dictators, Punk Rock and Sex: A Conversation with Pedro Almodovar”
NPR.org/sections/altlatino/2013, 7/20/2016;

10 12 TTABVUE.
11 13 TTABVUE.
12 14 TTABVUE.
Opposition No. 91222400
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10. Event calendar description for educational seminar “La Movida Madrilena
(The Madrilenian Scene)” Missouri Southern State University,
MSSU.edu/calendar, 7/20/2016;
11. Website for bar and restaurant titled “Movida: The Food and Drink of
Spain” Movidamke.com, 7/20/2016;
12. Restaurant review titled “Movida in Walker’s Point inspired by Spain”
Milwaukee Journal Sentinel, JSOnline.com, 7/27/2016.
• Applicants’ second Notice of Reliance on printed publications under
Trademark Rule 2.122(e) regarding the definition, translation, meaning and
commercial impression of the terms “Fashion” and “Movida”:13
13. R. Spitz, “The New Spain”, Rolling Stone Magazine, 6/6/1985;
14. R. Song & Wm. Nichols, “El futuro ya estuvo aqui” Arizona Journal of
Hispanic Cultural Studies, vol. 13 2009;
15. H. Stapell, “Just a Teardrop in the Rain? The movida madrilena and
Democratic Identity Formation in the Capital, 1979-1986” Bulletin of
Spanish Studies, Vol. LXXXVI, No. 3, 2009;
16. R. Song & Wm. Nichols, “Back to the Future: Towards a Cultural Archive
of la Movida” Fairleigh Dickinson University Press, 2014.
III. Likelihood of Confusion
In view of Opposer’s pleaded registrations, priority is not an issue with respect to
the goods identified therein. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496

13 15 TTABVUE.
Opposition No. 91222400
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F.2d 1400, 182 USPQ 108 (CCPA 1974). In any event, Applicants are “not challenging
the Opposer has a priority as to the marks and goods covered by the Opposer’s
Registrations that are of record in this proceeding.”14
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence or argument, and have treated any other factors as neutral.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). Varying weights may be
assigned to each DuPont factor depending on the evidence presented. Citigroup Inc.
v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)
(factors “may play more or less weighty roles in any particular determination”).
Two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); Joel Gott Wines, LLC v. Rehoboth Van
Gott, Inc., 107 USPQ2d 1424, 1429 (TTAB 2013).

14 Applicants’ brief p. 13, 18 TTABVUE 14.
Opposition No. 91222400
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A. Similarity of the Goods, Channels of Trade, and Classes of Customers

We begin with the second and third DuPont factors, “[t]he similarity or
dissimilarity and nature of the goods … as described in an application or
registration,” and of “established, likely-to-continue trade channels.” DuPont, 177
USPQ 567. As to these factors, the parties are in agreement. Applicants state
unequivocally in their brief, “As to the similarity of the goods, Applicant agrees that
the parties’ goods in International Class 14 are identical and there are no recited
restrictions as to their channels of trade or classes of purchasers.”15 Since the goods
are admittedly identical under the second DuPont factor, and there are no restrictions
on channels of trade in either the Application or the Registration, it is presumed
under the third DuPont factor that Applicants’ goods and Registrant’s goods move in
the same channels of trade normal for those goods (such as timepiece and jewelry
retail stores) and are offered to the same classes of purchasers. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are
presumed to travel in same channels of trade to same class of purchasers) (citing
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002)).
The identity in the goods, the channels of trade through which they would be
distributed, and the classes of customers to whom they would be offered all weigh in
favor of finding a likelihood of confusion.

15 Applicant’s brief p. 13, 18 TTABVUE 14.
Opposition No. 91222400
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B. Similarity of the Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicants’ and Registrant’s marks as compared in their entireties, taking into
account their appearance, sound, connotation and commercial impression. DuPont,
177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “[T]wo marks may be found to be confusingly similar if there are
sufficient similarities in terms of sound or visual appearance or connotation.” In re
Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (emphasis in original; quoting
Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB
1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992)). Since the goods are identical, the
degree of similarity between the marks necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the goods. In re
Bay State Brewing, 117 USPQ2d 1958, 1960 (TTAB 2016).
1. Sight and Sound
Opposer argues that the most prominent part of Applicants’ mark,
is MOVIDA, which is “nearly identical” to Opposer’s
Opposition No. 91222400
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MOVADO mark.16
Applicants, on the other hand, contend that Opposer’s argument relies on a
dissection of their mark. See Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion”). When their mark is viewed in its entirety, as it would be in
a retail setting, Applicants claim that the design element provides a “distinctive
visual impression,” as with the distinctive design in In re Covalinski, 113 USPQ2d
1166 (TTAB 2014).17 Additionally, “the term ‘FASHION’ is the first word in
Applicants’ Mark and would draw a consumer’s initial attention and would be spoken
first.” Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
The MOVIDA element appears in a different font than Opposer’s “glyphic serif” or
“futura book” fonts:
Applicants maintain.18
And, according to Applicants, the parties’ respective marks are pronounced
differently: “Fash-In Moe-Vee-Dah” versus “Moe-Vah-Doh.19
We agree with Opposer, that even though marks must be considered in their
entireties, “[T]here is nothing improper in stating that, for rational reasons, more or

16 Opposer’s brief p. 31, 16 TTABVUE 33.
17 Applicants’ brief p. 17, 18 TTABVUE 18.
18 Applicants’ brief p. 28, 18 TTABVUE 29.
19 Applicants’ brief p. 21, 18 TTABVUE 22.
Opposition No. 91222400
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less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties.” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); In re Davia, 110 USPQ2d
1810, 1813 (TTAB 2014). Where, as here, a mark consists of words and a design, the
words are normally given greater weight because they would be used by consumers
to request the products. In re Viterra, 101 USPQ2d at 1908, 1911 (citing CBS Inc. v.
Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)); Joel Gott Wines, 107
USPQ2d at 1431. In re Covalinski, on which Applicants rely, involved a highly
stylized composite mark in which the design incorporated the words REDNECK
RACEGIRL:
20

Here, by contrast, MOVIDA is separate from and much larger than the design
element of Applicants’ composite word-and-design mark, and thus more likely to be
impressed on purchasers’ memories and used when requesting the goods. See Bd. of
Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1188 (TTAB
2014) (MINERS most visually prominent portion of composite mark).
“FASHION” may be the first word in Applicants’ mark, but it appears in much
smaller letters than MOVIDA, which is displayed far more prominently, as

20 In re Covalinski, 113 USPQ2d at 1169.
Opposition No. 91222400
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Applicants admit.21 Furthermore, “FASHION” is disclaimed as descriptive of
Applicants’ goods―watches and jewelry―thereby making MOVIDA the more
dominant term. See In re National Data Corp., 224 USPQ at 751 (“That a particular
feature is descriptive or generic with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion of a mark….”); In re
Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark’s commercial impression”). Since
Applicants’ mark would appear on identical goods, sold in the same channels of trade
to the same classes of consumers as the MOVADO brand goods in International Class
14, the word “FASHION” would be perceived as nothing more than a descriptive
modifier, much like “BOLD” in MOVADO BOLD.
Hence, we find that MOVIDA is the dominant portion of Applicants’ mark, and it
is very similar to MOVADO. As Opposer correctly observes, both terms, MOVIDA and
MOVADO, consist of three syllables, beginning with “MOV”, followed by a vowel, the
letter “D”, and another vowel. The only difference between the six-letter words
MOVIDA and MOVADO is the fourth and sixth vowels.22 Opposer’s pleaded marks
are registered in standard characters, so they are not limited to the “glyphic serif” or
“futura book” fonts; they could be displayed in any size, color, or font, including a font
identical to Applicants’ mark. See Citigroup Inc. v. Capital City Bank Group, 98
USPQ2d at 1258‒59; In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738,

21 Applicants’ brief p. 19, 18 TTABVUE 21.
22 Opposer’s brief p. 31, 16 TTABVUE 33.
Opposition No. 91222400
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1742-43 (TTAB 2016).23
There may be minor differences in the pronunciation of MOVIDA versus
MOVADO, but the average consumer normally retains a general rather than a
specific impression of trademarks, Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464 (TTAB 2016), and these marks sound sufficiently similar to engender
consumer confusion. See, e.g., Kabushiki Kaisha Hattori Seiko v. Satellite
International Ltd., 29 USPQ2d at 1318; Centraz Indus. Inc. v. Spartan Chem. Co., 77
USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that “there is no correct
pronunciation of a trademark” and finding ISHINE (stylized) and ICE SHINE, both
for floor finishing preparations, confusingly similar).
2. Connotation and Commercial Impression
Applicants contend that MOVADO and MOVIDA connote two different sorts of
movements. “MOVADO,” taken from the artificially constructed language Esperanto,
means “always in motion.”24 In the context of watches, it connotes “the constant
movement in a perpetual watch movement that is wound by a user’s wrist
movements, or to the actual watch movement itself,” Applicants argue,25 citing Presto
Products, 9 USPQ2d at 1897 (significance of mark must be determined in relation to

23 Opposer suggests that the circle above the letter “I” in calls to mind
the circle on the Movado Museum watch. Opposer’s brief p. 31n.4; 16 TTABVUE 33. But as
Applicants correctly note, the Movado Museum watch design is not pleaded in Opposer’s
Notice of Opposition. Applicants’ brief p. 19, 18 TTABVUE 21.
24 Opposer’s second Notice of Reliance, exhibit 94, The Movado History (F. Osterhausen,
1996), 12 TTABVUE 369.
25 Applicants’ brief pp. 24-25, 18 TTABVUE 25-26.
Opposition No. 91222400
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goods to which it is applied and context in which it is used, because that is how the
mark is encountered by purchasers).
In addition, MOVIDA is Spanish for “move” or “movement,”26 but a completely
different sort of movement. The “Movida” was a Spanish cultural awakening in the
mid-Seventies occasioned by the death of Generalissimo Francisco Franco―a new
freedom experienced by urban youth that transformed Madrid “into a cultural oasis,
where new music, crafts, intellectualism, drugs, free love, all-night clubs and
boundless idealism all became part of the daily scene much like San Francisco in the
Sixties.”27 “[L]a Movida, roughly defined as the underground cultural phenomenon of
the late 1970s and early 1980s that … came to epitomize change and the perceived
arrival of modernity in post-Franco Spain.”28 As part of this movement, sometimes
called “La Movida Madrilena,” “[y]oung artists, filmmakers, rock bands and
singers from different regions met in Madrid and started exploring with
freedom of expression and the transgression of taboos imposed by the Franco
Regime and Catholic Church. The only purpose of this countercultural
movement was to have fun after years of repression. This hedonistic pop culture
in its different expressions allowed young people to recreate a new reality far

26 Merriam-Webster, SpanishCentral.com, 7/20/2016, Applicants’ first Notice of Reliance 14
TTABVUE 15.
27 Applicants’ brief, pp. 25-26, 18 TTABVUE 26-27, quoting R. Spitz, “The New Spain”,
Rolling Stone Magazine, 6/6/1985, Applicants’ second Notice of Reliance 15 TTABVUE 6.
28 R. Song & Wm. Nichols, “Back to the Future: Towards a Cultural Archive of la Movida”
Fairleigh Dickinson University Press, 2014, Applicants’ second Notice of Reliance 15
TTABVUE 44.
Opposition No. 91222400
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away from anything related to the establishment.”29
“As such,” Applicants conclude, “the term ‘Movida’ in the Applicants’ Mark
translates to ‘Move’ or ‘Movement’ and has acquired the connotation in the U.S. of
describing the artistic, entertainment and cultural styles and trends of urban
youths.”30
The design element of their mark, , is designed to reinforce
this commercial impression to its target audience of youthful, fashion-conscious
consumers.
Applicants explain: (i) the sans serif stylized font is intended to symbolize modern popular culture; (ii) the outlined square with rounded corners design is intentionally similar to a mobile application icon so as to symbolize technology; (iii) the modern headphones design is intended to symbolize popular music, and
(iv) the martini glass design is intended to symbolize socializing.31
There is sometimes a difference, however, between a mark’s intended message
and its actual meaning in the eyes of the purchasing public. Applicant/Declarant

29 Event calendar description for educational seminar “La Movida Madrilena (The
Madrilenian Scene)” Missouri Southern State University, MSSU.edu/calendar, 7/20/2016,
Applicants’ first Notice of Reliance, 14 TTABVUE 30.
30 Applicants’ brief p. 26, citing the Declaration of Applicant Stefano Farina, ¶ 6, 13
TTABVUE 4; Wikipedia encyclopedia entry “La Movida Madrilena”, en.Wikipedia.org
7/20/2016, Applicants’ first Notice of Reliance, 14 TTABVUE 5; website and review of
Milwaukee bar and restaurant titled “Movida: The Food and Drink of Spain”
Movidamke.com, 7/20/2016, Applicants’ first Notice of Reliance 14 TTABVUE 32-40; R.
Spitz, “The New Spain”, Rolling Stone Magazine, 6/6/1985, Applicants’ second Notice of
Reliance 15 TTABVUE 6.
31 Applicants’ brief pp. 27-28, 18 TTABVUE 28-29, citing Farina Declaration ¶ 9, 13
TTABVUE 5.
Opposition No. 91222400
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Stefano Farina, an Italian citizen, proffers no qualifications or factual basis sufficient
to support his self-serving assertion that consumers in the United States would
perceive MOVIDA as a reference to the “La Movida Madrilena” counterculture
movement originating in Madrid in the mid-Seventies.32 The scant documentary
evidence Applicants adduce in support of this asserted connotation consists of a
Rolling Stone article from 1985, a Wikipedia entry on “La Movida Madrileña,” the
website for a restaurant in Milwaukee called “Movida” and a review of the restaurant,
plus a few recondite historical articles in academic journals. Tellingly, one of the
academic articles recounts the waning of the Movida as a countercultural movement:
As a ‘spontaneous’ culture movement encompassing film, the plastic arts,
music and a roaring nightlife, most observers have described the movida
as a brightly burning, but ultimately unimportant, youth or counterculture
that had no lasting political or cultural impact either on the capital or on
the country. As a result, since the 1980’s, academics, writers and
journalists, both inside and outside of Spain, have ignored or marginalized
the movida madrilena. Apart from the colourful and provocative films of
Pedro Almodovar, it has attracted little attention from Hispanists working
abroad.33

All in all, the evidence adduced by Applicants fails to establish that the purchasing
public in the United States would perceive the intended connotation to MOVIDA.
Applicants’ design element, may be cryptic at best to American consumers unfamiliar
with MOVIDA.
Applicant Stefano Farina admits in his declaration that “As I understand it, the

32 Farina Declaration ¶ 6, 13 TTABVUE 4.
33 H. Stapell, “Just a Teardrop in the Rain? The movida madrilena and Democratic Identity
Formation in the Capital, 1979-1986” Bulletin of Spanish Studies, Vol. LXXXVI, No. 3, 2009,
15 TTABVUE 18.
Opposition No. 91222400
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term ‘MOVADO’ is an arbitrary term with no recognized meaning.”34 Thus, MOVADO
and MOVIDA are both likely to be perceived as arbitrary elements, similar in sight
and sound, and no different in meaning. “As has been stated both by the Courts and
this Board, confusion or mistake is more likely to occur between coined or arbitrary
terms than between marks comprised of dictionary words having well-known or
established meanings….” GAF Corp. v. CIBA-GEIGY Ltd., 184 USPQ 255, 256 (TTAB
1974).

3. The Marks in Their Entireties
As Applicants posit, the parties’ marks must be compared in context, see Presto
Products, 9 USPQ2d at 1897, and they have, in this case, the same context: appearing
on identical goods traveling in the same channels of trade to the same classes of
customers. Overall, then, in sight, sound, meaning and commercial impression, the
parties’ marks are far more similar than dissimilar. For these reasons, the first
DuPont factor also weighs in favor of finding a likelihood of confusion.
C. Strength of Opposer’s mark
The fifth DuPont factor, fame of the prior mark, “plays a dominant role in cases
featuring a famous or strong mark. Famous or strong marks enjoy a wide latitude of
legal protection. … [T]he 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, Inc.

34 Farina Declaration ¶ 6, 13 TTABVUE 6.
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v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992) cited
in Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002). Fame for confusion purposes arises as long as a significant portion
of the relevant consuming public recognizes the mark as a source indicator. Palm Bay
Imports, 73 USPQ2d at 1694. “Fame may be measured indirectly by the volume of
sales of and advertising expenditures for the goods and services identified by the
marks at issue, the length of time those indicia of commercial awareness have been
evident, widespread critical assessments, notice by independent sources of the
products identified by the marks, and the general reputation of the products and
services.” In re Mr. Recipe, 118 USPQ2d at 1086 (quoting Bose, 63 USPQ2d at 1305-
06, 1309) (internal punctuation omitted).
While it avoids using the term “fame,” Opposer has adduced evidence sufficient to
show that its MOVADO marks are commercially strong for watches and other
timepieces. It has used the MOVADO brand for nearly ninety years in the United
States.35 Its annual sales, though confidential, are substantial, both in unit sales and
revenue.36 Its annual advertising expenditures, though also confidential, place it
among the top ten watch advertisers in the country.37 It advertises extensively in
magazines and newspapers, on television and the Internet.38 It posts outdoor

35 Declaration of Alan Chinich, President-Movado Brand for Movado Group, Inc., parent
company of Opposer Movado LLC ¶ 5, 9 TTABVUE 3.
36 Chinich Decl. ¶ 16-17, 9 TTABVUE 7, 10 TTABVUE 506-741 (confidential).
37 Chinich Decl. ¶ 15, 9 TTABVUE 6, 10 TTABVUE 503-504 (confidential), 12 TTABVUE 72-
75, 88-94.
38 Chinich Decl. ¶¶ 8-13, 9 TTABVUE 4-6, 12-96, 133-232, 234-239, 277-285, 305-454, 460-
469, 501-514.
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advertising at airports and transit stops, at busy intersections and highways, and on
the tops of taxis.39 It sponsors cultural institutions and events.40 And it receives
significant press coverage in national publications.41
Applicants do not dispute any of this evidence of market strength, responding only
that “While not an arbitrary mark or inherently distinctive, Applicant agrees that
Opposer’s Mark has obtained some level of strength as that term relates to a non-
coined and suggestive trademark.”42 That position is inconsistent with Applicant
Stefano Farina’s declaration that, to his understanding, “the term ‘MOVADO’ is an
arbitrary term with no recognized meaning.”43 Moreover, even if MOVADO were
suggestive, and not arbitrary, it would still be inherently distinctive. See generally
Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992)
(suggestive, arbitrary and fanciful marks are deemed inherently distinctive). In any
event, in view of the extensive evidence presented by Opposer, we find that the
MOVADO marks are commercially strong for the goods identified in its cited
registrations, so this factor also weighs in favor of finding a likelihood of confusion.
D. Actual Confusion
We next consider the seventh DuPont factor (nature and extent of any actual
confusion) and the related eighth DuPont factor (extent of the opportunity for actual

39 Chinich Decl. ¶ 11, 9 TTABVUE 5, 241-274.
40 Chinich Decl. ¶ 14, 9 TTABVUE 6, 476-478.
41 Chinich Decl. ¶ 17, 9 TTABVUE 7, 12 TTABVUE 13-202, 248-333.
42 Applicants’ brief p. 14, 18 TTABVUE 15.
43 Farina Declaration ¶ 6, 13 TTABVUE 6.
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confusion). DuPont, 177 USPQ at 567.
Applicants assert that they are unaware of any instances of consumer confusion
engendered by the parties’ use of their respective marks, even though Applicants
have used their mark in Italy and throughout Europe since at least as early as
February 26, 2014.44 They add, however, that “Applicants have not sold or marketed
any products or services in the United States in connection with the Applicants’
Mark, nor have they otherwise used this mark in the United States.”45
The seventh and eighth DuPont factors are interrelated; for the absence of actual
confusion to be probative, there must have been a reasonable opportunity for
confusion to have occurred. Barbara's Bakery Inc. v. Landesman, 82 USPQ2d 1283,
1287 (TTAB 2007); see also Citigroup Inc. v. Capital City Bank Group, 94 USPQ2d at
1660, aff’d. 98 USPQ2d at 1259. In this case, the alleged absence of actual confusion
in Europe lacks probative value because it is foreign. Moreover, Applicants have
admittedly not used their mark in the United States. Consequently, the evidence does
not indicate a reasonable opportunity for confusion to have occurred, and the absence
of confusion does not suggest that confusion is unlikely. For these reasons, the
seventh and eighth DuPont factors are neutral.
IV. Conclusion
In sum, the parties’ goods are identical and are presumed to travel through the
same trade channels and be purchased by the same classes of consumers. Opposer’s
MOVADO marks are conceptually and commercially strong in connection with the

44 Applicants’ brief p. 10, 18 TTABVUE 11, citing Farina Decl. ¶¶ 11,15, 13 TTABVUE 5-6.
45 Applicants’ brief p. 11, 18 TTABVUE 12, citing Farina Decl. ¶ 11, 13 TTABVUE 5.
Opposition No. 91222400
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goods identified in its cited registrations. The parties’ marks, taken in their
entireties, are more similar than dissimilar. Taking the record evidence as a whole,
including the portions of the record evidence we have not expressly mentioned, we
find by a preponderance of the evidence that there is a likelihood of confusion between
Applicants’ applied-for mark and Registrant’s registered marks under Section 2(d).
Decision: The opposition to Applicants’ mark for
Applicants’ Class 14 goods is sustained.