Nina Ricci, S.A.R.Lv.Nicci

Trademark Trial and Appeal Board

Sep 12, 2000

No. 91096361 (T.T.A.B. Sep. 12, 2000)

Paper No. 34
CEW
9/12/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Nina Ricci, S.A.R.L.
v.
Nicci
_______
Opposition No. 96,361
to Application No. 74/450,385
filed on October 21, 1993
_______
William S. Frommer and Marilyn Matthes Brogan of Frommer,
Lawrence & Haug for opposer.
Fred Sharifi, President of Nicci, pro se for applicant.
_______
Before Hanak, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Nina Ricci S.A.R.L. filed its opposition to the
application of Nicci, a California Corporation, to register
the mark shown below for “men’s and women’s clothing,
namely, shirts, skirts, pants, jackets, suits, vests,
dresses and shorts” in International Class 25.1

1 Application Serial No. 74/450,385, filed October 21, 1993, based upon
use of the mark in commerce, alleging dates of first use and first use
in commerce as of September 25, 1993.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 96,361
2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used trade name NINA RICCI
and previously used and registered marks NINA RICCI and
SIGNORICCI, for the goods indicated below, as to be likely
to cause confusion, under Section 2(d) of the Trademark
Act.
NINA RICCI
For “outer garments, namely, gowns, dresses,
skirts, blouses, slacks, coats and
raincoats,” in International Class 25.2
For “women’s hosiery, lingerie, brassieres, and
girdles; shoes, hats, scarves and ties,” in
International Class 25.3

2 Registration No. 1,751,360, issued February 9, 1993. [Sections 8 and
15 affidavits accepted and acknowledged, respectively.]
3 Registration No. 923,259, issued November 2, 1971. The registration
includes the statement “Nina Ricci is the name of a founder of the
applicant, now deceased. [Renewed for a term of ten years from
November 2, 1991; Sections 8 and 15 affidavits accepted and
acknowledged, respectively.]
Opposition No. 96,361
3
For “eyeglasses and sunglasses,” in
International Class 9; “diamonds and jewelry
of precious metals and imitation jewelry,
namely, necklaces, bracelets, earrings; and
watches,” in International Class 14;
“articles of skins, namely, valises, record
cases for keeping files and written records,
suitcases, handbags, portfolios, umbrellas,”
in International Class 18; “wash cloths and
wash gloves,” in International Class 24;
“women’s hosiery, bathrobes, lingerie,
brassieres, girdles, shoes, hats, scarves
and ties,” in International Class 25.4
SIGNORICCI
For “ties, neckwear, and handkerchiefs,” in
International Class 25.5
Applicant, in its answer, admitted opposer’s
paragraphs 1 – 4 and 10 of its notice of opposition,
namely, opposer’s statements regarding its ownership and
use of the above-identified trade name and trademarks, and
the registrations therefor; that opposer has spent
substantial sums of money publicizing and advertising its
NINA RICCI trade name and trademarks in connection with
high quality goods, and thus, NINA RICCI is strongly
associated with those goods and has a strong reputation;
and that opposer’s use of its NINA RICCI marks predates

4 Registration No. 1,126,345, issued October 30, 1979. [Renewal
application filed. Sections 8 and 15 affidavits accepted and
acknowledged, respectively.]
5 Registration No. 835,987, issued September 26, 1967. [Renewed for a
period of twenty years from September 26, 1987; Sections 8 and 15
affidavits accepted and acknowledged, respectively.]
Opposition No. 96,361
4
opposer’s use of its mark. Applicant denied the remaining
allegations of the claim.
The Record
The record consists of the pleadings; the file of the
involved application; certified status and title copies of
opposer’s pleaded registrations, made of record by
opposer’s notice of reliance; and the testimony deposition
on written questions by opposer of Pierre Hemar, opposer’s
Chief Executive Officer. Applicant did not file any
evidence in this case. Only opposer filed a brief, as
amended, on the case and an oral hearing was not requested.
The Parties
Mr. Hemar testified that opposer is a fashion house
that manufactures and sells a wide variety of products,
including, perfumes, cosmetics, clothing and accessories;
that NINA RICCI has been, and continues to be, used as a
trade name and as a trademark on its products in the United
States; and that SIGNORICCI is used as a trademark on
apparel in the United States. Applicant admitted that
opposer’s NINA RICCI mark is used in connection with high
quality goods and that it has a strong reputation. There
is no evidence in the record regarding applicant.
Opposition No. 96,361
5
Analysis
Inasmuch as applicant has admitted opposer’s priority
and certified copies of opposer’s registrations are of
record, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are 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). Key considerations in this case are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
With respect to the goods of the parties, the question
of likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods identified in
applicant’s application vis-à-vis the goods identified in
the registrations, rather than what the evidence shows the
goods to be. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
Opposition No. 96,361
6
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and
The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991).
There is a substantial overlap in the goods identified
in the application and in opposer’s Registration No.
1,751,360 for the mark NINA RICCI. Applicant’s goods
identified as “shirts, skirts, pants and dresses” are
essentially identical to the goods identified as “dresses,
skirts, blouses and slacks,” and applicant’s “jackets” are
closely related to opposer’s “coats and raincoats”
identified in the same registration. Thus, we conclude
that the applicant’s goods are either identical or closely
related to opposer’s goods identified in Registration No.
1,751,360.
Although both parties indicate that opposer’s goods
sold under its marks are of a higher quality than
applicant’s products sold under its mark, both opposer’s
and applicant’s identifications of goods are broadly
worded, without any limitations as to the nature of the
goods, the channels of trade or the classes of purchasers.
Thus, we must presume that the goods of applicant and
opposer encompass the complete spectrum of qualities of the
identified goods; and that these goods are sold in all of
Opposition No. 96,361
7
the normal channels of trade to all of the usual purchasers
for goods of the type identified. See Canadian Imperial
Bank v. Wells Fargo, supra. In other words, we conclude
that, with regard to opposer’s Registration No. 1,751,360,
the parties’ goods are the same and closely related, and
the channels of trade and class of purchasers are the same.
Turning to the marks, applicant’s mark is the word
NICCI with minimal stylization. Considering opposer’s NINA
RICCI mark, NICCI rhymes with the second word in opposer’s
mark, RICCI, and begins with the same letter as the first
word in opposer’s mark, NINA. Considered in their
entireties, we conclude that, in view of these
characteristics, applicant’s mark, NICCI, is so similar in
commercial impression to opposer’s mark, NINA RICCI, that
prospective purchasers are likely to believe that NICCI is
a line of products sponsored by NINA RICCI when used on the
same, similar or related goods. This is particularly true
when we consider that, due to the consuming public’s
fallibility of memory, the emphasis is on the likely
recollection of the average customer, who normally retains
a general rather than a specific impression of trademarks.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992);
and In re Steury Corporation, 189 USPQ 353 (TTAB 1975).
Opposition No. 96,361
8
In conclusion, in view of the substantial similarity
in the commercial impressions of applicant’s stylized mark,
NICCI, and opposer’s mark, NINA RICCI, in Registration No.
1,751,360, their contemporaneous use on the same and
closely related goods involved herein is likely to cause
confusion as to the source or sponsorship of such goods.
In view thereof, it is unnecessary for us to consider the
issue of likelihood of confusion with respect to opposer’s
other pleaded registrations.
Decision: The opposition is sustained.
E. W. Hanak
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board