Valentino S.p.A.v.Matsuda & Co.

Trademark Trial and Appeal Board

Jul 18, 2012

No. 91179386 (T.T.A.B. Jul. 18, 2012)

Hearing: February 14, 2012 Mailed: July 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Valentino S.p.A.

v.

Matsuda & Co.
_____

Opposition Nos. 91174169, 91174171, 91174183,
91174195, 91174315, and 91179386
To applications Serial Nos. 78651057, 78651257,
78651011, 78651198, 78651123, and 78651156
_____

G. Franklin Rothwell, Anne M. Sterba, and Jenny L. Workman
of Rothwell, Figg, Ernst & Manbeck P.C. for Valentino S.p.A.

Anne Hiaring Hocking of Hiaring + Smith, LLP for Matsuda & Co.
______

Before Bucher, Wolfson and Lykos, Administrative Trademark
Judges.

Opinion by Wolfson, Administrative Trademark Judge:

On June 15, 2005, Matsuda & Co. (“applicant”) filed six
applications for the mark shown below for goods in
International Classes 9, 14, 18, 24, 25, and 28.1

1 Serial No. 78651057 was filed for “watches”; Serial No.
78651257 for “sporting equipment, namely, golf clubs, golf irons,
golf bags”; Serial No. 78651011 for “spectacles”; Serial No.
78651198 for “clothing, namely, clothing tops, blouses, shirts,
sweaters, cardigans, blazers, coats, suits, tuxedos, vests, suit
coats, sport coats, top coats, jackets, parkas, jeans, slacks,
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
2

The applications were filed under Section 44(e) of the
Trademark Act of 1946, 15 U.S.C. § 1126(e), on the basis of
applicant’s Japanese registrations for the marks. The
applications include various “Name Portrait Consent”
statements stating that “VALENTINO RUDY” identifies a
particular individual who is deceased.
Valentino S.p.A. (“opposer”) opposes the registration
of applicant’s marks on the grounds of priority of use and
likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). Specifically, opposer alleges
that it is the owner of the previously used and registered

dungarees, pants, trousers, shorts, skirts, culottes, jumpsuits,
dresses, evening gowns, kimonos, stoles, shawls, fur coats and
jackets, leather and wind resistant jackets, gowns, tunics, t-
shirts, polo shirts, sweatshirts, sweatpants, sweat suits, warm-
up suits, bathrobes, jogging suits, socks, pocket squares,
gloves, mittens, hosiery, stockings, tights, leggings, leotards,
belts, headwear, neckwear, sleepwear, underwear, loungewear,
beachwear, swim wear, rainwear, tennis wear and footwear, all for
men, women and children”; Serial No. 78651123 for “umbrellas,
walking sticks and accessories, namely, replacement handles for
walking sticks”; and Serial No. 78651156 for “clothing fabric,
synthetic and non-synthetic fabric except tatami hem, synthetic
and non-synthetic fabric for use as tatami hem, knitted fabrics,
felt and unwoven fabric for textile use, oil cloth, rubber water-
proof cloth for textile use, vinyl cloth for textile use, rubber
cloth for textile use, fabric goods, namely, kitchen towel,
mosquito-net, bed sheets, comforter, duvet, fabric for bedding
cover, pillow case, bed blanket, fabric tapestry, curtain, table
cloth, thick curtain, shower curtain, black and white curtain,
red and white curtain, fabric labels, cloth Nobori flags, namely
flags for parades, sports, music and all kinds of events; filter
cloth for use in filtering water in cooking and other purposes,
cloth flags.”
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
3
marks VALENTINO, VERY VALENTINO, VALENTINO and “V” design,
and VALENTINO GARAVANI and “V” design for clothing and
related accessories,2 and that applicant’s marks so resemble

2 Opposer’s pleaded registrations are:
Reg. No. 0901896 for the mark VALENTINO for “eau de cologne”;
registered November 3, 1970; renewed.
Reg. No. 0910955 for the mark VALENTINO for “articles of
clothing and accessories-namely, dresses, belts, gloves, scarves,
swimwear, and ties”; registered April 6, 1971; renewed.
Reg. No. 0916465 for the mark VALENTINO for “fashion
consultation services-namely, creating clothing, jewelry, and
accessory designs and selection of designs and materials for
couture clientele”; registered July 13, 1971; renewed.
Reg. No. 0956665 for the mark VALENTINO for “retail department
store services”; registered April 3, 1973; renewed.
Reg. No. 1140394 for the mark VALENTINO for “umbrellas and
parasols”; registered October 14, 1980; renewed.
Reg. No. 1268029 for the mark VALENTINO for “articles of
clothing and accessories-namely, jumpers, sweaters, dresses,
skirts, blouses, suits, jackets, coats, shirts, trousers, vests,
jeans, slacks, shorts, swimwear, hats, lingerie, ties, belts,
scarves, hosiery and gloves”; registered February 21, 1984;
renewed.
Reg. No. 1418315 for the mark VALENTINO
GARAVANI V and design, as shown at right,
for “costume jewelry”; registered November
25, 1986; renewed.
Reg. No. 1419190 for the mark VALENTINO
GARAVANI V and design, as shown at right,
for “valises, garment bags for travel,
handbags, shoulder bags, clutch bags, brief
cases, attaché cases, umbrellas, and small leather goods --
namely, passport cases, wallets, key cases, billfolds, vanity
cases sold empty and credit card holders”; registered December 2,
1986; renewed.
Reg. No. 1422015 for the mark VALENTINO GARAVANI V and design,
as shown above, for “articles of clothing -- namely, belts,
scarves, gloves, boots, shoes and slippers”; registered December
23, 1986; renewed.
Reg. No. 2312756 for the mark VALENTINO for “spectacle frames
and sunglasses”; registered February 1, 2000; renewed.
Reg. No. 2286240 for the mark VERY VALENTINO for “perfume, eau
de parfum, eau de toilette, body lotion, deodorant and bath and
shower gel”; registered October 12, 1999; renewed.
Reg. No. 2755270 for the mark V VALENTINO GARAVANI and design
for “retail store services featuring clothing, eye glasses and
sunglasses, watches leather or imitation leather articles such as
bags, purses, briefcases, address books, journals, and shoes”;
registered August 26, 2003; Section 8 (6-year) accepted & Section
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
4
opposer’s registered marks as to be likely to cause
confusion, mistake, or deception among purchasers.3 Opposer
has withdrawn its originally pleaded dilution claims.
Applicant has denied the salient allegations in the
notices of opposition. The cases were consolidated on April
3, 2008, and have been presented on the same record and
briefs.
The Record
By rule, the record includes applicant’s application
files and the pleadings. Trademark Rule 2.122(b), 37 CFR
§ 2.122(b).
The parties stipulated that they “may introduce
testimony by written declaration, if so desired.”4 Pursuant

15 acknowledged.
Reg. No. 2880581 for the mark V VALENTINO GARAVANI for
“handbags, shoulder bags, clutch bags, wallets; articles of
clothing, namely, belts, scarves, gloves, boots, shoes”;
registered September 7, 2004; partial Sections 8 (6-year) and 15
combined declaration accepted and acknowledged.
Reg. No. 2826869 for the mark VALENTINO GARAVANI for “spectacle
frames and sunglasses; men's and women's watches”; registered
March 30, 2004; partial Sections 8 (6-year) and 15 combined
declaration accepted & acknowledged.
Reg. No. 1153226 for the mark VALENTINO for “men's clothing-
namely, suits, sport jackets, overcoats, shirts, trousers,
bermuda shorts, and bathing suits”; registered May 5, 1981;
renewed.
Reg. No. 1268030 for the mark V VALENTINO
and design as shown at right for “articles
of clothing and accessories-namely,
jumpers, sweaters, dresses, skirts,
blouses, suits, jackets, coats, shirts, trousers, vests, jeans,
slacks, shorts, swimwear, hats, lingerie, ties, belts, scarves,
hosiery and gloves”; registered February 21, 1984; renewed.
3 In the notices of opposition, opposer alleges prior use of the
mark R.E.D. VALENTINO, but inasmuch as opposer did not rely on
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
5
to the above-noted stipulation, each party introduced
testimonial declarations into evidence during its respective
testimony period, and opposer introduced a testimonial
declaration during its rebuttal period.
Opposer’s Record
Opposer’s record consists of the testimonial deposition
of Carmine Pappagallo, opposer’s chief financial officer,
with accompanying exhibits; the declaration testimony of
Stephen Dougherty, an employee in opposer’s counsel’s
office, with accompanying exhibits; notices of reliance on
third-party registrations; and applicant’s answers to
selected discovery requests. During its rebuttal period,
opposer filed the cross-examination testimony deposition of
Ellen Bass, an associate of counsel at applicant’s counsel’s
firm, with accompanying exhibits; the cross-examination
declaration testimony of Eri Matsumura, applicant’s Manager,
with an exhibit; and notices of reliance on official
documents and additional responses to discovery requests.
Applicant’s Record
Applicant’s record consists of the declaration
testimony of Ellen Bass with accompanying exhibits;5 the

the mark at trial or mention it in its briefs, we have not
included it in our discussion under Section 2(d), infra.
4 Joint Stipulation for Declaration Testimony, p. 1.

5 Exhibits L-T of Ms. Bass’s declaration have not been
considered. See Board order dated September 27, 2010.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
6
declaration testimony of Eri Matsumura with accompanying
exhibits; and the declaration testimony of applicant’s
counsel with accompanying exhibits. Applicant also filed
notices of reliance on official documents and printed
publications.6
Evidentiary Objections
Objections by Opposer
In an appendix to its brief on the case, opposer
objected to the admission of certain declaration testimony
and documentary evidence proffered by applicant.
Specifically, opposer objects to the introduction of Exhibit
B from Ms. Matsumura’s declaration as hearsay being
proffered for the truth of the matter asserted, and exhibits
I and J to the declaration on the basis that they are
irrelevant.
With respect to exhibit B, an article about Valentino
Rudy, inasmuch as it has been properly made of record by way
of Ms. Matsumura’s declaration, it is at least admissible
for what it shows on its face and that the public has been
exposed to the article and may be aware of the information
contained therein. Turning to exhibits I and J (a list of
registrations in China and Vietnam that have apparently
expired, copies of what appears to be foreign registration

6 Applicant’s notice of reliance No. 9 is in the record; Nos. 1-8
have been stricken. See Board order dated September 27, 2010.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
7
certificates, and decisions from foreign trademark offices),
while properly admitted under notice of reliance as relevant
to the issues herein, they are of no real probative value,
and have been given no weight. See, e.g., In re Bayer
Aktiengesellschaft, 82 USPQ2d 1828 (Fed. Cir. 2007)
(evidence of registration of ASPIRINA in another country is
of little value to our analysis of its entitlement to
protection in the United States).7
Opposer further objects to the entirety of Ms.
Hocking’s declaration, including exhibits 1-8, as being
irrelevant. The declaration was utilized by applicant to
introduce copies of TARR printouts of several trademark
applications. To the extent that these are of applications
involved in this proceeding, such was unnecessary; the file
histories of applicant’s involved applications are already
of record. See Trademark Rule 2.122(b)(1). As to the
remainder, they have been considered, but only as showing
that the applications were filed. See Glamorene Products
Corp. v. Earl Grissmer Co., Inc, 203 USPQ 1090, 1092, n.5
(TTAB 1979)(“copies of … applications or the publication
thereof in the Official Gazette is evidence only of the
filing of the applications and nothing else.”).

7 We have also given no weight to opposer’s exhibits H-1 to H-8,
which are copies of foreign court decisions allegedly involving
the parties’ marks.

Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
8
Finally, opposer’s objection to Ms. Bass’s declaration
exhibits C-F, I, and K on the ground that they were not
produced during discovery is overruled. During discovery,
opposer sought information about “any and all” third-party
uses of the term VALENTINO “ever known.” Applicant replied
that it was unable to identify all third-party uses “ever
known,” but did identify those of which it was “currently
aware … that use the term VALENTINO for clothing and related
products,” adding, “There may be other uses of the common
Italian name ‘Valentino’ for other purposes.” While we do
not condone applicant’s failure to timely supplement its
discovery responses, we do not believe that applicant’s
delay unduly prejudiced opposer. See Rocket Trademarks Pty
Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1071-72 (TTAB
2011)(objection to evidence of third-party use overruled;
any prejudice can be eliminated or minimized during rebuttal
testimony period). Accordingly, we have considered these
exhibits and the testimony pertaining thereto.
We further note that in its rebuttal brief, opposer
objects to two exhibits (exhibit B, a copy of an Office
action from the file history of Serial No. 76184572 for the
mark VALENTINO and “V” design; and pages 2, 4 and 6 of
exhibit C, copies of mock-ups of opposer’s products affixed
with applicant’s mark) that were introduced for the first
time as attachments to applicant’s trial brief. Insofar as
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
9
the materials contained therein were not properly introduced
at trial, we have not considered them. See, e.g., Syngenta
Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116
(TTAB 2009); TBMP § 704.05(b)(3d ed. rev. 2012)(“Exhibits
and other evidentiary materials attached to a party’s brief
on the case can be given no consideration unless they were
properly made of record during the time for taking
testimony.”).
Objections by Applicant
Applicant objects to the introduction of opposer’s
exhibit C, pages 1-1239 (printed publications), exhibits D1-
D29 (third-party registrations), and exhibits E2-E7 of Mr.
Pappagallo’s testimony to the extent they may be relied upon
for the truth of the matters asserted therein. The exhibits
were properly submitted under notice of reliance or during
Mr. Pappagallo’s deposition and are thus admissible for what
they show on their face and for the effect they would have
on the relevant public. They have not been considered for
the truth of any matter asserted therein.
Applicant states a further objection to the
introduction of portions of exhibits E1 and E12 of Mr.
Pappagallo’s testimony on the grounds of lack of personal
knowledge under Fed. R. Evid. 602 and lack of proper
foundation and authentication under Fed. R. Evid. 901. See
Applicant’s Appendix A, Obj. 6-7. However, based on
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
10
applicant’s arguments, it is apparent that applicant’s
objection relates to exhibits E2-E7 and not exhibits E1 and
E12. Accordingly, we treat this objection as one going to
exhibits E2-E7. With respect to those exhibits, Mr.
Pappagallo testified to the authenticity of the copies and
that the originals of these exhibits were either lost or
misplaced.8 Accordingly, we will accept the copies as
evidence. We also have considered applicant’s objection
grounded on lack of personal knowledge, and, when
appropriate, have weighed the evidence in light of the
objection.
Suffice it to say that we have considered the entire
record with an eye on the parties’ objections, and accorded
the evidence whatever probative weight it merits.
Standing
Because opposer has properly made its pleaded
registrations of record, opposer 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).
Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the

8 Pappagallo Dep., p. 146.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
11
marks and the goods covered by the registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). Moreover, the evidence of record
shows that opposer has used the mark VALENTINO since at
least 1992,9 well before the June 15, 2005, filing date of
applicant’s application, which is the earliest date on which
applicant can rely.10
Likelihood of Confusion
We now turn to the issue of likelihood of confusion
with respect to opposer’s marks VALENTINO, VERY VALENTINO,
VALENTINO and “V” design, and VALENTINO GARAVANI and “V”
design. We have focused our likelihood of confusion
analysis in this decision on the registered mark VALENTINO,
which forms the dominant word portion of each of opposer’s
other marks. If applicant’s mark VALENTINO RUDY so
resembles opposer’s word mark VALENTINO that confusion as to
source would be likely, we need not address whether there is
a likelihood of confusion between applicant’s mark and
opposer’s other pleaded marks, although where relevant, we
have addressed the other marks. Conversely, if there is no

9 Mr. Pappagallo testified that opposer first used the mark
VALENTINO in the 1960’s, Dep., p. 14, but the earliest records
show advertising and sales in 1992. See Pappagallo Dep., p. 27,
Exhibit E4.
10 See applicant’s response to request for admissions No. 1:
“Admit that June 15, 2005 is the earliest date for which Matsuda
can rely, for priority purposes, in this opposition proceeding.
Response: Admit.”

Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
12
likelihood of confusion when the marks VALENTINO and
VALENTINO RUDY are compared, there will be no likelihood of
confusion when comparing applicant’s mark to opposer’s other
pleaded marks.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 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.
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”).
Similarity of Goods; Trade Channels; Purchasers
We first turn our attention to a comparison of the
similarity or dissimilarity and nature of the goods
described in the applications and registrations.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
13
We base our evaluation on the goods as they are
identified in the registration and application. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not
necessary that the respective goods be identical or even
competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984). The goods need only be sufficiently related
that consumers would be likely to assume, upon encountering
the goods under similar marks, that the goods originate
from, are sponsored or authorized by, or are otherwise
connected to the same source. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The goods identified in application Serial Nos.
78651011, 78651123, and 78651198 are identical to those of
Reg. Nos. 2312756, 1140394, 0910955 and 1268029, all for the
mark VALENTINO, as follows:
Serial No. 78651011 covers “spectacles” and Reg. No.
2312756 covers “spectacle frames and sunglasses.”
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
14
Serial No. 78651123 covers “umbrellas, walking sticks
and accessories, namely, replacement handles for walking
sticks” and Reg. No. 1140394 covers “umbrellas and
parasols.”
Serial No. 78651198 covers:
clothing, namely, clothing tops, blouses, shirts,
sweaters, cardigans, blazers, coats, suits,
tuxedos, vests, suit coats, sport coats, top
coats, jackets, parkas, jeans, slacks, dungarees,
pants, trousers, shorts, skirts, culottes,
jumpsuits, dresses, evening gowns, kimonos,
stoles, shawls, fur coats and jackets, leather and
wind resistant jackets, gowns, tunics, t-shirts,
polo shirts, sweatshirts, sweatpants, sweat suits,
warm-up suits, bathrobes, jogging suits, socks,
pocket squares, gloves, mittens, hosiery,
stockings, tights, leggings, leotards, belts,
headwear, neckwear, sleepwear, underwear,
loungewear, beachwear, swim wear, rainwear, tennis
wear and footwear, all for men, women and children

and Reg. Nos. 0910955, 1268029 and 1153226 cover,
respectively, “articles of clothing and accessories-namely,
dresses, belts, gloves, scarves, swimwear, and ties”;
“articles of clothing and accessories-namely, jumpers,
sweaters, dresses, skirts, blouses, suits, jackets, coats,
shirts, trousers, vests, jeans, slacks, shorts, swimwear,
hats, lingerie, ties, belts, scarves, hosiery and gloves”;
and “men’s clothing-namely, suits, sport jackets, overcoats,
shirts, trousers, bermuda shorts, and bathing suits.”
Clearly, identical goods are related for purposes of
finding a likelihood of confusion. Moreover, “[l]ikelihood
of confusion may be found based on any item that comes
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
15
within the identification of goods in the involved
application and registration.” In re La Peregrina Ltd., 86
USPQ2d 1645, 1647 (TTAB 2008).
In addition, the goods in Serial No. 78651057,
“watches,” are identical to those in opposer’s registration
No. 2826869 for the mark VALENTINO GARAVANI and “V” design
for “men’s and women’s watches.” Moreover, Mr. Pappagallo
testified that in 2004, “Valentino USA was also distributing
accessories” and he specifically mentions “fragrances,
watches, sunglasses.”11
Turning to Serial No. 78651156, the goods include
several different types of fabric, such as “clothing fabric”
and “knitted fabric,” as well as “kitchen towel,” “bed
sheets, comforter, duvet, fabric for bedding cover, pillow
case, bed blanket,” and “curtain, table cloth, thick
curtain, shower curtain, black and white curtain, red and
white curtain.” These goods are identical to those in
opposer’s registration No. 2826869 for the mark VALENTINO
GARVANI and “V” design, which covers, inter alia, “textile
fabrics for use in the manufacture of clothing, bed linen,
bed blankets, curtain, and kitchen towels.” While Mr.
Pappagallo testified that opposer never sold fabric goods,12
in comparing the goods identified in the application and in

11 Pappagallo Dep., p. 63.
12 Pappagallo Dep., pp. 117-119.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
16
the cited registration, “ … it is the identification of
goods that controls, not what extrinsic evidence may show
about the specific nature of the goods.” Peregrina, 86
USPQ2d at 1646.
Next, we consider Serial No. 78651257, which covers
“sporting equipment, namely, golf clubs, golf irons, golf
bags.” Opposer does not use the VALENTINO mark on golf
clubs, golf irons, or golf bags,13 and none of the
registrations cover these goods. To show that the goods on
which opposer uses its VALENTINO mark are related to
applicant’s sporting equipment, opposer introduced copies of
third-party registrations based on use, for marks owned by a
single entity that cover both clothing items of the type
sold by opposer and sporting equipment of the type sold by
applicant. Copies of use-based, third-party registrations
may serve to suggest that the goods are of a type which may
emanate from a single source. In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149
(Fed. Cir. 1988). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993).
The vast majority of third-party registrations
submitted by opposer were based on Trademark Act § 66(a) and
do not recite any dates of use of the involved marks. Such

13 Pappagallo Dep., p. 120.

Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
17
registrations cannot serve to show that the purchasing
public is aware of these marks. See Calypso Tech., Inc. v.
Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 (TTAB
2011); In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511
(TTAB 2010); and In re 1st USA Realty Professionals Inc., 84
USPQ2d 1581, 1583 (TTAB 2007) (third-party registrations not
based on use in commerce have no probative value in showing
the relatedness of the goods and/or services).
Of the remaining registrations, the following groups of
registrations are relevant:
1. The mark CALLAWAY and design has been registered for
“spin golf balls” (Reg. No. 2697487); CALLAWAY
(stylized) has been registered for “golf clubs”
(Reg. No. 1768763) and CALLAWAY GOLF has been
registered for “clothing and headgear” and “golf
equipment” (Reg. No. 2622352);
2. The mark PING has been registered for “golf clubs”
(Reg. No. 704552) and for “clothing, namely, shirts,
caps, sweaters, and sun visors” (Reg. No. 1637647);
3. ADIDAS has been registered for “sport shoes and
sportswear” (Reg. No. 891222) and “balls of every
kind” (Reg. No. 1050759); and
4. NIKE and design has been registered for various
items of clothing (Reg. No. 2180866) and for
“athletic and casual clothing for men, women and
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
18
children” (Reg. No. 1237469); NIKE SPHERE has been
registered for “clothing and sports clothing apparel
and outerwear” (Reg. No. 2804865); and NIKE GOLF has
been registered for “all purpose sports bags,
footwear and clothing” (Reg. No. 1944436).
The first two groups of marks (for CALLAWAY and PING)
show that two companies have registered clothing and golfing
equipment under a single mark, or in the case of the
CALLAWAY marks, marks that bear the same common element.
The ADIDAS and NIKE registrations are far less probative;
although “balls of every kind” could include golf balls, and
“all purpose sports bags” could conceivably include golf
bags, there is no evidence of this in the record. Thus,
this evidence is only minimally probative to show
relatedness of the goods.
On the other hand, opposer has supplemented this
showing with online evidence of third-party uses of clothing
and golf equipment offered under a single mark:14
1. At www.overstock.com, the mark NIKE appears in
connection with NIKE SLINGSHOT OSS LH IRON SET golf
clubs and the NIKE XTREME SPORT CARRY II golf bag.
The mark NIKE is also shown in connection with the
advertisement, at http://store.nike.com, of a NIKE
NO-SEW NOVELTY WOMEN’S GOLF POLO shirt.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
19
2. At www.burberryusaonline.com, golf clothing and
golf accessories (gloves, accessory bag, and clip on
pouch) are advertised under the BURBERRY mark.
3. At www.ladygolfcourture.com, golf bags are
advertised under the brand name ESCADA EURO and
clothing is advertised under the brand name ESCADA
SPORT.
4. At www.asos.com, a “golf carry bag” and “golf belt”
are advertised on the same page as “golf” clothing
under the mark BOSS. A BOSS “green golf long sleeve
zip polo” and BOSS “green golf glove” are advertised
at different pages on the website. Golf shoes are
advertised under the BOSS mark at www.zappos.com.
5. At http://shop.adidasgolf.com, several different
types of shirts are offered under the mark ADIDAS as
well as the ADIDAS ASCEN 90 STAND BAG golf bag.
6. At www.lizclaiborne.com, under the mark LIZ
CLAIBORNE, golf shirts, skirts, sweaters and slacks
are offered as well as knitted covers for golf clubs
and visors.
Taken as a whole, the evidence shows that consumers have
been exposed to companies that sell clothing and, at the
least, golf bags, balls, clubs and shoes under a single
mark. This evidence supports opposer’s position that the

14 Dougherty Declaration; exhibits F1-F6.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
20
goods in applicant’s Class 28 application are related to
opposer’s clothing.
For these reasons, we find that the parties’ goods are
identical in part and related in part. Where the parties’
goods are identical or closely related, and in the absence
of any limitation as to channels of trade in the
identification of goods of any of the marks, we must presume
that the parties’ goods would be sold in the same channels
of trade to the same classes of consumers. See Hewlett-
Packard, 62 USPQ2d at 1005; Octocom Systems, 16 USPQ2d at
1788 (“ an application with an identification of goods
having no restriction on trade channels obviously is not
narrowed by testimony that the applicant’s use is, in fact,
restricted to a particular class of purchasers.”). See
also, Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003)(“Given the in-part identical and in-part related
nature of the parties’ goods and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade.”). Moreover, Mr. Pappagallo
testified that opposer sells its product to “directly-
operated boutiques, high-end department stores and outlets,
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
21
as well as specialty stores.”15 Applicant also sells its
products “in established channels of trade such as upscale
department stores” and in “major department stores,” and
that “most department stores that carry our merchandise do
so in dedicated in-store boutiques.”16
As to the conditions of sale, Mr. Pappagallo testified
that opposer’s customers are “usually very high-end and
sophisticated” but “we also have, what we call, the
aspirational consumer that shop some pieces of our ready-to-
wear, but a lot of accessories.”17 Ms. Matsumura stated in
her declaration that applicant’s goods are “not luxury or
couture products.” We conclude that customers of both
parties include those that would exercise no more than
ordinary care. In any event, even sophisticated or careful
purchasers are not immune from source confusion. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
(“Human memories even of discriminating purchasers…are not
infallible.”).
Accordingly, these du Pont factors weigh in favor of a
finding of likelihood of confusion.

15 Pappagallo Dep., p. 16.
16 Matsumura Declaration, p. 3.
17 Pappagallo Dep., p. 20.

Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
22
Comparison of the Marks
In comparing the marks, we must consider the marks in
their entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay, 73 USPQ2d at 1692.
The test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
In cases such as this case, where the applicant’s goods
are legally identical in part to the registrant’s goods, the
degree of similarity between the marks which is required to
support a finding of likelihood of confusion is less than it
would be if the goods were not identical. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992). See also, In re Mighty Leaf
Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed.

Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
23
Cir. 2010); In re Dixie Restaurants, Inc., 105 F.3d 1405,
1408, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
Applicant’s mark VALENTINO RUDY incorporates opposer’s
entire mark VALENTINO. They are similar in appearance and
pronunciation. Likelihood of confusion has frequently been
found where one mark incorporates the entirety of another
mark. Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v.
Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ
105, 106 (CCPA 1975) (BENGAL for gin and BENGAL LANCER for
nonalcoholic club soda, quinine water and ginger ale);
Johnson Publishing Co. v. International Development Ltd.,
221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY
DRUM for hairdressing and conditioner); and In re South Bend
Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB
1983) (LIL’ LADY BUG for toy doll carriages and LITTLE LADY
for doll clothing).
Moreover, the general commercial impression of both
marks, VALENTINO and VALENTINO RUDY, is that of a person’s
name. It is highly likely that consumers will believe that
both marks identify a real person and that applicant’s mark
is merely the complete, full name of the individual whose
first name is Valentino. Even those consumers who are
familiar with the mark VALENTINO GARAVANI and “V” design may
only remember it as “Valentino,” and when confronted with
applicant’s mark, mistakenly believe that “Rudy” is the
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
24
actual surname or possibly an alternate middle name of the
person who is otherwise known as Valentino. As VALENTINO is
the first term in applicant’s mark and the first literal
term in opposer’s VALENTINO GARAVANI mark, it is the part of
the mark that is likely to be impressed upon the mind of a
purchaser and remembered. Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“ … it is
often the first part of a mark which is likely to be
impressed upon the mind of a purchaser and remembered”).
See Palm Bay, 73 USPQ2d at 1692. Further, the words in
opposer’s mark are more likely to be remembered than the “V”
design. When a mark comprises both a word and a design, the
word is normally accorded greater weight because it would be
used by purchasers to request the goods or services. See In
re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). As
to the mark VERY VALENTINO, the adjective “very” merely
serves to emphasize the impression of the dominant portion
of the mark, i.e., VALENTINO.
Accordingly, we find the marks to be highly similar.
Strength of Opposer’s Mark

Opposer contends that its VALENTINO mark enjoys
“enormous recognition” and is entitled to a “broad enough
scope of protection to prevent registration of [applicant’s]
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
25
marks.”18 Applicant has criticized opposer’s evidence,
contending that the record does not establish that the mark
is strong. Opposer has not claimed that its mark is
“famous,” however, and we find that the fame factor is
neutral in this case. We also find, however, given
opposer’s established long and continuous use of its
VALENTINO mark, coupled with the arbitrary nature of the
mark, that opposer’s mark is commercially strong.
Third-party Uses
The sixth du Pont factor requires consideration of any
evidence pertaining to “the number and nature of similar
marks in use on similar goods.” In an attempt to show that
opposer’s mark lacks distinctiveness and is entitled to a
narrow scope of protection, applicant has introduced copies
of web pages advertising various products sold under the
following marks: MARIO VALENTINO (perfume, neckties, shoes
and sunglasses), FORTUNA VALENTINO (zip bag), SV BY
SERENDIPITY VALENTINO (handbags and wallet), RODOLFO
VALENTINO (shoes), HUGO VALENTINO (pajama pants), GEORGIO
VALENTINO (sport coat and perfume), MARCO VAENTINO (belts),
SERGIO VALENTINO (blazer), and VALENTINO ORLANDI (tote bag).
In addition, Ms. Bass testified that she purchased each of
the items (except GIORGIO VALENTINO brand perfume) and
submitted receipts and copies of the actual products to show

18 Opposer’s Brief, p. 25.
Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
26
that the marks are still in use in connection with these
goods. Ms. Bass also testified to telephone calls she
placed to “Valentino Tailor,” a tailoring shop in New York,
and “Valentino Shoe Repair,” a shoe repair shop also located
in New York. Mr. Pappagallo testified that he was aware of
the brand GIOVANNI VALENTINO in connection with
“accessories, small leather goods”19 and of the actor,
RUDOLFO VALENTINO.20
Although there are a sizeable number of third-party
uses of “Valentino,” all but the mark VALENTINO ORLANDI
include the word “Valentino” in the second, less dominant,
position. Moreover, opposer and “Mario Valentino S.N.C.
Mario Valentino” entered into an agreement with respect to
use of the MARIO VALENTINO brand.21 However, based on the
evidence overall, we draw an inference that consumers have
come to recognize that several other entities use the term
VALENTINO as part of their mark in connection with products
that may be used to accessorize clothing items. This factor
favors applicant.
Lack of Actual Confusion
Applicant argues that the parties’ marks have co-
existed “in large parts of the world for nearly thirty

19 Pappagallo Dep., p. 130.
20 Pappagallo Dep., p. 131.
21 Pappagallo Dep., p. 134-137.

Opposition Nos. 91174169, 91174171, 91174183, 91174195,
91174315, and 91179386
27
years.”22 While lack of actual confusion for a long period
of time may be considered as evidence tending to show that
confusion is unlikely, here whatever presupposition we could
make regarding any lack of confusion depends upon
circumstances entirely outside the United States. Moreover,
actual confusion is not necessary to show a likelihood of
confusion. See Giant Food, Inc. v. Nation's Foodservice,
Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir.
1983). Accordingly, we conclude that the actual-confusion
factor is neutral in this case.
Balancing the factors.
In view of the facts that opposer’s mark VALENTINO is
commercially strong, the marks are similar, and the goods
related, we find that applicant’s registration of the mark
VALENTINO RUDY is likely to cause confusion with opposer’s
mark VALENTINO. These factors, going in opposer’s favor,
outweigh that which goes in applicant’s favor, namely the
existence of third-party uses of similar marks. While the
third-party uses show that the VALENTINO mark exists in a
somewhat crowded field, the existence of the third-party
uses has not rendered opposer’s mark weak.
Decision: The oppositions are sustained under
Trademark Act Section 2(d).

22 Matsumura Declaration, p. 4.