Valentino U.S.A., Inc.v.Florence Fashions (Jersey) Limited

Trademark Trial and Appeal Board

Jun 25, 2010

No. 92029476 (T.T.A.B. Jun. 25, 2010)

Oral Hearing: Mailed:
March 9, 2010 June 25, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Valentino U.S.A., Inc.
v.
Florence Fashions (Jersey) Limited
_____

Opposition No. 91094961
to application Serial No. 74188334
filed on July 25, 1991

Opposition No. 91095203
to application Serial No. 74188331
filed on July 25, 1991

Cancellation No. 92029390

Cancellation No. 92029476
_____

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

Linda K. McLeod and Stephanie H. Bald of Finnegan, Farabow,
Garrett & Dunner, L.L.P. for Florence Fashions (Jersey)
Limited.
______

Before Quinn, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
2
As can be readily ascertained from the case caption,
these proceedings have been pending for many years. The
opposition proceedings were filed in June of 1994 and the
cancellation proceedings were filed in June of 1999. After
sixteen years of suspensions and extensions for settlement
negotiations and discovery, consolidations of proceedings, a
summary judgment motion, and various skirmishes during the
trial phase of these consolidated proceedings, they are now
ready for final disposition.1 It is unfortunate that after
so many years the parties were unable to apply the surgical
precision of negotiation to arrive at an acceptable
settlement agreement and have now litigated their dispute on
what can best be described as a stale record, in particular
on the part of the plaintiff, focusing on activities prior
to 1991, nearly twenty years ago.
The marks in Florence Fashion (Jersey) Limited’s
(hereinafter defendant) applications and registrations at
issue in these proceedings are as follows:
GIANNI VALENTINO (in typed form) - Application
Serial No. 74188334, filed on July 25, 1991, based
on an intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. §1051(b),

1 Over the past few years the Board has instituted procedures to
limit the ability of parties to linger in the Board’s files. We
understand that in some circumstances, similar to those involved
in these proceedings, the Board proceedings are merely the tip of
the iceberg of a global battle and the settlement negotiations
are extremely complicated; but sixteen years of dithering is
simply beyond the pale. We hasten to add that we recognize that
current counsel was not involved in these proceedings throughout
these sixteen years and have proceeded relatively steadily
through the trial phase.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
3
for “bath robes; boots; ski boots; boots for
sports; coats; dressing gowns; gloves; hosiery;
jackets; jerseys; jumpers; knitted pullovers;
knitted cardigans; mittens; leggings, overcoats;
pants; pullovers; pajamas; sandals; scarves;
mufflers; knitted caps; knitted vests; shawls;
shirts; shoes; skirts; slippers; socks; sweaters;
swimsuits; trousers; underwear; waistcoats; ties;
neckties; bow ties; cravaths [sic]; night gowns;
bed jackets; negligees; and headwear” in
International Class 25;

GIOVANNI VALENTINO (in typed form) – Application
Serial No. 74188331, filed on July 25, 1991, based
on an intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. §1051(b),
for “attache cases; bandoliers; brief cases;
garment bags for travel; handbags; straps for
luggage; thongs; pocket wallets; drawstring
pouches; purses; rucksacks; satchels; cosmetic
cases sold empty; cases for men’s toiletries sold
empty; valises; animal hides; trunks for
travelling; umbrellas; parasols; walking sticks;
whips; harnesses; and saddlery; all made of
leather or imitation of leather” in International
Class 18 and “shoulder belts; namely, belts which
run across the body from front to back and which
are attached to belts about the waist” in
International Class 25;

GIANNI VALENTINO (in typed form) – Registration
No. 2130804, filed on July 25, 1991, issued on
January 20, 1998, asserting 1991 as the date of
first use, for “attache cases; bandoliers, brief
cases; garment bags for travel; handbags; straps
for luggage; thongs; music cases, namely, a type
of brief case designed to carry musical scores;
pocket wallets; drawstring pouches; purses;
rucksacks; satchels; school bags; travelling bags;
individual pieces of luggage and luggage sets;
cosmetic cases sold empty; cases for men’s
toiletries sold empty; valises; animal hides;
trunks for travelling; umbrellas; parasols;
walking sticks; whips; harnesses; and saddlery;
all made of leather or imitation of leather” in
International Class 18; and

GIOVANNI VALENTINO (in typed form) – Registration
No. 2103658, filed on July 25, 1991, issued
October 7, 1997, asserting 1991 as the date of
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
4
first use, for “bath robes; boots; boots for
sports; coats; overcoats; dressing gowns; bed
jackets; gloves; hosiery; jackets; knitted
pullovers; pullovers, jerseys, sweaters, jumpers,
knitted cardigans; leggings, mittens; trousers;
pants; pajamas; shoes; sandals; scarves; mufflers;
shawls; knitted caps; knitted vests; shirts;
skirts; slippers; socks; swimsuits; underwear;
waistcoats; ties; neckties; cravats; bowties,
night gowns, negligees; and headwear” in
International Class 25.

The applications and registrations all include the
statement that “GIANNI VALENTINO” or “GIOVANNI VALENTINO” is
a “living individual whose consent is of record.”
Valentino U.S.A., Inc. (hereinafter plaintiff)2 brought
these proceedings on the ground that, as applied to

2 We refer to the Board orders issued on May 19, 2008 and
December 15, 2008, clarifying that the plaintiff in these
proceedings was Valentino Couture, Inc. We reiterate that in the
case of the opposition proceedings, once the thirty-day
opposition period closed, any further possible plaintiffs, even
related companies, are statutorily barred from joining the
proceeding. Trademark Act Section 13, 15 U.S.C. §1063(a) (“Any
person who believes that he would be damaged by the registration
of a mark upon the principal register...may, upon payment of the
prescribed fee, file an opposition...within thirty days after the
publication...of the mark sought to be registered.”); Trademark
Rule §2.101(c), 37 C.F.R. §2.101 (“The opposition must be filed
within thirty days after publication of the application being
opposed or within an extension of time for filing an
opposition”); SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707
(TTAB 1994); In re Cooper, 209 USPQ 670 (Comm’r. Pat. 1980).
Thus, because plaintiff’s parent company, Valentino S.p.A., the
purported owner of the pleaded registrations, did not file a
notice of opposition or a request for an extension of time within
which to do so during the statutory period, it is statutorily
time-barred from opposing defendant’s applications. Reading the
pleadings filed back in 1994, it appears that plaintiff
intentionally only named the licensee as the opposer and the
registrations were informatively listed to allege which marks
plaintiff was licensed to use. The only joinder or substitutions
that may occur in an opposition are where an individual or entity
has succeeded to the interest of a plaintiff’s rights which is
not the case here. In the case of the cancellation proceedings,
by the time plaintiff’s parent allegedly moved to be joined in
October 2004, it was time-barred as to the Section 2(d) claim
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
5
defendant’s goods, the marks so resemble plaintiff’s
previously used marks VALENTINO and VALENTINO GARAVANI for a
variety of clothing and accessory items, including coats,
dresses, sweaters, hosiery, gloves, handbags, belts and
footwear, as to be likely to cause confusion, to cause
mistake, or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d).3 The pleading also lists several
registrations allegedly owned by plaintiff’s parent company.
While plaintiff may not rely on the registrations for the
presumptions afforded by Section 7(b) of the Trademark Act,
plaintiff has alleged that it is authorized as the exclusive
licensee in the United States to use the marks appearing in
the registrations in connection with the goods listed

because by that time both registrations were over five years old.
Section 14, 15 U.S.C. § 1064. Plaintiff’s filing of the
petitions for cancellation did not serve to toll the five-year
statutory limit for other potential parties, even related
companies. As to the Section 2(a) claim the Board determined
that plaintiff had delayed too long to be joined for that one
claim. In any event, as discussed infra, plaintiff has waived
the Section 2(a) claim.

Finally, we note that on April 24, 2009, the proceeding was
recaptioned to reflect the merger of Valentino Couture, Inc. into
Valentino USA, Inc., which is the successor to plaintiff’s
rights.

3 The complaints in all four proceedings include an insufficient
pleading for a claim of false suggestion of a connection under
Section 2(a) of the Trademark Act. In addition, in the
opposition proceedings plaintiff asserted the ground that
defendant did not have a bona fide intent to use the marks. In
its brief, plaintiff presents argument only as to the claim of
priority and likelihood of confusion under Section 2(d) of the
Trademark Act. In view thereof, we deem plaintiff to have waived
these other claims. Krause v. Krause Publications Inc., 76
USPQ2d 1904, 1906 n.2 (TTAB 2005).

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
6
therein. The marks in the registrations are, for the most
part, similar to the alleged common law marks VALENTINO and
VALENTINO GARAVANI except in three instances the letter V or
a V logo is part of the mark. In general, pleadings are to
be construed liberally, and we consider the pleadings to
have alleged use of all of the various VALENTINO marks;
however, our analysis must necessarily be limited to those
for which there is evidence of use.4
Defendant filed answers by which it denied the salient
allegations and in each case asserted the affirmative
defense that plaintiff is “estopped from opposing [or
cancelling defendant’s applications and registrations]
herein as the result of a 1979 Agreement limiting
[plaintiff’s] rights to the pleaded marks, and allowing use
of the term ‘valentino’ in marks for, inter alia, clothing
and leather goods. Those limitations are a bar to the
opposition filed herein.” Opposition No. 91094961, Answer
¶18. To the extent defendant asserted a contractual
estoppel defense, defendant has not presented argument on
this estoppel defense and we consider it waived.5

4 Defendant’s objection to plaintiff’s submission of these
registrations under notice of reliance is sustained to the extent
that they may only be used to show “what appears on their face,
namely, that an application was filed claiming use for the mark
shown in the registration for the listed goods and services, and
that the registration was granted.” Defendant’s Appendix of
Objections (“Def. App.”) p. 2.

5 As discussed below, defendant is not a party to the 1979
agreement. “The degree to which an admission of no likelihood of
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
7
In addition, defendant averred that “Any similarity
which may exist between the [marks] would be the result of
their respective use of the term ‘valentino,’ which has been
used and registered by numerous third parties in the
clothing, clothing-related, and other fields. As a result,
[plaintiff] cannot base any similarity between its pleaded
marks and the mark of [defendant] on use of the term
‘valentino.’” Answer ¶17.
THE RECORD
Defendant asserted many objections to the evidence,
including that much of plaintiff’s testimony is inadmissible
based on lack of personal knowledge and hearsay. We address
these objections, as necessary, within the decision, and to

confusion inherent in a consent can be invoked by third parties
has yet to be fully defined by the courts.” J. T. McCarthy,
McCarthy on Trademarks and Unfair Competition, § 32:106 (4th ed.
2009). Here, defendant’s use of the agreement is more in the
nature of an admission against interest, arguing that plaintiff
acknowledges other “Valentino” marks can coexist in the
marketplace. In a similar manner, defendant relies on statements
made in the prosecution of plaintiff’s parent corporation’s
pending applications. We consider this evidence for whatever
limited probative value it may have. Specialty Brands Inc. v.
Coffee Beans Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1283 (Fed. Cir. 1984), quoting, Interstate Brands Corp. v.
Celestial Seasonings Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA
1978) (“[T]hat a party earlier indicated a contrary opinion
respecting the conclusion in a similar proceeding involving
similar marks and goods is a fact, and that fact may be received
in evidence as merely illuminative of shade and tone in the total
picture confronting the decision maker. To that limited extent,
a party’s earlier contrary opinion may be considered relevant and
competent.”) We note, however, that in the case of the
agreement, it involves different marks and includes limitations
on use, and in the case of the pending applications those
statements were not made by plaintiff but rather its parent
company.

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
8
the extent we rely on plaintiff’s testimony, it will be
given the probative value to which it is properly entitled
pursuant to the Federal Rules of Evidence. Ballet Tech
Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89
USPQ2d 1262, 1265 (TTAB 2008) (“We are not inclined to
strike the testimony depositions in toto, nor are we
inclined to parse the depositions to separate the admissible
testimony from the inadmissible testimony. However, we are
aware of the infirmities described in petitioner’s
objections. To the extent that we rely on any testimony
from Ms. Shelton and Mr. Flecher, it will be given the
probative value to which it is properly entitled pursuant to
the Federal Rules of Evidence.”) Plaintiff did not maintain
its objections in its main brief on the case; therefore, we
deem any objections to have been waived. See Hard Rock Cafe
International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5
(TTAB 2000) (objection to exhibit raised during deposition
but not maintained in brief is deemed waived). As stated by
the Board “[p]laintiff cannot be allowed to wait until its
reply brief to maintain any objections; to allow this would
effectively foreclose respondent from responding to the
objections.” Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1104 (TTAB 2007).
However, before we proceed we must first take up for
consideration a remaining evidentiary motion, filed by
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
9
defendant on November 3, 2009. Defendant moves to strike
plaintiff’s October 20, 2009 notice of reliance on an
Italian Supreme Court Decision and English translation. By
way of background, on May 19, 2009, defendant filed a notice
of reliance on decisions issued by various Italian courts
concerning litigation between defendant and plaintiff’s
parent company. On June 29, 2009, plaintiff moved to strike
defendant’s notice of reliance. However, on October 20,
2009, plaintiff withdrew its motion to strike and filed the
notice of reliance which is the subject of the current
motion to strike.
Plaintiff submitted the notice of reliance as rebuttal
to defendant’s tenth notice of reliance, noting that
defendant “neglected to submit the most recent Italian
decision and translation, wherein the Italian Supreme Court
found a likelihood of confusion between the marks at issue
[and] that [defendant] was not a party to the Mario
Valentino Agreement of 1979.” Plaintiff’s Notice of
Reliance p. 1. Defendant argues that the documents
submitted under plaintiff’s notice of reliance lack
foundation in that the 8-page English translation of the 81-
page Italian Supreme Court decision is incomplete.
First, in the case before us, there is no dispute that
defendant is not a party to the 1979 Agreement. Second, the
question of likelihood of confusion in another country is
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
10
irrelevant to the question of likelihood of confusion among
consumers in the United States. Thus, the substance of the
Italian Supreme Court decision is of no probative value;
however, the existence of the decision does serve to rebut
defendant’s notice of reliance, to the extent that it
corrects any implication that defendant’s submission
represented the final determinations in the Italian courts.
In view thereof, defendant’s motion to strike is denied and
the documents under this notice of reliance are admitted for
the limited purpose noted above.
Thus, the evidence of record consists of the pleadings
herein; the files of defendant’s subject applications and
registrations; the testimony depositions (with exhibits)
submitted by plaintiff of Carmine Pappagallo, plaintiff’s
Chief Financial Officer, Antonella Andrioli, Director of
Legal and Corporate Affairs of Valentino Fashion Group,
S.p.A., plaintiff’s grandparent company,6 Steven Dougherty,
paralegal for plaintiff’s outside counsel, and Alan Garten,
Assistant General Counsel for the Trump Corporation.
Defendant submitted the testimony depositions of James
William Norris, defendant’s Director, and Larry White, legal
assistant for defendant’s outside counsel. In addition,
both parties submitted several voluminous notices of

6 Ms. Andrioli’s testimony was taken as a deposition upon written
questions, as she resides in Italy.

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
11
reliance on various printed publications, official records
and discovery responses.7
THE PARTIES
Plaintiff is a fashion company engaged in the sale of a
variety of clothing, handbags, footwear and accessory items.
See generally, Pappagallo Test. Plaintiff is the wholly-
owned subsidiary of Valentino S.p.A. Pappagallo Test. p. 7.
In turn, Valentino S.p.A. is the wholly-owned subsidiary of
Valentino Fashion Group S.p.A. Andrioli Test. p. 81.8
Valentino S.p.A. owns several U.S. trademark registrations
for various VALENTINO marks for a variety of clothing,
leather goods and accessory items. Andrioli Test. p. 8.
Plaintiff is the exclusive user and licensee of the
VALENTINO marks in the United States. Andrioli Test. pp. 8-
10. Plaintiff’s VALENTINO marks are derived from the name
of the fashion designer Valentino Garavani. Pappagallo
Test. p. 46.
Defendant is a fashion company engaged in the sale of
clothing, leather goods and accessory items. Norris Test.

7 Certain testimony and exhibits were designated as confidential
and we will discuss those portions of the record in general
terms. In addition, while we only discuss certain portions of
the record in the decision, we have considered the entire record
in arriving at our determination.

8 Defendant only objects to Ms. Andrioli’s testimony as to
plaintiff’s use in commerce in the United States which we address
infra. In her position as Director of Legal and Corporate
Affairs for Valentino Fashion Group S.p.A., she is competent to
testify about the corporate structure of the companies and the
ownership of the pleaded registrations.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
12
pp. 5, 48-49. Defendant’s products are designed by Giovanni
Valentino. Norris Test. p. 10. Defendant’s marks GIOVANNI
VALENTINO and GIANNI VALENTINO are the name of the designer,
Gianni being the diminutive of Giovanni. Giovanni Valentino
comes from a family with a history in the fashion industry,
beginning with his grandfather Vincenzo Valentino. Norris
Test. p. 11. He specialized in leather goods, including
shoes and bags. Norris Test. p. 14. Giovanni Valentino’s
father, Mario Valentino, carried on the grandfather’s
business using the marks VALENTINO and MARIO VALENTINO in
connection with leather goods and clothing in the United
States. Norris Test. pp. 16-17. Giovanni Valentino worked
for his father Mario for approximately twelve years and
later set up his own business and brand. Norris Test. p.
27.
STANDING
As discussed below, plaintiff has shown that it uses
the marks VALENTINO and VALENTINO GARAVANI in connection
with various clothing items, handbags, footwear and
accessories and has demonstrated a real interest in
preventing and cancelling registration of defendant’s marks.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
13
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Thus, plaintiff has established its
standing.
PRIORITY
As noted above, the pleadings reference several
VALENTINO marks; however, we confine our analysis to the
asserted common law marks VALENTINO and VALENTINO GARAVANI
(hereinafter also referred to as the “VALENTINO marks”).9
We begin with the question of priority. Because plaintiff
is not the owner of the pleaded registrations, plaintiff
must prove its common law rights prior to defendant’s
priority date. Hydro-Dynamics Inc. v. George Putnum and
Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir.
1987). “Under the rule of Otto Roth, a party opposing [or
seeking to cancel] registration of a trademark due to a
likelihood of confusion with his own unregistered term
cannot prevail unless he shows by a preponderance of the
evidence that his term is distinctive of his goods, whether
inherently or through the acquisition of secondary meaning
or through ‘whatever other type of use may have developed a
trade identity.’” Towers v. Advent Software Inc., 913 F.2d
942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing, Otto

9 We note, that even in displays of the marks with the V logo,
VALENTINO and VALENTINO GARAVANI create a separate commercial
impression.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
14
Roth & Co. v. Universal Food Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981).
Thus, in order to prevail, plaintiff must establish
that it acquired trademark rights in the VALENTINO marks,
that they are distinctive, either inherently or through
acquired distinctiveness, and that its use predates
defendant’s first actual or constructive use.
The applications, alleging an intention to use the
marks in commerce, and the underlying applications for the
registrations, alleging 1991 as the date of first use, were
all filed on July 25, 1991. During trial, and in its brief,
defendant attempts to establish an earlier date of first
use, asserting use since 1977. On June 30, 2009, in a prior
order, the Board denied defendant’s motion to amend its
answer to assert an earlier date of first use.10 In
particular, the Board noted that at least as early as May
19, 2008, defendant was on “notice that plaintiff would be
required to establish its priority date through evidence of
use...and should have moved promptly after that date, if not
well beforehand, to amend its answers...even if defendant
established that plaintiff does not need discovery regarding
the distinctiveness of its own marks, defendant does not and
cannot argue that plaintiff should not have discovery on

10 By its motion, defendant also sought to amend its answer to
assert the defense that plaintiff’s mark is primarily merely a
surname, which we discuss infra.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
15
defendant’s newly-claimed date of first use. Yet defendant
seeks leave to plead that plaintiff ‘cannot establish that
its marks acquired distinctiveness before [defendant’s
newly-claimed] 1977 date of first use.’”11 Board Order pp.
5-7. Based on this Board order, defendant may only rely on
its filing dates for its priority date.
We add that even if we were to allow defendant to
assert this earlier date, defendant has failed to prove it.
A party attempting to establish a first use date that is
earlier than the date in the application or registration is
subject to a higher evidentiary burden. Such facts must be
established by clear and convincing evidence, as opposed to
the preponderance of the evidence standard imposed on a
common law plaintiff. Compare Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000)
(plaintiff has burden of proving by a preponderance of the
evidence that there was a likelihood of confusion) with
Hydro-Dynamics, 1 USPQ2d 1772 (to establish an earlier date
of use than the date alleged in its application, proof must
be clear and convincing and must not be characterized by
contradiction, inconsistencies and indefiniteness). See
also Martahus v. Video Duplication Services Inc., 3 F.3d

11 In fact, the initial complaints in all four proceedings, filed
in 1994 and 1999, put defendant on notice that priority was an
issue in these proceedings inasmuch as the owner of the
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
16
417, 27 USPQ2d 1846, 1852 n. 7 (Fed. Cir. 1993); and The B.
R. Baker Company v. Lebow Brothers, 66 USPQ 232, 236 (CCPA
1945) (“It has become well-settled law that one who seeks to
prove priority of ownership and use of a trade mark over the
application date of a registered mark must do so by a
preponderance of the evidence ... however, [where] one has
under oath stated his earliest use and then amends his oath
and by proof attempts to show an earlier date, he is then
under a heavy burden, and his proof must be ‘clear and
convincing.’”)
The evidence presented by defendant to establish 1977
as the first use date, some 14 years prior to the filing
date of its intent-to-use applications and date of first use
alleged in its registrations, is far from clear and
convincing. Defendant’s director, James Norris, testified
that defendant’s predecessor-in-interest, Florence Fashions
Trading, first used the mark GIOVANNI VALENTINO in 1977.
His testimony is based on a brochure with a copyright date
of 1977 displaying purses. He testifies that he bases his
testimony of first use on this brochure he found in some
litigation files and that he has no knowledge of any sales
and no knowledge if that brochure was distributed. An
excerpt of his testimony is set forth below:

registrations was not a party and any confusion in that regard
did not occur until 2004.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
17
Q. Okay. And so when you learned of the 1977
date, it was based on this document?
A. Yes.
Q. And when did you discover this document?
A. Only recently, as I said, when we made
inquiries as to documents that would support
[defendant’s predecessor’s] history. And we had
no reason to delve into them prior to that.12
Q. Was this brochure distributed in the United
States?
A. Yes.
Q. When was this brochure distributed in the
United States:
A. 1977. ...
Q. Do you have personal knowledge as to how this
brochure was used by [defendant’s predecessor]?
A. No.
Q. Do you have any knowledge that it was actually
distributed by [defendant’s predecessor]?
A. No.

Norris Test. pp. 37 and 272, Exh. No. 4.
Thus, plaintiff must establish use prior to defendant’s
constructive use date, July 25, 1991, the filing date of the
pending applications and the underlying applications for the
registrations.
As noted above, during the trial phase, defendant moved
to amend its answer to include as an affirmative defense
that the “pleaded common law marks are comprised of or
contain the common surname VALENTINO [and t]he pleaded marks
are primarily merely a surname and lack distinctiveness.”
The Board denied this motion but noted “defendant’s
operative answers already deny the salient allegations in
the notices of opposition and petitions for cancellation,

12 An inexplicable statement, given SIXTEEN YEARS of litigation.

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
18
and defendant itself ‘believes that its denial of
[plaintiff’s] priority and likelihood of confusion claims in
the prior Answers filed in these proceedings are sufficient
to place the burden on [plaintiff] to establish prior use
and ownership of a protectable mark.’” Board Order p. 6,
quoting, Defendant’s Motion for Leave to Amend at p. 2 n.2.
Indeed, in its original answer defendant denied
plaintiff’s allegations pertaining to any trademark rights
in the asserted VALENTINO marks. Further, because plaintiff
is asserting common law rights, plaintiff has the burden to
establish those rights, and part of that burden necessarily
includes establishing that the asserted mark is distinctive,
either inherently or through the acquisition of secondary
meaning. This is not an exact science. In some cases, it
may simply be obvious that the mark, on its face, is
inherently distinctive and the record at trial does not
contradict such a finding. On the other hand, it may not be
so obvious and the record may bring into question whether
the mark is, in fact, inherently distinctive. We observe
that plaintiffs relying on common law rights, in general,
often overlook this element of proof as they shoulder the
burden of going forward.
This case presents a circumstance where the plaintiff
may have thought this was an obvious type of situation
inasmuch as, at least in its case, the mark is a given name
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
19
and not a surname, and as such was not on notice that such a
defense would be attempted at trial. Moreover, the Board
order did not disabuse plaintiff of this assumption. In any
event, we first find that VALENTINO GARAVANI is obviously
not primarily merely a surname, and, as a personal name, is
considered to be inherently distinctive in proceedings
before the Board. Brooks v. Creative Arts By Calloway LLC,
93 USPQ2d 1823 (TTAB 2009). Second, we find that this
record does not establish that VALENTINO is primarily merely
a surname. Plaintiff’s marks are derived from a designer’s
first name. In addition, the record includes some examples
of third-party uses of VALENTINO as a first name (e.g.,
Valentino Rossi and Valentino Orlandi). This case presents
the inverse of In re Gregory, 70 USPQ2d 1792, 1795 (TTAB
2004), where by virtue of exposure to a public official with
the surname Rogan, the Board concluded that while the name
may be rare when viewed in terms of frequency of use as a
surname in the general population, [it is] not at all rare
when viewed as a name repeated in the media and in terms of
public perception.” Here, by virtue of exposure to a known
designer with the first name of VALENTINO, it is, at a
minimum, not primarily merely a surname.
Finally, even if VALENTINO is primarily merely a
surname, this record, discussed infra, establishes that the
mark VALENTINO acquired distinctiveness in connection with
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
20
clothing, handbags, footwear and accessory items prior to
defendant’s constructive use date in 1991.13
Plaintiff currently uses the marks VALENTINO and
VALENTINO GARAVANI in the United States on a variety of
clothing items, handbags, footwear, accessories and in
connection with retail stores for these goods. See, e.g.,
Pappagallo Test. pp. 16-21. In support of its assertion of
priority, plaintiff presented the testimony of two witnesses
and submitted a variety of printed publications. Plaintiff
has not provided any business records concerning actual
sales (e.g., invoices, revenue compilations) or advertising

13 Defendant points to a third-party’s use of the mark VALENTINO
and argues that plaintiff’s use has not been substantially
exclusive and, therefore, its mark could not have acquired
distinctiveness. Defendant references the unpublished case Gus
Sclafani Corp. v. Violet Packing Co., Opposition No. 91106710,
Slip Op. (TTAB January 17, 2002), where both parties used the
name SCLAFANI in connection with food items. There the Board
held that “opposer’s claim must be dismissed due to opposer’s
failure to prove an element of its claim, that is, that it has
priority of acquired distinctiveness. Further, given applicant’s
contemporaneous use, opposer’s use has not been ‘substantially
exclusive’ such that acquired distinctiveness has been
established at any time.” The facts concerning the parties’
contemporaneous use in that case even included the opposer
selling the applicant’s “SCLAFANI brand spaghetti sauce in
applicant’s cans to opposer’s institutional customers.” The
facts in this case are quite different. First, plaintiff’s
predecessor and Mario Valentino did not market each other’s
goods. Second, plaintiff’s predecessor entered into a settlement
agreement with Mario Valentino that delineated the manner of use
and channels of trade in order to avoid confusion. Thus, we
cannot find that based on the concurrent use of the VALENTINO
marks in their specific trade channels and used on their specific
goods that plaintiff and its predecessor’s use was not
substantially exclusive. To find otherwise would certainly
discourage parties from entering into settlement agreements.

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
21
expenditures.14 Plaintiff lost all documentary evidence
pertaining to prior sales and advertising in the United
States in 2002 when the Valentino companies (the grandparent
and all issue) were merged into yet another company.
Pappagallo Test. p. 12. Thus, we turn to plaintiff’s
testimony and other evidence of prior use.
Ms. Andrioli testifies that plaintiff and its
predecessor were the exclusive licensees of Valentino S.p.A.
(and its predecessors), the owner of the registrations, to
use the marks in the United States. See, e.g. Andrioli
Test. pp. 19-20. Throughout her testimony she testifies
that plaintiff’s predecessor was the first to use the
VALENTINO marks in the United States, beginning in 1960.
See, e.g., pp. 18, 30-31. In particular, she testifies that
plaintiff’s predecessor used the mark VALENTINO in
connection with various clothing items in 1960, p. 32, with
men’s clothing in 1968, p. 34, and with retail store
services in 1970, p. 34. She testifies that the mark
VALENTINO appeared on tags and labels, p. 35. She also
testifies that plaintiff’s predecessor first used the mark
VALENTINO GARAVANI in connection with handbags, belts and
shoes in 1983, p. 40.

14 Mr. Pappagallo did not know if the 1989 media plans attached as
an exhibit to his testimony had actually been implemented.

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
22
The testimony of a single witness may be sufficient to
prove priority but should not be “characterized by
contradictions, inconsistencies, and indefiniteness but
should carry with it conviction of its accuracy and
applicability.” B. R. Baker, 66 USPQ at 236. See also
Powermatics, Inc. v. Glebe Roofing Products Co., 341 F.2d
127, 144 USPQ 430 (CCPA 1965). However, where “the oral
testimony of a single witness, testifying long after the
events happened, is relied upon to prove priority, such
testimony, while entitled to consideration, should be most
carefully scrutinized; and if it does not carry conviction
of its accuracy and applicability, it should not be
permitted to thus successfully attack the presumed validity
of a registered trade mark.” Id.
Ms. Andrioli’s testimony is not characterized by
“contradictions and inconsistencies.” She clearly testifies
that the marks VALENTINO and VALENTINO GARAVANI were used in
connection with the sale of various clothing items,
handbags, footwear and accessory items in the United States
and plaintiff’s predecessor, Valentino Couture Inc., was the
entity that used the marks in connection with the sale of
such goods.
Defendant argues that Ms. Andrioli lacks personal
knowledge to testify about the use of the VALENTINO marks
prior to her employment with plaintiff’s grandparent company
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
23
in 2006. Defendant asserts that Ms. Andrioli’s reference to
the parent company’s registrations is the sole basis for her
testimony regarding plaintiff’s use of the trademarks in the
United States, which would be hearsay.15 However, reviewing
the testimony she is merely using these registrations to
refresh her knowledge derived from her position as Director
of Legal and Corporate Affairs in the overarching company.
Under Fed. R. Evid. 602 “evidence to prove personal
knowledge may, but need not, consist of the witness’ own
testimony.” Thus, while reliance on documents that do not
satisfy the business records hearsay exception under Fed. R.
Evid. 803(6) is not sufficient, a defendant’s own testimony
may suffice. As she testified, she is Director of Legal and
Corporate Affairs of the grandparent company and as such “is
informed about what happens” in legal matters concerning the
company. Rebuttal Test. p. 84.
She further testifies as follows:
Question 49. State whether or not you are
familiar with how the trademarks pled by
Petitioner/Opposer in these proceedings are and
have been used in the United States.
Answer. Yes I am.
Question 50. ...state the date on which goods
and/or services bearing the marks VALENTINO and
valentino were first sold in the United States by
the company by which you are employed or any
related entity.

15 Although the registrations are of record as third-party
registrations, the allegations in the registrations, e.g., dates
of first use, do not constitute evidence; they must be
established by competent evidence at trial. TBMP Section 704.04
(2d ed. rev. 2004).
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
24
Answer. Okay, is 1960.
Question 51. Identify the entity that first used
the marks VALENTINO and valentino in the United
States.
Answer. It’s Valentino Couture, Inc.

Andrioli Test. pp. 30-31

Question No. 86: State whether or not you are
familiar with the historic advertising procedures
for the goods/services bearing the trademarks pled
by Petitioner/Opposer in these proceedings in the
United States.
Answer: Yes, I am.

Andrioli Test. p. 50

Cross Examination Question 27. You will agree
that the entity that first used the mark VALENTINO
in the United states was not Valentino S.p.A. or
one of its predecessors in interest, correct?
Answer. It’s a little bit complex. What I know
is that Valentino Couture, and not Valentino
S.p.A., used the mark in the United States.

Andrioli Test. pp. 60-61.
Defendant also objects to much of the testimony
regarding the dates of first use on the basis that it is
vague inasmuch as some of the questions use the phrasing “by
the company by which you are employed or any related
entity.” While that particular question is indeterminate,
when the testimony is read as a whole it is clear by her
specific testimony that the first user is plaintiff’s
predecessor, Valentino Couture, Inc., as noted above, and
the testimony that it was the exclusive licensee to use the
mark in the United States, also noted above, which
effectively eliminates use by another “related entity.”
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
25
Further, we must take her testimony within the context
of the entire record. In addition to the testimony, the
record includes, inter alia, copies of magazine advertising
from 1970 (Harper’s Bazaar, Exh. No. C181) to 1990 Town &
Country Exh. No. F56) and even, in one case, up to 2000
(Town & Country, Exh. No. F55). In addition to the marks
VALENTINO and VALENTINO GARAVANI, some of the advertisements
include a reference to “Valentino Couture.” See Elle Exh.
No. F18). The record also contains countless articles from
numerous nationally distributed publications (New York
Times, Vogue, Vanity Fair, Newsweek, Christian Science
Monitor, Detroit Free Press, etc.) dating as far back as
1962 (Exh. No. C256) referencing Valentino and the Valentino
fashion collections. In addition, the record contains
several books written about the namesake, the designer
Valentino Garavani, and testimony regarding awards he
received from the fashion industry, including prior to 1991.
Pappagallo Test. p. 46. These are from printed publications
and are self authenticating, i.e., are properly submitted
under a notice of reliance; although, the statements therein
are hearsay and they are not evidence that goods were sold
under the mark.
Finally, we note that even defendant’s witness
testifies that plaintiff and its predecessor have sold
products in the United States and that plaintiff’s
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
26
predecessor and a third party, Mario Valentino, have sold
and advertised products in the same channels of trade. See,
e.g., Norris Test. pp. 21-25. While this testimony is not
specific as to the time period of overlapping sales,
defendant presented testimony and evidence of Mario
Valentino’s use of his marks prior to 1991. In addition,
defendant relies on the 1979 agreement between Mario
Valentino and plaintiff’s predecessor, which implies that
each party is selling products in the United States under a
Valentino mark.
Notwithstanding the limitations of plaintiff’s
evidence, the inescapable conclusion from the testimony, the
magazine advertisements over three decades, and books
dedicated to a designer and his fashions, is that
plaintiff’s predecessor began selling clothing under the
VALENTINO mark sometime in the 1960’s and later extended its
line to bags, footwear and accessory items; it is simply not
reasonable to conclude that a company continued to advertise
in nationally distributed magazines for decades and entered
into a consent to use agreement despite making no sales.
Where a record consists of many different pieces of
evidence we must be cognizant of guidance from the Court of
Appeals for the Federal Circuit:
[W]hether a particular piece of evidence by itself
establishes prior use is not necessarily
dispositive as to whether a party ahs established
prior use by a preponderance. Rather, one should
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
27
look at the evidence as a whole, as if each piece
of evidence were part of a puzzle which, when
fitted together, establishes prior use. The TTAB
failed to appreciate this. Instead, the TTAB
dissected the evidence to the point that it
refused to recognize, or at least it overlooked,
the clear interrelationships existing between the
several pieces of evidence submitted. When each
piece of evidence is considered in light of the
rest of the evidence, rather than individually,
the evidence as a whole establishes by a
preponderance that West used the ‘FAST EDDIE’S’
mark prior to Jet’s admitted first use of the
mark.

West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d
1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994).
Thus, keeping in mind both defendant’s objections based
on hearsay and lack of personal knowledge and our task to
view the record as a whole, we find that the record
establishes that plaintiff’s predecessor-in-interest first
sold, under the mark VALENTINO, coats, dresses, gloves, and
stockings, at least as early as 1970 (see Exh. Nos. C178-
182, C347); knitwear, at least as early as 1983, (see Exh.
No. C352, F70); and, under the mark VALENTINO GARAVANI,
handbags, shoes and belts, at least as early as 1989 (see
Exh. Nos. F36 and F37 advertisements in the September 1989
edition of Miss Vogue showing Valentino Garavani and Made in
Valentino and Exh. No. F19 advertisements in a 1990 edition
of Elle Magazine showing Valentino Garavani and Made in
Valentino with bags). We add that these findings
conservatively use the date for which there is an example of
advertising which supports the testimony regarding use.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
28
Therefore, although the testimony may include earlier dates
of first use and a broader array of goods, we have confined
our findings to dates and goods for which there are examples
of advertising in the record. In view thereof, plaintiff
has established priority of use as to both marks VALENTINO
and VALENTINO GARAVANI.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
The parties have presented evidence and argument on the
factors of the similarity of the marks, the relatedness of
the goods, channels of trade, classes of purchasers, the
fame or strength of plaintiff’s marks, and actual confusion.
We begin with the factor of fame because fame “plays a
‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000). “[T]he 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.” Bose Corp. v. QSC
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
29
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002).
In support of its assertion of fame, plaintiff
submitted several printed publications showing use of the
VALENTINO marks in magazine advertising, mentioned in the
press and books about the designer and namesake Valentino
Garavani, along with testimony about various awards bestowed
on Mr. Garavani. We note that sixteen years have passed
since the filing of the first of these consolidated
proceedings and nineteen years since the filing date of the
involved applications and registrations; yet, plaintiff
limited its evidence to the time period preceding 1991.
Despite the evidentiary problem that plaintiff faced, i.e.,
no sales or advertising documents, prior to 2002, plaintiff
did not provide evidence of sales or advertising
expenditures after that date. Plaintiff explains the reason
they did not provide any evidence of the fame of its marks
post-1991 was because it believed its “burden is to show
that its marks were strong as of [defendant’s] priority
date.” Reply Br. p. 13. Plaintiff relies on McCormick &
Co. v. Summers, 354 USPQ 668 (CCPA 1966) in support of this
position. However, that case concerns the timing for an
applicant to establish acquired distinctiveness. The Board
generally accepts and considers evidence related to
likelihood of confusion for the period up to the time of
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
30
trial, and this includes evidence of the fame of a
plaintiff’s mark. This is distinct from a claim of dilution
under Section 43(c) of the Trademark Act where an element of
the claim is the acquisition of fame prior to the
defendant’s first use or application filing date. Thus,
while whether, at a time previous to this proceeding,
plaintiff’s VALENTINO marks were famous is indeed a fact
which would be relevant to the issue of likelihood of
confusion, plaintiff should nonetheless demonstrate with
respect to the asserted fame of its marks that the marks are
or continue to be famous as of the closing of the trial
phase of this proceeding. Fame comes and goes, we must make
a determination as to whether likelihood of confusion exists
today, not only sometime in the distant past. In any event,
this record does not support a finding of fame even prior to
1991.
Generally, we look to the volume of sales and
advertising expenditures over time and within the context of
market share and manner of consumer exposure in order to
make a determination regarding fame. Here, plaintiff did
not provide any sales figures and the testimony and
documentary evidence of an advertising plan for one year has
very little probative value and is woefully inadequate to
find fame. However, plaintiff’s marks appear to have some
strength in connection with clothing, bags, footwear and
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
31
accessories, based on decades of, at least, magazine
advertisements and frequent references in the press,
exposing relevant consumers to these marks and in connection
with celebrities such as Jackie Kennedy Onassis. In
addition, plaintiff’s namesake, Valentino Garavani, has
received substantial recognition over the years as evidenced
by the numerous awards given to him by organizations in the
fashion industry and by being the subject of numerous books
about his career in and impact on the fashion industry.
However, “[b]ecause of the extreme deference that we accord
a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove
it.” Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594,
1597 (TTAB 2009); Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901 (TTAB 2007). Given the lack of
evidence on the extent of sales and advertising to better
understand how much plaintiff’s marks have penetrated the
market, we find that plaintiff has not met its burden to
show that it owns a famous mark. In view thereof, the
strength of plaintiff’s marks do not reach the level of
playing “a ‘dominant’ role in the process of balancing the
du Pont factors.” Recot, 54 USPQ2d at 1897. See also
Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
32
USPQ2d 1351, 1356 (Fed. Cir. 2000); and Hard Rock Cafe, 48
USPQ2d at 1409.16
This brings us then to our consideration of the
similarities between plaintiff’s and defendant’s goods,
channels of trade and classes of purchasers. We must make
our determinations under these factors based on the goods as
they are recited in defendant’s applications and
registrations. See Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); In re Elbaum, 211
USPQ 636 (TTAB 1981).

16 Defendant relies in part on the Board’s decision in Blue Man
Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005), reversed
Civil Action No. 05-2037 (JDB) (D.D.C. 2008). We note that this
decision was reversed on appeal upon a motion for default
judgment. However, the approach taken with respect to the factor
of fame is in line with that enumerated by our primary reviewing
court, the Court of Appeals for the Federal Circuit. See
Packard, 56 USPQ2d 1351, 1356 (“That the fame factor is based on
underlying factfinding dictates that relevant evidence must be
submitted in support of a request for treatment under the fame
factor. This responsibility to create a factual record is
heightened under the more deferential standard that this court
must apply when reviewing PTO factfinding. See Zurko, 527 U.S.
at 165, 50 USPQ2d at 1937; Gartside, 203 F.3d at 1315, 53 USPQ2d
at 1775.”)

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
33
As noted above, the record shows that plaintiff uses
the mark VALENTINO with coats, dresses, gloves, stockings,
and knitwear. Defendant’s Application Serial No. 74188334
and Registration No. 2103658 contain “coats,” “sweaters,”
and “hosiery” in the identification of goods; therefore, for
purposes of our analysis, the goods in International Class
25 in defendant’s Application Serial No. 74188334 and
Registration No. 2103658 are, at least in part, identical.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986 (CCPA 1981) (it is sufficient for a
determination of likelihood of confusion if the relatedness
is established for any item encompassed by the
identification of goods in the application). The record
also shows that plaintiff uses the mark VALENTINO GARAVANI
in connection with shoes, handbags and belts. Defendant’s
Application Serial No. 74188331 and Registration No. 2130804
include “handbags” and “purses” in the identification of
goods, therefore, for purposes of our analysis, the goods in
International Class 18 in defendant’s Application Serial No.
74188331 and Registration No. 2130804, are, at least in
part, identical. Id. Further, we find that the “shoulder
belts” in Application Serial No. 74188331 are complementary
to and, as such, commercially related to, at a minimum,
plaintiff’s belts.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
34
With regard to the channels of trade and classes of
purchasers, we must consider any ordinary channel of trade
and class of purchaser for defendant’s goods, in view of the
lack of any such limitations in its identifications. Thus,
defendant’s trade channels include all types of stores, from
high-end fashion boutiques and department stores to discount
retailers, and defendant’s classes of purchaser range from
the more discriminating purchaser to the general consumer.
With regard to plaintiff, the record shows that plaintiff
sells in the high end of the market and specializes in
luxury goods. See, e.g., Pappagallo Test. pp. 19-20.
Plaintiff also sells in the “luxury wing” of outlet malls.
Pappagallo Test. pp. 16, 17, 21, 65 and 66. In addition,
Plaintiff describes its consumers as “very high end
consumer, sophisticated, with pretty high disposable income
[and] aspiration customers, still very sophisticated; they
want to buy luxury goods but have less disposable income.”
Pappagallo Test. p. 23. Thus, the overlap in trade channels
and possible customers is limited to the higher end of the
market.
In view of the above, we find that, at least some of
the goods in each class of defendant’s applications and
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
35
registrations are identical or otherwise related and the
parties’ trade channels and customers overlap.17
We turn next to consider the marks. At the outset of
this consideration, it is noted that “when marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 32 USPQ2d 1698 (Fed.
Cir. 1992).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The test 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
their entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result.

17 Defendant’s arguments that the parties do not sell their
respective goods in the exact same stores is not persuasive,
inasmuch as we must consider all ordinary channels in regards to
defendant’s sales and the fact that they are sold in different
high end department stores does not obviate a finding that the
channels of trade overlap.

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
36
With regard to plaintiff’s mark VALENTINO, defendant’s
marks GIOVANNI VALENTINO and GIANNI VALENTINO incorporate
plaintiff’s mark in its entirety. Those consumers not
familiar with Valentino Garavani’s full name would likely
believe Giovanni Valentino is referring to Valentino, not
knowing his full name is Valentino Garavani, and thus would
be confused as to the source of the goods. We realize that
plaintiff has only established use in the high end of the
market, from couture to more high end stores such as Saks
and Bergdorf Goodman. However, even in this market
consumers may not be familiar with Valentino’s full name.
The record shows that plaintiff has emphasized Valentino
over Garavani in its marketing of its goods and the designer
himself, plaintiff’s namesake, is repeatedly referred to
simply as Valentino. Moreover, consumers in the lower end
of the clothing market have nonetheless been exposed to
plaintiff’s mark VALENTINO through magazine advertisements,
in the press, and in outlet malls. Because defendant’s
applications and registrations are not restricted by trade
channels, we must consider consumers in the lower end of the
market, who are even less likely to know Valentino’s full
name; and even though the record does not establish an
actual overlap in this trade channel, the consumers in this
trade channel may likely believe GIOVANNI VALENTINO and
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
37
GIANNI VALENTINO are an extension of the brand into a
different market sector for VALENTINO.18
With regard to defendant’s marks we cannot say that one
element dominates over another but rather the full name will
be taken as a whole. That being said, defendant’s marks are
in typed form and we must consider all possible
presentations of those marks including uses that would
emphasize the VALENTINO portion over the GIOVANNI or GIANNI
portion, by, for example, displaying them in drastically
different sizes:
giovanni
VALENTINO

One of defendant’s tags attached to its products
illustrates the danger of emphasizing the VALENTINO portion
of the mark in terms of heightening the likelihood of
confusion.

18 We note that even if we do not consider the lower end of the
market, we would arrive at the same final determination.

Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
38

Norris Test. p. 51 Exh. No. 7.
The text reads, “All over the world the name VALENTINO
is synonymous of style and quality, thanks to the geniality
and dedication of three generations of the VALENTINO family,
etc.” We recognize that the tag includes the full name in
the same size font, however, when the last name is
emphasized through capitalization and bold font, it
increases the likelihood of confusion.
Consumers, when presented with identical goods under
the respective marks VALENTINO and GIOVANNI VALENTINO or
GIANNI VALENTINO, are likely to perceive these two marks as
the same name with one being the shortened form of the
other. The similarity occasioned by the name VALENTINO
occurring in both marks has particular weight in the
clothing and accessories industry where it is common for
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
39
designers to shorten their name marks.19 Defendant argues
that it is also common for designers with the same surname
to coexist in the marketplace and the register (e.g., CALVIN
KLEIN and ANNE KLEIN) and consumers are accustomed to
distinguishing between designers with identical surnames.
However, all of defendant’s examples include the entire name
of the respective designers and are not as similar to each
other as the marks present in this case. Further, as
plaintiff notes, defendant “is asking the Board to make a
number of assumptions of the facts regarding the named
third-party designers. For example, there is no evidence in
the record of any of the designers’ level of sales or
geographic scope, or even if any of the listed third-parties
are engaged in any type of negotiations over their
respective brands.” Rebuttal Br. p. 17.
We conclude that the points of similarities in sound,
appearance and connotation outweigh the dissimilarities, and

19 Several cases have commented on the propensity in the fashion
industry to shorten names. See Nina Ricci S.A.R.L. v. E.T.F.
Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir.
1989) (“the Board has previously recognized the practice in the
fashion industry of referring to surnames alone”); Marshall Field
& Co. (“companies are frequently called by shortened names, such
as Penney’s for J.C. Penney’s, Sears for Sears and Roebuck...,
Ward’s for Montgomery Ward’s, and Bloomies for Bloomingdale’s);
Big M. Inc. v. United States Shoe Corp., 228 USPQ 614, 616 (TTAB
1985) (“[W]e cannot ignore the propensity of consumers to often
shorten trademarks and, in the present case, this would be
accomplished by dropping the ‘T.H.’ [in T.H. MANDY] in referring
to registrant’s stores”); and Polo Fashions, Inc. v. La Loren,
Inc., 224 USPQ 509, 512 (TTAB 1984) (“Lauren” is a shorthand term
for Ralph Lauren).
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
40
the marks VALENTINO and GIOVANNI VALENTINO and GIANNI
VALENTINO have the same overall commercial impressions.
With regard to plaintiff’s mark VALENTINO GARAVANI we
also conclude that the marks are confusingly similar in
sound, appearance, connotation and overall commercial
impression. Plaintiff emphasizes the VALENTINO portion its
mark, and, as noted above, we must consider displays of
defendant’s marks that emphasize the VALENTINO portion.
Further, the second name in each of the marks begins with a
G and ends with an I. Thus, despite the difference in the
actual name, consumers are likely to focus on the VALENTINO
portion of the marks and, again, not remember that it is
GARAVANI, not GIOVANNI or GIANNI, when confronted with
defendant’s marks. Thus, we conclude that the marks
VALENTINO GARAVANI and GIOVANNI VALENTINO and GIANNI
VALENTINO are similar in terms of sound, appearance,
connotation and commercial impression.20
The sixth du Pont factor requires consideration of any
evidence pertaining to “the number and nature of similar

20 Defendant’s reliance on an unpublished decision from 1987 is
not persuasive of a different result. The decision in Delta Shoe
Corp. v. Braxton Jean, Inc., Opp. No. 91069956, slip op. (TTAB
Aug. 31, 1987), is not binding on the Board, was based on a
different record and presents different facts. For example, as
noted by defendant the Board in Delta “noted that there was no
evidence that prospective purchasers would overlook” the other
components NINO and RUDOLFO in their marks. Def. Br. p. 43.
Here, we have evidence of record where plaintiff’s and
defendant’s use emphasizes the VALENTINO portion of the marks.
Moreover, the full name marks here, VALENTINO GARAVANI and
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
41
marks in use on similar goods.” “The probative value of the
third-party trademarks evidence depends entirely upon their
usage.” Palm Bay, 73 USPQ2d at 1673 “As this Court has
previously recognized, where the ‘record includes no
evidence about the extent of [third-party] uses...[t]he
probative value of this evidence is thus minimal.’” Id. at
1693 quoting Han Beauty, Inc. v. Alberto-Culver CO., 236
F.3d 1333, 1338 (Fed. Cir. 2001).
Defendant argues that plaintiff’s “names and marks have
been even further weakened by the widespread use, promotion
and sales of the same or similar goods under third-party
VALENTINO-formative marks in the marketplace for the same or
similar goods.” Def. Br. p. 37. In particular, defendant
argues that “Mario Valentino’s VALENTINO and MARIO VALENTINO
name and mark have coexisted with [plaintiff’s] VALENTINO
and VALENTINO GARAVANI name and mark in the marketplace for
50+ years. During this time, Mario Valentino and
[plaintiff] have sold their identical products in the same
stores, advertised their products in the same magazines and
newspapers, and received unsolicited publicity from the
identical media outlets, often in not only the same issue of
a publication, but within the same article. Moreover, by
way of a coexistence agreement, Mario Valentino and
[plaintiff] have expressly approved and consented to each

GIOVANNI/GIANNI VALENTINO have more points of similarity than
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
42
other’s respective uses of the VALENTINO, MARIO VALENTINO,
and VALENTINO GARAVANI marks, as sufficient to avoid any
likelihood of confusion.” Def. Br. pp. 37-38. Defendant
also points to five other third-party uses of the name
Valentino in connection with clothing, handbags and footwear
(SERENDIPTIY VALENTINO, F by FORTUNA VALENTINO,21 CARLO
VALENTINO, VALENTINO ORLANDI and VALENTINO ROSSI).
Defendant’s evidence of third-party use consists of webpages
from a variety of websites where one or more of the third
parties offers a product for sale under a VALENTINO-
formative mark, including one where VALENTINO GARAVANI also
appears for handbags. In addition, defendant points to
examples where these third parties are featured in the same
publications as plaintiff. Several of these examples are
from trade press, e.g., “Women’s Wear Daily,” and have
little probative value as to consumer perception.
Overall, we find that this evidence is not sufficient
to establish that consumers “have learned to distinguish
between and among designers using the VALENTINO name based
on other differences” or that the “PTO’s decision to
register so many VALENTINO-formative marks for identical or
closely related leather goods and clothing likewise shows
that the addition of other terms to the common VALENTINO

NINO VALENTINO and RUDOLFO VALENTINO.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
43
element more than suffices to distinguish the marks and
avoid a likelihood of confusion.” Def. Br. pp. 38-39. We
further note the five VALENTINO registrations include
defendant’s registrations and Mario Valentino’s registration
for which a consent agreement was concluded.
Although we have given some weight to the evidence of
third-party use, the weight is limited given the absence of
any corroborating facts bearing on the extent of such use.
There are no specifics regarding the sales or promotional
efforts surrounding the third-party marks. Thus, we are
unable to conclude that consumers have become conditioned to
recognize that several other entities use the mark VALENTINO
for clothing or accessory items such that they are
conditioned to look for other elements to distinguish the
marks. Carl Karcher Enterprises Inc. v. Stars Restaurant
Corp., 35 USPQ2d 1125, 1130-31 (TTAB 1995) (“The Board has
in the past given weight to evidence of widespread and
significant use by third parties of marks containing
elements in common with the mark being opposed on grounds of
likelihood of confusion to demonstrate that confusion is
not, in reality, likely to occur in the marketplace. The
justification is, of course, that the presence in marks of
common elements extensively used by others unrelated as to

21 Fortuna is Mario Valentino’s daughter. See Norris Test. p.
168. Plaintiff has a pending action against Fortuna Valentino.
Andrioli Test. p. 107.
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
44
source may cause purchasers not to rely upon such elements
as source indicators, but to look to other elements as a
means of distinguishing the source of the goods/services.
By relying on the third-party star marks in the restaurant
field, applicant would have us conclude that small
variations in the star marks used in the field, including
opposer’s and applicant’s marks, are sufficient to avoid
confusion... We have no problem concluding that opposer’s
marks are strong, even in the face of applicant’s evidence.
...We see some other problems which limit the probative
value of the evidence of third-party use. Many of the marks
being used are less similar to opposer’s marks than are
applicant’s marks. Further, applicant has not furnished any
evidence regarding the extent of use of the marks by these
third parties...In sum the evidence of third-party use is of
limited probative value to support applicant’s position.”
(citations omitted).) See also Kohler, 82 USPQ at 1112.
Similarly, here, some of the third-party marks are not
as similar and there is insufficient evidence regarding the
extent of the third-party use.
The third-party registrations which include the term
VALENTINO are not evidence of what happens in the
marketplace or that the purchasing public is familiar with
the use of the marks which are the subjects thereof and has
therefore learned to distinguish those marks by the
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
45
differences therein. See National Aeronautics & Space
Administration v. Record Chemical Co., 185 USPQ 563, 567
(TTAB 1975). These registrations do not show that they are
being used and provide no information as to the extent of
any possible use such that customers have become accustomed
to encountering the marks in the marketplace. See AMF Inc.
v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973). See also Olde Tyme Foods, v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992).
Finally, the references in the press to other
“Valentino’s” are primarily to Mario Valentino, in
particular when mention is made of both plaintiff and Mario
Valentino. As we know from the record, plaintiff’s family
of companies has an agreement with the Mario Valentino
company which outlines specific ways in which they avoid
confusion.
Defendant argues that the relevant consumers in this
case are sophisticated purchasers of expensive luxury items.
However, there is no evidence of record to support a finding
that the more disposable income an individual consumer has
the more discerning that person is in their purchasing
decision. This is not a situation that involves intricate
equipment requiring that a buyer have a specialized
knowledge or skill and engage in an involved procurement
process. See Electronic Design & Sales Inc. v. Electronic
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
46
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed.
Cir. 1992) (“The record confirms that opposer’s services are
expensive and are purchased only by experienced corporate
officials after significant study and contractual
negotiation. Applicant submitted deposition testimony from
three experienced purchases of battery chargers and power
supplies in the OEM market which demonstrates that the
evaluation process used in selecting applicant’s products
requires significant knowledge and scrutiny.”)
Defendant also argues that “[d]espite decades of
concurrent use by the parties, both parties admit that there
is no evidence of actual confusion.” Def. Br. p. 41. The
lack of evidence of actual confusion does not carry much
weight based on this record. While there is evidence that
defendant has sold products in the United States, at least,
under the mark GIOVANNI VALENTINO, the record does not show
that these sales have been extensive or in overlapping trade
channels such that there has been a meaningful opportunity
for confusion to occur. With regard to defendant’s reliance
on the co-existence and overlapping sales of related goods
under the mark MARIO VALENTINO, a third-party’s mark,
plaintiff and its related companies have a consent
arrangement with that particular company, in which the
parties have agreed to take steps to avoid confusion.
Finally, statements made in the prosecution of trademark
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
47
applications, were not by plaintiff but rather its parent
company, and, moreover, it is not unusual for a party to
take a different position in a later action. In addition,
the marks against which plaintiff’s parent was arguing were
not as similar as those involved in this case, ANDRE
VALENTINO and OSCAR VALENTINO.22
Based on this record there have not been meaningful
opportunities for confusion to occur between the marks in
issue and we find this factor to be neutral in our analysis.
Finally, plaintiff asserts that defendant adopted its
marks in bad faith. There is nothing in the record to even
infer bad faith, and, in fact, defendant’s marks are simply
the name of the designer behind the brand. Accordingly, we
find no bad faith in defendant’s adoption of its marks.
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as the
parties’ arguments with respect thereto (including any
evidence and arguments not specifically discussed in this
opinion). In balancing the relevant factors, we conclude
that because defendant’s marks GIOVANNI VALENTINO and GIANNI
VALENTINO are similar to plaintiff’s marks VALENTINO and
VALENTINO GARAVANI, the goods are identical, in part, and
otherwise closely related, and there is an overlap in the

22 As plaintiff notes, the registrations for these two marks have
since been cancelled. Exh. Nos. H3 and H5 (Pl. N.O.R. (August 6,
2009))
Opposition Nos. 91094961 and 91095203; Cancellation Nos. 92029390
and 92029476
48
channels of trade and the classes of purchasers, there is a
likelihood of confusion. Further, plaintiff has established
priority of use. In view thereof, plaintiff has proven its
claim under Section 2(d) of the Trademark Act. Finally, to
the extent we have any doubt we resolve it, as we must, in
favor of the prior user. See Hewlett-Packard Co. v. Packard
Press, Inc., 281 USPQ2d 1001, 1003 (Fed. Cir. 2002); Hard
Rock Cafe, 56 USPQ2d at 1514 and W. R. Grace & Co. v.
Herbert J. Meyer Industries, Inc., 190 USPQ 308, 311 (TTAB
1976).
Decision: The oppositions are sustained and the
petitions to cancel are granted on the respective claims
under Section 2(d) of the Trademark Act.