Valentino Receives Favorable TTAB Ruling in Sixteen-Year Trademark Dispute


On June 25, 2010, the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office rendered its decision in the case of Valentino U.S.A., Inc. v. Florence Fashions (Jersey) Limited, Opposition Nos. 91094961 and 91095203, Cancellation Nos. 92029390 and 92029476, 2010 WL 2783891 (TTAB June 25, 2010), marking the culmination of a sixteen-year dispute -- the opposition proceedings were filed in June 1994 and the cancellation proceedings were commenced in June 1999. Defendant Florence Fashion (Jersey) Limited ("Florence") had filed applications and registrations for the marks "Gianni Valentino" and "Giovanni Valentino" that it used on a variety of clothing and accessory items, including coats, dresses, handbags, and belts. Plaintiff Valentino U.S.A. ("Valentino") brought the proceedings on ground that, as applied to Florence's goods, the marks so resembled Valentino's previously used marks "Valentino" and "Valentino Garavani" for similar goods as to be likely to cause confusion under the Lanham Act, 15 U.S.C. § 1052(d) (i.e., consumers would see a Florence Fashion "Giovanni Valentino" purse and think that it was produced by famed designer Valentino Garavani).

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