BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re‘ Application of
`
`Pucci Corporation
`
`Serial No.: 76/048,785
`
`Filed: May 15, 2000
`
`Mark: PUCCI
`
`&/\./%\/\./\./\./\/
`
`1
`
`09-12-2002
`U.S. Patent & TMOfc/TM Mail Rcpt D1. #70
`
`Scott Oslick
`
`Trademark Examining Attorney
`Trademark Law Office 108
`
`APPLICANT’S APPEAL BRIEF
`
`Tamara A. Miller
`
`LEYDIG, VOIT & MAYER, LTD.
`Two Prudential Plaza, Suite 4900
`Chicago, IL 60601-6780
`(312) 616-5600
`
`Attorney for Applicant, Pucci Corporation
`
`4
`
`Ox
`
`5
`
`S11
`
`c:
`C\S
`
`.9“,
`E/3
`)
`
`mC
`
`‘.‘..J
`
`33
`«<
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`11.
`
`INTRODUCTION ...................................................................................................... .. 1
`
`PROCEDURAL HISTORY ......................................................................................... 1
`
`IH. APPLICANT’S ARGUMENT ................................................................................... .. 2
`
`A.
`
`The Parties’ Respective Goods Are Distinct and
`Are Offered In Separate Channels of Trade Under
`Different Conditions .................................................................................... .. 2
`
`1.
`
`2.
`
`3.
`
`The Applicant’s Clothing is Custom Tailored and
`is Sold Exclusively at Applicant’s Clothing Establishment ............ .. 2
`
`The Registrant’s Clothing is Sold Off-The-Rack At
`a Variety of Retail Outlets ............................................................... .. 4
`
`The Differences Between the Parties’ Respective Goods,
`Where They Are Sold, and How They Are Sold Will
`Prevent Consumers From Becoming Confused ............................... .. 5
`
`'
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Long-term Coexistence of the Applicant’s PUCCI Mark and
`the Cited Marks Demonstrates That No Confusion Is Likely Here ............... 6
`
`The Parties’ Goods Are Expensive and Are Directed To
`Sophisticated Consumers Who Exercise A High Degree of Care ............... .. 8
`
`Prior Court Decisions Have Found That the PUCCI and
`EMILIO PUCCI Marks Can Peacefully Coexist for
`The Parties’ Respective Clothing................................................................. ..l0
`
`The Fact that the PUCCI Mark May Call to Mind the
`EMILIO PUCCI Mark Does Not Mean Confusion Is Likely ...................... ..12
`
`IV. CONCLUSION ........................................................................................................... ..13
`
`?
`
`it
`
`‘
`
`1
`
`I
`‘‘
`
`4
`
`1
`
`I
`I
`3
`
`I i
`
`I
`
`

`
`
`T-
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`.
`Accord University ofNotre Dame Du Lac v. J.C. Gourmet
`Food Imports Co., 703 F.2d 1372 (Fed. Cir. 1983) .................................................................... .. 12
`
`Aktiebolaget Electrolux v. Armatron Int ’I, Inc.,
`27 U.S.P.Q.2d 1460, 1462-63 (1st Cir. 1993) (emphasis added) .................................................. .. 6
`
`Barre-National, Inc. v. Barr Laboratories, Inc.,
`773 F. Supp. 735 (D.N.J. 1991) .................................................................................................... .. 7
`
`Emilio Pucci Societa a Responsibilita Limitata v. Pucci Corp. ,
`10 U.S.P.Q.2d 1541 (N.D. Ill. 1988) .......................................................................................... .. 10
`
`In re Digirad Corp., 45 U.S.P.Q.2d 1841 (TTAB 1998) .............................................................. .. 8
`
`In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1360-62,
`177 U.S.P.Q. 563, 566-67 (CCPA 1973) ...................................................................................... .. 6
`
`In re Ferrero, 479 F.2d 1395 (C.C.P.A. 1973) ........................................................................... .. 12
`
`Lever Bros. Co. v. American Bakeries Co., 216 U.S.P.Q. 177, 182 (2d Cir. 1982) ..................... .. 6
`
`McGregor-Doniger, Inc. v. Drizzle, Inc., 559 F.2d 1126, 1137 (2d Cir. 1979) ........................... .. 8
`
`Planet Hollywood (Region I10, Inc. v. Hollywood Casino Corp. ,
`80 F. Supp.2d 815 (N.D. Ill. 1999), opinion clarified, 1999 WL 1186802 (N.D. Ill. 1999) ........ .. 7
`
`Pucci v. Pucci Corp., 2 U.S.P.Q.2d 1958, 1959 (N.D. Ill. 1987) ............................................... .. 10
`
`Versa Prods. Co. v. Bifold Co., 33 U.S.P.Q. 2d 1801, 1812 (3"' Cir. 1995),
`cert. denied, 516 U.S. 808 (1995) ................................................................................................. .. 7
`
`Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) ...................................... .. 8
`)
`
`10 U.S.P.Q.2d at 1544‘................................................................................................................ .. 11
`
`Rules
`
`TMEP§ 1207.01 ....................................................................................................................... .. 6, 8
`
`

`
`
`
`Statutes
`
`15 U.S.C. § 1051(a) ...................................................................................................................... ..1
`
`15 U.S.C. § 1052 (d), and e(4) ...................................................................................................... .. 1
`
`15 U.S.C. § 1070..........................................................................................................
`
`................. 2
`
`37 C.F.R. §2.141 ........................................................................................................................... .. 2
`
`iii
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Notice of Appeal filed March 13, 2002, the Applicant appeals the
`
`Examiner’s final refusal to register Applicant’s mark “PUCCI” for the following goods:
`
`Custom tailored apparel, namely, men's suits, tuxedo suits, topcoats, sport coats,
`sport trousers and sport shirts, and women's suits, skirts, topcoats and sport coats,
`and neckwear and accessories therefor, namely, silk cravats, scarves, mufflers,
`sweaters, socks and handkerchiefs, in International Class 25.
`
`The Examiner has refused registration on the Principal Register pursuant to Section 2(d),
`
`15 U.S.C. § 1052(d), finding that the mark PUCCI is likely to cause confusion with three prior
`
`registrations for the mark EMILIO PUCCI covering various types of women’s and children’s
`
`clothing. Applicant respectfully submits that its PUCCI mark for custom tailored clothing is not
`
`likely to cause confusion with the marks cited by the Examiner for many reasons, the most
`
`important being the fact that the parties’ respective marks have coexisted with no known
`
`instances of actual confusion for over 50 years. Other relevant factors similarly weigh in favor
`
`of a finding that no confusion is likely, including significant differences in the parties’ goods and
`
`how they are marketed and sold; the sophistication of the relevant consumers of both parties’
`
`goods and the high degree of care such consumers will exercise when purchasing the parties’
`
`goods; the high price points of the parties’ goods; among other factors.
`
`II.
`
`PROCEDURAL HISTORY
`
`Applicant filed an application under Section 1(a) of the Trademark Act, 15 U.S.C. §
`
`105l(a), for the mark PUCCI on May 15, 2000, claiming first use of the mark on October 5,
`
`1928. In the initial Office Action dated November 28, 2000, the Examiner refused registration
`
`on the Principal Register pursuant to Sections 2(d) and 2(e)(4) of the Trademark Act, 15 U.S.C.
`
`§§ 1052(d) and (e)(4). The Examiner found that the mark PUCCI was likely to cause confusion
`
`

`
`
`
`with the marks in U.S. Registration Nos. 1,675,914, 1,687,909, and 1,690,242, and that the mark
`
`was primarily merely a surname.
`
`Applicant responded on May 29, 2001, arguing that no confusion was likely with the
`
`cited marks, and submitting a statutory declaration pursuant to Section 2(1) of the Trademark Act
`
`claiming that the mark had become distinctive for the goods through Applicant’s substantially
`
`exclusive and continuous use of the mark in commerce since October 5, 1928. In a final Office
`
`Action, the Examiner withdrew the refusal to register pursuant to Section 2(e)(4), but maintained
`
`the refusal pursuant to Section 2(d) based on Registration Nos. 1,675,914, 1,687,909, and
`
`1,690,242.
`
`On March 13, 2002, Applicant filed a Request for Reconsideration, which contained
`
`additional information and evidence demonstrating that confusion is not likely here. Also on
`
`March 13, 2002, Applicant filed a Notice of Appeal pursuant to 15 U.S.C. § 1070 and 37 C.F.R.
`
`§2.141, in which it requested that the appeal be suspended pending the Examiner’s consideration
`
`of the Request for Reconsideration. On July 10, 2002 the Examiner denied the Request for
`
`Reconsideration, and maintained the refusal to register under Section 2(d). On July 19, 2002, the
`
`Board resumed the appeal and allowed the Applicant 60 days to file its appellate brief. In
`
`compliance with the schedule set by the Board, this brief is now submitted for consideration.
`
`III.
`
`APPLICANT’S ARGUMENT
`
`A.
`
`The Parties’ Respective Goods Are Distinct and Are Offered In Separate Channels
`of Trade Under Different Conditions
`
`1.
`
`The Applicant’s Clothing is Custom Tailored and is Sold Exclusively at
`Applicant’s Clothing Establishment
`
`The Applicant began using its PUCCI mark in connection with its custom tailored
`
`clothing at least as early as 1928. Applicant is the owner of a U.S. trademark registration for the
`
`

`
`
`
`mark “CANDIDA PRAECORDIA PUCCI and Design,” Registration No. 716,986 and has used
`
`that mark for its custom tailored clothing also since 1928.
`
`The Applicant’s goods consist of “custom tailored” apparel for men and women. In other
`
`words, consumers purchase the Applicant’s PUCCI brand clothing from a tailor who custom-
`
`makes the clothing for each individual personally. The Applicant's clothing is not sold at retail
`
`establishments, but rather on a personal basis between the Applicant and its customers from its
`
`establishment in Chicago, Illinois. The Applicant also travels to its customers’ homes and
`
`offices to work directly with customers for the creation of custom tailored clothing.
`
`Over the years the Applicant has established a reputation for making the finest available
`
`custom tailored clothing. In its more than seventy years of use of the PUCCI mark, Applicant
`
`has established a strong connection between the PUCCI mark and its finely made clothing with
`
`relevant consumers.
`
`Applicant’s exemplary reputation for fine custom tailored clothing sold on a personal
`
`basis is demonstrated in the attached article about Applicant in the Chicago Tribune Magazine
`
`dated September 12, 1999 (See Exhibit A). The article details the specific nature of Applicant’s
`
`custom tailored clothing and the narrow audience that seeks out Applicant to make custom
`
`tailored PUCCI brand clothing. As indicated in the article, Applicant’s customers include
`
`famous individuals in the business, sports and acting communities, and have included George
`
`Hallas, William Wrigley, Dean Martin and Jerry Lewis. As stated in the article, the cost of a
`
`PUCCI suit starts at approximately $4500. Accordingly, only the most discriminating of buyers
`
`purchase custom tailored PUCCI brand clothing made by the Applicant. Indeed, Applicant does
`
`not solicit consumers, rather individuals seeking the highest quality custom tailored clothing seek
`
`out the Applicant to arrange for the purchase of a suit or other article of custom made clothing.
`
`

`
`Along these lines, Alan Flusser recognizes Applicant’s reputation in the specific custom
`
`tailored clothing industry in the book Style and the Man. In Style and the Man, Flusser refers to
`
`Applicant as one of the “last great American tailoring establishments.” As indicated by the
`
`passage in Mr. Flusser’s book attached hereto as Exhibit B, Pucci Corporation is the oldest
`
`custom tailor establishment in the United States, first opening in 1928 in the same location on
`
`Chicago’s Michigan Avenue where it sits today.
`
`The exclusivity of Applicant’s PUCCI brand clothing is demonstrated by the fact that the
`
`Applicant’s establishment is open by appointment only. The Applicant’s clothing establishment
`
`is not an off-the-rack commercial clothing store, but rather, as described by Flusser, a showroom
`
`that is “hushed and carpeted, with armchairs upholstered with embroidered Ps fabric. . ..” (See
`
`Exhibit B). As such, the specific consumers targeted by the Applicant, namely an elite group of
`
`individuals seeking the finest custom tailored clothing, clearly know the PUCCI mark and the
`
`fact that it is associated with the Applicant.
`
`As Flusser states, “[T]hat a Pucci suit has such little relationship to current fashion is
`
`reason enough to know about it. This shop and its products are vestiges of American custom
`
`tailoring——the kinds of period pieces that will soon disappear.” Indeed, the Applicant is a unique
`
`breed in the world of fashion that should perhaps be more widely known, as Mr. Flusser
`
`indicates, but is instead focused narrowly on those individuals who have the wherewithal and
`
`interest to obtain a custom tailored suit of impeccable quality. (See Exhibit B).
`
`2.
`
`The Registrant’s Clothing is Sold Off-The-Rack At a Variety of Retail
`Outlets
`
`Registrant began using its EMILIO PUCCI mark in connection with ladies apparel in
`
`1950 and expanded its use of the mark to colognes and children's’ clothing in 1965 and 1978
`
`respectively. The Registrant sells no men's clothing under its mark EMILIO PUCCI. While the
`
`

`
`
`
`Registrant's goods are sold at a variety of high—end retail establishments such as clothing
`
`boutiques and the like, the Registrant does not sell custom tailored clothing under its mark
`
`EMILIO PUCCI. To the contrary, all of the Registrant’s goods are sold off-the-rack.
`
`3.
`
`The Differences Between the Parties’ Respective Goods, Where They Are
`Sold, and How They Are Sold Will Prevent Consumers From Becoming
`Confused
`
`In this case, the fact that the Applicant’s PUCCI clothing is “custom tailored” is of great
`
`significance. For example, it means that consumers only purchase Applicant’s PUCCI brand
`
`clothing by: (1) hearing about the Applicant by word of mouth; (2) making an appointment with
`
`the Applicant; (3) either visiting the Applicant’s establishment on Michigan Avenue in Chicago,
`
`or having the Applicant visit their home or office for a fitting appointment; (4) being personally
`
`fitted for custom made clothing, often returning two or three times for additional fittings; (5)
`
`paying on the order of $4500 for a suit; and (6) returning to pick up their PUCCI brand clothing
`
`when it has been made.
`
`In contrast, the Registrant’s clothing is not custom tailored, but rather is sold off-the-rack
`
`at a variety of public retail establishments such as clothing boutiques and the like. Consumers do
`
`not need an appointment to purchase the Registrant’s clothing, and the Registrant’s clothing is
`
`not specifically made to fit each person.
`
`In this case the differences between the Applicant and Registrant’s goods are significant.
`
`Consumers will encounter the parties’ respective marks in different places, under different
`
`conditions. These differences weigh in favor of a finding that no confusion is likely here.
`
`

`
`
`
`B.
`
`The Long-term Coexistence of the Applicant’s PUCCI Mark and the Cited Marks
`Demonstrates That No Confusion Is Likely Here
`
`The strongest evidence that there is no likelihood of confusion between the Applicant's
`
`mark and the cited marks is the fact that there is no evidence of actual confiision despite
`
`concurrent use of over fifty years. TMEP § 1207.01; In re E.I. Du Pont de Nemours & Co., 476
`
`F.2d 1357, 1360-62, 177 U.S.P.Q. 563, 566-67 (CCPA 1973) (in testing for likelihood of
`
`confusion, one of the factors to be considered is the length of time during and the conditions
`
`under which there has been concurrent use without evidence of actual confusion).
`
`As noted above, Applicant began using the mark PUCCI in 1928. The owner of the cited
`
`registrations for EMILIO PUCCI claims a first use date of 1950. Thus, the Applicant and
`
`Registrant's marks have coexisted in the marketplace for more than 50 years. In all that time,
`
`Applicant has not become aware of a single instance of actual confusion that has occurred as
`
`between the parties’ respective marks.
`
`The fact that the marks have peacefully coexisted in the marketplace with no known
`
`confusion for such a long period of time is highly significant, and is entitled to great weight in
`
`the likelihood of confiision analysis. For example, in Aktiebolaget Electrolux v. Armatron Int ’I,
`
`Inc., 27 U.S.P.Q.2d 1460, 1462-63 (1st Cir. 1993) (emphasis added), the First Circuit stated that
`
`“an absence of actual confusion, or a negligible amount of it, between two products after a long
`
`period of coexistence on the market is highly probative in showing that little likelihood of
`
`confusion exists.” In Aktiebolaget, the court reasoned that coexistence with no known confusion
`
`for six years was “twice the amount of time that [it] had previously found convincing”. Id. at
`
`1463; see Lever Bros. Co. v. American Bakeries Co., 216 U.S.P.Q. 177, 182 (2d Cir. 1982) (no
`
`likelihood of confusion inferred by judge where each party had significant sales during three-
`
`year period and there was no evidence of actual confiision); Versa Prods. Co. v. Bifold Co., 33
`
`

`
`
`
`U.S.P.Q. 2d 1301, 1312 (3"‘ Cir. 1995), cert. denied, 516 U.S. 808 (1995) (stating the rule that
`
`“[i]f a [party’s] product has been sold for an appreciable period of time without evidence of
`
`actual confilsion, one can infer that continued marketing will not lead to consumer confusion in
`
`the future. The longer the challenged product has been in use, the stronger this inference will
`
`be”); Barre-National, Inc. v. Barr Laboratories, Inc., 773 F. Supp. 735 (D.N.J. 1991) (absence of
`
`actual confusion for seventeen years between BARR and BARRE “weighs heavily against a
`
`finding of likelihood of confusion”); Planet Hollywood (Region 110, Inc. v. Hollywood Casino
`
`Corp., 80 F. Supp.2d 815 (N.D. 111. 1999), opinion clarified, 1999 WL 1186802 (N.D. Ill. 1999)
`
`(parties co-existed in the Chicago area for more than six years without a reported instance of
`
`actual confusion: “The court deems it very significant that over this extended period, Planet
`
`Hollywood has been unable to muster any evident of actual confusion.”).
`
`Applicant respectfully submits that if confusion has not arisen as between its mark
`
`PUCCI for custom tailored clothing and the Registrant’s mark EMILIO PUCCI for retail
`
`A clothing in over fifty years, confusion is not likely to occur in the future.
`
`In the final Office Action, the Examiner pointed out that it is unnecessary to show actual
`
`confusion in order to establish a likelihood of confusion. However, he summarily dismissed the
`
`fact that the parties have peacefully coexisted with no known confusion for over 50 years and did
`
`not afford this factor the consideration it deserves in this case. The cited cases make it clear that
`
`a long period of coexistence with no known confusion is “highly probative,” “significant,” and
`
`“weighs heavily against a finding of likelihood of confusion.” See Aktiebolaget, Planet
`
`Hollywood, and Barre-National, supra. Indeed, fifty years is a far longer period than the time
`
`periods of peacefiil coexistence that were found to be convincing in the cases discussed above.
`
`

`
`
`
`Moreover, Applicant’s “CANDIDA PRAECORDIA PUCCI & Design” mark has been
`
`registered since 1961 and has co-existed with the cited EMILIO PUCCI registrations, further
`
`demonstrating the ability for the marks to peacefully coexist in the marketplace.
`
`In sum, the fact that the parties’ respective marks have each been in use for over 50 years
`
`with no known instances of actual confusion is entitled to great weight. Applicant submits that
`
`the Examiner did not afford this factor weight at all, but rather summarily dismissed it. The
`
`purpose of the likelihood of confusion analysis is to try to assess how consumers will react to
`
`two parties’ marks in the actual marketplace: Will they be confused? The best indicator that
`
`consumers will not be confused here is the fact that they have not yet been and over 50 years
`
`have passed.
`
`C.
`
`The Parties’ Goods Are Expensive and Are Directed To Sophisticated Consumers
`Who Exercise A High Degree of Care
`
`Factors such as the sophistication of purchasers, coupled with the expense of the goods
`
`and the likely care purchasers of the goods would exercise, can reduce the likelihood of
`
`confusion and result in the registration of what otherwise might be similar marks. See In re
`
`Digirad Corp., 45 U.S.P.Q.2d 1841 (TTAB 1998) and cases cited therein; TMEP § 1207.01.
`
`The price of the goods is an important factor in determining the level of care the reasonably
`
`prudent buyer will exercise. McGregor-Doniger, Inc. v. Drizzle, Inc., 559 F.2d 1126, 1137 (2d
`
`Cir. 1979); In re Digirad Corp. , 45 U.S.P.Q.2d 1841.
`
`It is expected that purchasers of
`
`expensive rather than inexpensive items make more careful inquiry. McGregor-Doniger, 559
`
`F.2d at 1137. Indeed, when making a decision about the purchase of expensive goods, the
`
`reasonably prudent purchaser standard is raised to the standard of the discriminating purchaser.
`
`Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990).
`
`

`
`
`
`As stated above and evidenced in Exhibit A hereto, the starting price for a man’s suit
`
`custom tailored by Applicant in 1999 was $4500. The cost of Applicant’s custom tailored
`
`clothing alone clearly demonstrates the sophistication of Applicant’s consumers and the care
`
`with which they proceed to purchase their clothing. An individual willing to pay a minimum of
`
`$4500 for a suit is clearly able to distinguish that the PUCCI mark is synonymous with
`
`Applicant.
`
`Likewise, the prior Registrant’s mark EMILIO PUCCI is used in connection with
`
`clothing that is high-end and relatively expensive. Accordingly, buyers seeking Registrant’s
`
`products are also likely to be discriminating and to understand the difference between the PUCCI
`
`and EMILIO PUCCI marks. While some consumers may buy products from both the Applicant
`
`and the Registrant, those consumers who have the resources and understanding of fashion to
`
`purchase clothing from both parties will recognize the difference between the parties, and the
`
`vast differences in the nature and type of clothing and manufacturing process for the clothing.
`
`For example, a consumer who purchases custom tailored clothing undoubtedly recognizes the
`
`differences between off-the-rack clothing and an article of clothing that is made specifically for
`
`them by an exclusive custom tailor who has been in business since 1928.
`
`In sum, the goods sold by the Applicant and Registrant are priced far higher than clothing
`
`sold at typical retail stores such as department stores or The Gap and Banana Republic.
`
`Accordingly, purchasers of the parties’ respective goods are likely to be sophisticated about
`
`clothing and fashion and will exercise greater care in purchasing the parties’ respective goods.
`
`In such circumstances, confusion is not likely to occur.
`
`

`
`
`
`D.
`
`Prior Court Decisions Have Found That the PUCCI and EMILIO PUCCI Marks
`Can Peaeefully Coexist for The Parties’ Respective Clothing
`
`The Applicant and the Registrant of the cited applications have been involved in
`
`litigation against each other in the past. (See Exhibit C, consisting of two court decisions). Two
`
`written opinions issued from the case ofEmz'lio’Pucci Societa a Responsibilita Limitata v. Pucci
`
`Corp., which began when Pucci Corp., the Applicant herein, began selling perfume.
`
`In the late 1980s, Emilio Pucci Societa a Responsibilita Limitata (“Emilio Pucci”)
`
`brought an action against Pucci Corp. for trademark infringement pertaining to Pucci Corp.’s
`
`sale of perfume under the PUCCI mark. Not surprisingly, the complaint did not mention Pucci
`
`Corp.’s sale of clothing under the PUCCI mark, since Pucci Corp. had priority of rights in the
`
`mark PUCCI for clothing as against the Plaintiff Emilio Pucci. Pucci Corp. counterclaimed
`
`against Emilio Pucci for trademark infringement arising from Emilio Pucci’s use of the mark
`
`EMILIO PUCCI for clothing.
`
`In the first written decision in the case, Pucci v. Pucci Corp., 2 U.S.P.Q.2d 195 8, 1959
`
`(N.D. 111. 1987), the Court acknowledged that Pucci Corp. began use of its PUCCI mark in 1928,
`
`and that Emilio Pucci first received national recognition for its clothing in 1948. The Court
`
`rejected three of Pucci Corp.’s four counterclaims, finding that the years of coexistence of the
`
`parties’ marks precluded any objection by Pucci Corp. to Emilio Pucci’s use of its mark EMILIO
`
`PUCCI in connection with the sale of clothing and accessories.‘ Id. at 1960-61.
`
`In a subsequent written decision in the case, Emilio Pucci Societa a Responsibilita
`
`1
`
`Limitata v. Pucci Corp., 10 U.S.P.Q.2d 1541 (N.D. 111. 1988), the Court granted partial summary
`
`judgment in favor of Emilio Pucci against Pucci Corp.’s infringement and unfair competition
`
`‘ Applicant submits that in past proceedings with regard to the PUCCI mark, it was not able to adequately
`present its positions through its prior counsel and the trier of fact thus did not hear its positions with
`regard to its mark.
`
`10
`
`

`
`
`
`counterclaims that were predicated on Emilio Pucci’s sale of clothing under the mark EMILIO
`
`PUCCI. The court held that the parties’ knowledge of each other for such a long period estopped
`
`Pucci Corp.’s counterclaims due to laches. Id. at 1543. On the plaintiff Emilio Pucci’s claims
`
`related to Pucci Corp.’s sales of perfume, the Court ultimately granted a very limited injunction
`
`against Pucci Corp., requiring Pucci Corp. to use “Lawrence Pucci” and a disclaimer in
`
`connection with the advertising and sale of its perfume products outside the Chicago
`
`metropolitan area.2 Id. at 1545-46.
`
`The Examiner’s July 10, 2002, decision denying the Applicant’s Request for
`
`Reconsideration states that one of the prior court decisions, namely the later 1988 decision,
`
`“specifically stated that the parties’ products are similar and that the marks are similar.”
`
`However, that statement made by the Court in its 1988 decision pertained to the plaintiff Emilio
`
`Pucci’s claim of infringement arising from defendant Pucci Corp.’s sale ofperfume, not Pucci
`
`Corp.’s counterclaim predicated on Emilio Pucci’s sale of clothing. See 10 U.S.P.Q.2d at 1544.
`
`The Examiner in his July 10, 2002, decision reasoned that the Court’s decision—namely
`
`that it (1) required Pucci Corp. to display the name “Lawrence” prior to the name “Pucci” in
`
`connection with the advertising and sale of its perfume outside the Chicagoland area; and (2)
`
`required Pucci Corp. to include a disclaimer on its perfume product sold outside the Chicagoland
`
`area——“would certainly seem to support the finding of a likelihood of confusion.” To the
`
`contrary, those restrictions that the Court ultimately imposed on Pucci Corp. pertained only to its
`
`2 Notably, Pucci Corp.’s methods of advertising and selling its PUCCI perfume differed significantly
`from its methods of advertising and selling clothing. For example, as discussed above, Pucci Corp. does
`not advertise its custom tailored clothing; instead, consumers affirmatively seek out Pucci Corp. due to its
`reputation. Further, Pucci Corp. offers its tailored clothing exclusively through its own clothing
`establishment. On the other hand, Pucci Corp. was advertising its perfume through national magazines.
`Furthermore, the cost of the parties’ respective perfume products was very low, namely less than $50.
`Thus, this aspect of the court’s analysis with respect to confusion that might arise from the parties’
`respective sales of perfume is not applicable to the question regarding clothing which is at issue here.
`
`11
`
`

`
`
`
`advertising and sale of perfume outside of Chicagoland, not to clothing——which is the subject of
`
`the instant application.
`
`With respect to clothing, the clear implication of the Court’s decisions was that neither
`
`party could object to the other’s use of their respective PUCCI and EMILIO PUCCI marks for
`
`clothing, because the parties’ marks had coexisted for too long a period to warrant any current
`
`objection. No evidence of actual confusion between the parties’ marks for clothing was
`
`presented, which presumably led the court to believe that the coexistence of the parties’ marks
`
`could continue without causing actual confusion among consumers.
`
`In sum, the PUCCI and EMILIO PUCCI marks have coexisted in the marketplace in
`
`connection with the sale of clothing without restriction to either party’s use of their respective
`
`marks. Applicant respectfully submits that this coexisting use can continue, together with
`
`coexisting registrations for the marks at issue, without a likelihood of consumer confusion.
`
`E.
`
`The Fact that the PUCCI Mark May Call to Mind the EMILIO PUCCI Mark Does
`Not Mean Confusion Is Likely
`
`Finally, it is doubtful that those who are familiar with the PUCCI mark would call to
`
`mind the EMILIO PUCCI mark, and vice versa. Moreover, assuming that the PUCCI mark calls
`
`to mind the EMILIO PUCCI mark, this is not evidence of a likelihood of consumer confusion.
`
`Confusion means more than merely calling to mind another mark. In In re Ferrero, 479 F.2d
`
`1395 (C.C.P.A. 1973), Judge Rich observed:
`
`I
`
`The very fact of calling to mind may indicate that the mind is distinguishing,
`rather than being confused by, the two marks. . . Seeing a yellow traffic light
`immediately “calls to mind” the green that has gone and the red that is to come, or
`vice versa; that does not mean that confusion is being caused. As we are
`conditioned, it means exactly the opposite.
`
`As the Court held in Accord University ofNotre Dame Du Lac v. .1. C. Gourmet Food
`
`Imports C0., 703 F.2d 1372 (Fed. Cir. 1983), likelihood of confusion “means more than the
`
`12
`
`

`
`likelihood that the public will recall a famous mark on seeing the mark used by another.”
`
`Applicant believes it unlikely that those seeing its PUCCI mark would think of EMILIO PUCCI,
`
`but if that is deemed a possibility, Applicant submits that the reverse would also occur.
`
`However, because of the strong association between PUCCI and its products, the thought of
`
`EMILIO PUCCI will not be based on confusion, but rather an understanding by the consumer
`
`that there are two marks PUCCI and EMILIO PUCCI which are associated with different entities
`
`that offer distinguishable products in distinct trade channels within the clothing industry.
`
`IV.
`
`CONCLUSION
`
`The reasons why there is no likelihood of confusion between Applicant’s mark PUCCI
`
`and the cited registrations for EMILIO PUCCI are manifold. The reason entitled to perhaps the
`
`greatest weight is the fact that the parties’ respective marks have coexisted with no known
`
`instances of actual confusion for over 50 years. Fifty years is a far longer period of time than the
`
`time periods of peaceful coexistence that have been found convincing in the previous cases
`
`discussed above. After such a long period of time, it is logical to infer that if confusion were
`
`likely to arise as between the parties’ marks, it already would have.
`
`Other relevant factors similarly weigh in favor of a finding that no confusion is likely.
`
`The parties’ clothes are distinct in nature (i. e., custom made versus off-the-rack), and are offered
`
`in separate channels of trade under different conditions. The parties’ goods are expensive and are
`
`directed to sophisticated consumers who exercise a high degree of care, further lessening the
`
`likelihood that confusion will arise. Prior court decisions have found that the marks PUCCI and
`
`EMILIO PUCCI can peacefully coexist for clothing, and that the parties’ respective marks have
`
`coexisted for too long a period to warrant any current objection. Finally, while it is doubtful that
`
`those who are familiar with the PUCCI mark would call to mind the EMILIO PUCCI mark, or
`
`13
`
`

`
`
`
`vice versa, such “calling to mind” would not be predicated on confusion, but rather an
`
`understanding by the consumer that there are two distinct marks PUCCI and EMILIO PUCCI
`
`that are used for goods originating from two different sources.
`
`In sum, Applicant submits that it has demonstrated that there is no likelihood of
`
`confusion between its mark “PUCCI” for custom tailored clothing and the three cited‘
`
`registrations for “EMILIO PUCCI”. As such, the Applicant asks this Board to reverse the
`
`Examiner’s refusal to register PUCCI on the Principal Register and allow this application to
`
`proceed to publication.
`
`Dated:
`
`Respectfully submitted,
`
`_A__§_}_[ZQACL_
`
`Tamara A. Miller
`
`LEYDIG, VOIT & MAYER, LTD.
`Two Prudential Plaza, Suite 4900
`Chicago, IL 60601-6780
`(312) 616-5600
`Attorneys for Applicant
`
`

`
`I)
`
`u
`
`
`
`
`
`CUSTOM TAIL