Diversified Gestao e Investimentos Lda.

Trademark Trial and Appeal Board

Nov 13, 2003

No. 75923399 (T.T.A.B. Nov. 13, 2003)

Mailed: 11/13/2003
Paper No. 16
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Diversified Gestao E Investimentos Lda.
________
Serial Nos. 75923398 and 75923399
_______
Jane F. Collen of Collen IP for Diversified Gestao E
Investimentos Lda.
Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Seeherman and Drost, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Diversified Gestao e Investimentos Lda., a Portuguese
corporation, has applied to register the marks TDM TRINITÀ'
DE' MONTI and design (Serial No. 75923398) and TRINITA' DE'
MONTI and design (Serial No. 75923399), both of which marks
are shown below.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial Nos. 75923398 and 75923399
2
(Serial No. 75923398)
(Serial No. 75923399)
The applications were filed on February 22, 2000, and
both are based on an asserted bona fide intention to use
the marks, as well as on Section 44(e) of the Trademark Act
in view of European Community registrations, with Section
44(d) claims of priority of December 28, 1999. The
identification of goods for both applications is:
Household objects and tableware made of
precious metals, namely, serving trays,
vases, jugs, decorative boxes, bowls,
statuettes, plates, glasses, cups,
goblets, saucers, coasters,
nutcrackers, oil and vinegar cruets,
sugar bowls, centerpieces, baskets, ice
buckets, non-electric coffeepots, cigar
cases, cigarette cases, match holders,
eggcups, toothpick holders, ashtrays,
branched candlesticks, serviette rings,
and key rings (Class 14);
Statuettes made of wood and non-metal
key rings (Class 20); and
Serial Nos. 75923398 and 75923399
3
Household objects and tableware made of
porcelain, ceramic, majolica, glass,
crystal glass and steel, namely,
dinner-set, coffee-set, tea-set,
glasses, cups, goblets, tankards, jugs,
empty bottles, oil and vinegar
curettes, nutcrackers, corkscrews,
openers, ladles, vases, plates,
coasters, centerpieces, fire-proof
baking pans, non-electric coffee pots,
egg cups, toothpick holders, branched
candlesticks, serviette rings; and
statuettes made of porcelain, ceramic,
majolica, glass, and crystal glass
(Class 21).
The English translation of the term TRINITA’ DE’ MONTI
is “Trinity of the Mountains.” The lining in each drawing
is a feature of the mark and does not indicate color.
Registration has been refused pursuant to Section 2(a)
of the Trademark Act, 15 U.S.C. 1052(a), on the ground that
the applied-for marks falsely suggest a connection with the
church Trinità dei Monti.
The appeals in each case have been fully briefed.
Applicant originally requested oral hearings, but
subsequently withdrew those requests. Because each appeal
involves the same issue and similar records, we decide them
both in this single opinion.
Section 2(a) of the Trademark Act prohibits the
registration of a trademark if, inter alia, it consists of
or comprises matter which may falsely suggest a connection
Serial Nos. 75923398 and 75923399
4
with persons, living or dead, institutions, beliefs, or
national symbols.
In University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), the Court of Appeals for the Federal Circuit
stated that to succeed on a Section 2(a) false suggestion
of a connection ground, the plaintiff must demonstrate that
the name or equivalent thereof claimed to be appropriated
by another must be unmistakably associated with a
particular personality or “persona” and must point uniquely
to the plaintiff. The Board, in Buffett v. Chi-Chi’s,
Inc., 226 USPQ 428 (TTAB 1985), in accordance with the
principles set forth in Notre Dame, required that a
plaintiff asserting a claim of a false suggestion of a
connection demonstrate 1) that the defendant’s mark is the
same or a close approximation of plaintiff’s previously
used name or identity; 2) that the mark would be recognized
as such; 3) that the plaintiff is not connected with the
activities performed by the defendant under the mark; and
4) that the plaintiff’s name or identity is of sufficient
fame or reputation that when the defendant’s mark is used
on its goods or services, a connection with the plaintiff
would be presumed. This Buffett test has been followed by
the Board in subsequent decisions. See In re Urbano, 51
Serial Nos. 75923398 and 75923399
5
USPQ2d 1776 (TTAB 1999); In re Sloppy Joe's International
Inc., 43 USPQ2d 1350 (TTAB 1997); In re North American Free
Trade Association, 43 USPQ2d 1282 (TTAB 1997); In re
Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990).
In the context of this ex parte proceeding, it is the
Office which must establish the elements relating to the
"plaintiff's" name, which is the name with which the
Examining Attorney asserts the applicant's (defendant's)
mark falsely suggests a connection. Because we find that
the Office has not established the fourth factor set forth
in Buffett, namely, that the name of the church is of
sufficient fame or reputation to consumers in the United
States that, when applicant's mark is used on its goods, a
connection between the marks and the church would be
presumed, we reverse the refusals of registration.1
In support of his position that the name of the church
is of sufficient fame or reputation to consumers in the
United States, the Examining Attorney has submitted
excerpts of articles taken from the NEXIS database, as well
as materials from tour guides and from the Internet. (It
1 The dissent makes the comment that "it appears that applicant
has conceded the fame of the church" because of a comment made by
applicant in its request for reconsideration. We do not find any
such concession by applicant. For example, in its appeal brief
applicant states that "it is debatable whether the Examiner has
established fame." p. 5.
Serial Nos. 75923398 and 75923399
6
should be noted that the actual name of the church in Rome
is Trinità dei Monti or Santa Trinità dei Monti, not
Trinità de' Monti as shown in applicant's marks, although
we do not regard this minor difference as sufficient to
differentiate applicant's mark from the name of the
church.)
Although a number of articles from the NEXIS database
have been submitted, the references to the Trinità dei
Monti church appear to be relatively tangential. Most of
the articles are about, or feature, the Spanish Steps,
which are clearly a famous tourist attraction in Rome, and
the church is mentioned only because of its geographic
proximity to the steps, namely, that it is located at the
top of the steps. For example:
Who knows how many tourists have
followed the path of Audrey Hepburn as
she skipped down the Spanish Steps in
Rome and into the best holiday of her
life? These steps, presided over by
the Trinita dei Monti Church, are one
of the icons, along with the Trevi
Fountain and the Pantheon, of the
Tridente, a triangular area in central
Rome recently declared an open—air
museum by city officials.
"The New York Times," June 3, 2001
***
Headline: Sightseeing in running shoes
Morning treks through streets of Rome
make for memorable adventure
Body: We then venture to the Spanish
Steps, which were built in 1725 to
Serial Nos. 75923398 and 75923399
7
accommodate the many visitors to Piazza
di Spagna. At the top of the stairs is
the church Trinita dei Monti. We enjoy
watching the numerous artists painting
and sketching the surrounding views of
apartments, scattered churches and, in
the distance, snow-capped mountains.
"The Spokesman-Review" (Spokane, WA),
May 27, 2001
***
Best Western has a property in Rome
called Hotel Canada. It is a three-
star hotel with a family suite that
accommodates all four of you. It
includes a full breakfast.
As far as location, it sounds to me
like it's well placed. I'm told it's a
half mile from the Spanish Steps, the
steps that lead to the church of
Trinita dei Monti (Hint: get there
first thing in the morning before it
fills up with step-sitters); 500 meters
from the Piazza della Repubblica; 900
meters from Via Veneto....
"Chicago Daily Herald," December 31,
2000
***
...The Spanish Steps rise from the
Piazza Di Spagna and lead up to the
Church; [sic] of Trinita Dei Monti,
which dates to the 15th century. The
steps and the; [sic] piazza are a
popular gathering spot for tourists and
residents alike. The; [sic] boat-
shaped Barcaccia Fountain, by Bernini,
is at the foot of the steps.
"Pittsburgh Post-Gazette," August 13,
2000
***
Serial Nos. 75923398 and 75923399
8
Graphic: WHEN IN ROME: Throngs of
people gather at Spanish Steps at
Piazza di Spagna in Rome, Italy.
Behind is the church of Trinita dei
Monti.
"Ventura County Star," August 22, 1999
***
Meanwhile, how welcome are visitors
supposed to feel here in Rome, where
eating is now a minor crime on the
famed Spanish Steps, the gathering
place for tourists and natives adjacent
to Piazza di Spagna?
City Hall and a private sponsor
recently spent nearly $1 million to
weed, wash and repair the grand
staircase, which rises steeply from the
piazza to the twin-spired church of the
Trinita dei Monti. Tourists, after
having been kept away by fencing for
seven months, were again free to
photograph themselves against a
backdrop that is as intimate a part of
the city's image as the Colosseum or
the Trevi Fountain. Balloons rose in
the clear winter air, and a band played
"Arrivederci Roma" as the steps
reopened.
"The Washington Post," December 30,
1995
***
Headline: Big leap for Spanish Steps
Body: "This is a positive symbol of
Rome but it risks becoming a negative
symbol," he told a news conference.
"The steps are going to become an open-
air salon once again."
The Spanish Steps, built between 1723
and 1726, are a masterpiece of Baroque
architecture linking the Piazza di
Spagna square with the church the
Trinita dei Monti.
Serial Nos. 75923398 and 75923399
9
Occupied by trinket sellers and
thousands of tourists, many of them
young backpackers, the terraced flights
provide some of the best views of Rome.
"St. Petersburg Times," May 21, 1995
Even more tangential are references in articles about
quasi-historical events or paintings:
Headline: A Woman Styled Bold: The
Life of Cornelia Connelly
Body: In Rome on July 6, 1945, Pierce
was ordained a priest, and on July 9 he
celebrated his first Mass in the
Trinita dei Monti Convent of the
Religious of the Sacred Heart, where
daughter Adeline was a student, and
Cornelia lived as a quasi-postulant....
"The Catholic World," March 1993
***
Headline: Roman Holiday, 18th Century
Style; exhibition "The Splendor of 18th
Century Rome" co-organized by the
Philadelphia Museum of Art and the
Museum of Fine Arts, Houston
Body: ...The era's enthusiasm for the
antique is everywhere evident, perhaps
most curiously in Charles-Louis
Clerisseau's ink-and-goache drawing,
Ruin Room in the Convent of S. Trinita
dei Monti, Rome (ca. 1766). The proto-
Romanic design is for a monastic cell
(which survives today) whose walls were
to be painted in imitation of an
ancient Roman ruin....
"Art in America," December 1, 2000
***
Other details of Baroque life are
depicted in engravings, among them
designs for furniture and chariots,
views of palaces and piazzas, and
spectacular fireworks displays like the
one at Trinita de' Monti, the French
Serial Nos. 75923398 and 75923399
10
national church in Rome, on April 20,
1687.
"The New York Times," April 9, 19992
The tourist guide books, too, while referring to the
church, do not indicate that it is a famous tourist site.
Thus, the page in the "Eyewitness Travel Guides—Italy" is
headed "Street-by-Street: Piazza di Spagna," and, while it
lists a variety of places that can be found near the
piazza, the only one which is a "star sight" is the "Piazza
di Spagna and the Spanish Steps." Trinità di Monti is
listed along with Babington's Tea Rooms ("founded by two
English spinsters in 1896, still serves English teas") and
The Collegio di Propaganda Fide. Further, the featured
write-up, comprising approximately 4 column inches, is
headed "Piazza di Spagna and the Spanish Steps," and it is
only in the third paragraph that there is a single mention
of the church: "The steps were built in the 1720's to link
2 The dissent includes an excerpt from a Christian Science
Monitor article which allegedly demonstrates the fame of the
church. The article is apparently a personal statement by the
author, and appears to discuss the particular sights from the
“modest” Pensione Pfister. The paragraph which is quoted in part
in the dissent, states, in full, “The church of the Trinita dei
Monti, the Spanish Steps, the fountain in the Piazza di Spagna,
the palm trees, the soft late afternoon sunlight shining on the
ocher-colored buildings--these memories of my first visit to Rome
will remain with me always.” We do not regard this listing--
which includes palm trees as well as the church--as indicating
that the church is regarded, even by the author, as a famous
sight in Rome.
Serial Nos. 75923398 and 75923399
11
the square with the French church of Trinità dei Monti
above."
In the "Lonely Planet" guide to Western Europe, again
the reference to the church is tangential to the Spanish
Steps. The entry is entitled "Piazza di Spagna & Spanish
Steps", with the title in bold, and the following text:
This piazza, church and famous
staircase (Scalinata della Trinità dei
Monti) have long provided a major
gathering place for foreigners. Built
with a legacy from the French in 1725,
but named after the Spanish Embassy to
the Holy See, the steps lead to the
church of Trinità dei Monti, which was
built by the French.
In the 18th century the most beautiful
men and women of Italy gathered there,
waiting to be chosen as artists'
models. To the right as you face the
steps is the house where Keats spent
the last three months of his life, and
where he died in 1821. In the piazza
is the boat-shaped fountain of the
Barcaccia, believed to be by Pietro
Bernini, father of the famous Gian
Lorenzo. One of Rome's most elegant
shopping streets, Via Condotti, runs
off the piazza towards Via del Corso.
(emphasis in original)
The third tour book excerpt comes from Fodor's Europe
2001. It is the Spanish Steps which is listed as the
attraction, and the reference to the church is found only
in the additional text:
Scalinata di Trinità dei Monti (Spanish
Steps). The 200-year-old stairway got
Serial Nos. 75923398 and 75923399
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its nickname from the nearby Spanish
Embassy to the Holy See (the Vatican),
though it was built with French funds
in 1723, as the approach to the French
church of Trinità dei Monti at the top
of the steps. Rome's classic picture-
postcard view is even more lovely when
the steps are banked with blooming
azaleas, from mid-April to mid-May.
(emphasis in original)
The Examining Attorney has also submitted various
pages taken from Internet websites. Two of them refer to
religious topics. The first, an article entitled Mater
Admirabilis, is from the website of Woodlands Academy of
the Sacred Heart in Lake Forest, Illinois. The article
states that "Trinita dei Monti, the monastery which is home
to Mater Admirabilis, was founded in the fifteenth
century," and that it "has become a center for the
Religious of the Sacred Heart and all others visiting the
shrine of Mater Admirabilis." The article goes on to tell
the story of the fresco of Mater Admirabilis, which story
took place in the 1840's.
Another article regarding religious history comes from
the website of New Advent Catholic Encyclopedia. The
article is about "Minimi," which are the members of the
religious order founded by St. Francis of Paola. The
article provides an extensive discussion about the history
of Minimi. About halfway through the three-page article,
Serial Nos. 75923398 and 75923399
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there is a brief reference to Trinita dei Monti, namely,
"In 1495 Charles VIII of France founded in Rome the convent
of Trinita dei Monti, which, by Bull of Innocent X (1645),
was exclusively reserved to the French fathers."
An excerpt from http://myweb.worldnet.net has the
headline "Trinita dei Monti, Rome, A timeless place
confronts the 21st Century." It discusses the "famous
Piazza di Spagna," and states that Roman youth "sit on the
staircase which leads to the Pincian hill. From this
majestic summit, the edifice of Trinita dei Monti appears
to perpetually contemplate the Eternal City." The article
goes on to discuss the history of the church, explaining
that it was founded by Charles VIII of France in 1495 as a
convent for French Minim monks, and that it was an
important institution of pontifical Rome:
After the Revolution, the Minim monks,
no longer able to ensure a significant
presence, were replaced by the
Religious of the Sacred Heart who
created a school intended to spread the
influence of the French culture among
the elite of Italy. To this day, they
still occupy this prestigious house.
A submission from the website www.nerone.cc states
that it was prepared for Nerone the Insider's Guide to
Rome. Entitled "Walking in the Vicinity of Santa Trinita'
Dei Monti," it first discusses the Convent of SS Trinita
Serial Nos. 75923398 and 75923399
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dei Monti, "up some steps to the left of the main entrance
to the church." "The convent of Santa Trinita dei Monti
The Convent of Santa Trinita dei Monti [repetition in
original] was originally established as a monastery for a
minor order founded by Saint Francis di Paola." The
article discusses the frescoes and other decorations in the
convent. It then talks about the sights as one leaves the
convent and goes past the church into the piazza by the
Hassler Hotel.
The website for www.letsgo.com lists various sights in
Rome. Under the general listing of "Piazza Di Spagna and
the Corso" are, inter alia, "Spanish Steps," and below the
listing of "Near the Steps" are the Church of Santa
Trinita' Dei Monti and Villa Mèdici. The specific listing
for the Church contains two long paragraphs about the
church, including its history and paintings.
The website for BBC News, http://news.bbc.co.uk, has
an article dated June 12, 2002 reporting that "the public
are being allowed rare access to a 16th Century convent full
of Renaissance frescoes at the top of Rome's Spanish Steps.
The exhibition—which opened on Wednesday—at Trinita dei
Monti also features hundreds of paintings, drawings and
ancient manuscripts."
Serial Nos. 75923398 and 75923399
15
Finally, the website for "MSN Learning & Research",
http://Encarta.msn.com, has a picture entitled "Piazza di
Spagna, Rome," with the caption, "Tourists in Rome gather
on the Spanish Steps. Built in the 18th century, these
steps lead up to the Trinità dei Monti church, constructed
in the 15th century in the Piazza di Spagna.
After a thorough review of the evidence, we find that
the Office has not established that Trinità dei Monti has
sufficient fame or reputation to consumers in the United
States that they would assume a connection between the
church and applicant's identified goods sold under the
applied-for marks. Although there is clearly a church and
a convent in Rome which is referred to as "Trinità dei
Monti," on this record we cannot conclude that either the
church or convent is a well-known tourist attraction or
that it has well-known historical significance, such that
consumers in the United States would be aware of the name.3
3 The Examining Attorney states that "the Church is enriched
with works of art by some of the great artists of that century
including Michelangelo." Brief, pp 3-4. However, in our review
of the record we have not found any reference to works by
Michelangelo in the church. Rather, the listing in
myweb.worldnet.net states "the great artists of the century of
Michelangelo enriched the church and the convent" (without naming
any artists). None of the tourist books refers to the works of
any particular artists. The dissent comments that "the famous
frescoes of pupils of Michelangelo and Raphael draw many tourists
to the church." However, the BBC internet excerpt indicates that
the frescoes in the convent are generally not available for
viewing by tourists. The excerpt does state that "the church
Serial Nos. 75923398 and 75923399
16
The Examining Attorney has obviously done a thorough search
in his quest for evidence. However, of the 21 articles
from NEXIS that he submitted, not one suggests that the
church itself is famous. In In re Societe Generale des
Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,
1451 (Fed. Cir. 1987), the Court commented that "It is
indeed remarkable to see the thoroughness with which NEXIS
can regurgitate a placename casually mentioned in the
news." The same can be said in the present situation. In
the NEXIS excerpts which the Examining Attorney has made of
record, the references to the church are not the focus of
the articles. In general, the church is mentioned simply
because it is located at the top of the Spanish Steps.
With respect to the Internet evidence, although the
Internet is a wonderful tool for retrieving information,
the simple fact that such information can be retrieved does
not mean that the information would be known by the general
itself is already famous for its frescoes," but these assertedly
famous frescoes are by Naldini, Perin del Vaga and Zuccari. We
think there is at least some question as to whether any
significant number of American consumers would be aware of these
artists and their frescoes, let alone whether they would know of
the name of the church in which they are located.
The dissent also states that "the fact that this [Trinità dei
Monti] is the French national church in Italy and is known as the
Church of the Kings of France undoubtedly increases the renown of
this church." However, it is not clear how the fact that Trinità
dei Monti was the French national church in Italy and the church
of the kings of France more than 200 hundred years ago
demonstrates the renown of the church in the United States today.
Serial Nos. 75923398 and 75923399
17
public in the United States. We note, in this connection,
that the website http://myweb.worldnet.net appears to be a
foreign source: the word "centre" uses the British
spelling, and the French word "suite" is used rather than
the word "continue" which is found on most U.S. websites.
Similarly, we have no information about the Nerone
Insider's Guide to Rome, except we note that the website
address is a foreign one, as is the website for the BBC.
It is not clear to what extent these websites are directed
to consumers in the United States, or the exposure such
consumers would have to them.
Accordingly, we find that the Office has not met its
burden of proving that the Trinità dei Monti church is of
sufficient fame or reputation to consumers in the United
States that a connection between applicant's marks and the
church would be presumed.4 In view of this finding, we need
4 The dissent seems to suggest that because the Spanish Steps
are famous, and these steps lead to the Trinità dei Monti church,
the church would also have the reputation or renown necessary to
support a finding of a false suggestion of a connection. It
should be noted, however, that the Spanish Steps and the church
are separate structures; the Spanish Steps do not lead only to
the church, such that they would be recognized as part of the
same complex. As a result, the fact that the Spanish Steps are
famous does not necessarily result in the church located at the
top of the steps also being famous. Moreover, although the
official name of the Spanish Steps is "Scalinata della Trinità
dei Monti," it is not clear from the record that consumers in the
United States, including Italian-speaking consumers, would
generally be aware of the official or formal name. The bulk of
the references in the record refer to the steps as simply the
Spanish Steps.
Serial Nos. 75923398 and 75923399
18
not discuss the other Buffett factors.5
As a final note, we recognize that because these
applications are not based on use in commerce, applicant
has not submitted any specimens of use. Should the
Examining Attorney, upon review of such specimens,
determine that the applied-for marks are descriptive of the
goods, the Examining Attorney would be free to raise a
merely descriptive refusal under Section 2(e)(1) at that
point. Moreover, our decision herein is necessarily based
on the record before us; we might reach a different result
on the ground of a false suggestion of a connection on a
different record, such as might be adduced in an inter
partes proceeding.
Decision: The refusals of registration are reversed.
5 The dissent makes the comment that the majority appears to
require the Examining Attorney to prove elements not previously
required, and suggests that it is the majority's position that
the Examining Attorney must demonstrate that consumers would
expect the church to sell or sponsor goods of the nature produced
by applicant. We reiterate that the only factor which we have
discussed in the majority opinion is whether the Examining
Attorney has shown that the church is of sufficient fame or
reputation in this country that a connection between the marks
and the church would be presumed. This requirement is not a new
element, but was first set forth by the Board almost twenty years
ago in the Buffett decision, and has been reiterated in numerous
decisions since.
Serial Nos. 75923398 and 75923399
19
Simms, Administrative Trademark Judge, dissenting:
I dissent from the conclusion of the majority that the
relevant public would not consider applicant’s marks as
falsely suggesting a connection with the church and convent
called Trinità dei Monti or Trinità de’ Monti. The record
amply shows that these words in applicant’s marks point
uniquely to and are unmistakably associated with this
famous historical church and convent (former monastery) in
Rome.
In the seminal case of University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), the Court interpreted the
language—-“false suggestion of a connection”--of Section
2(a) and set forth some principles for determining whether
a mark falsely suggests a connection within the meaning of
that section of the Act. To begin with, the Court
indicated that the drafters of the Trademark Act were
concerned with protecting the name of an individual or
institution, which may not have been used as a technical
trademark or trade name. This section embraced concepts of
the right of privacy, according to the Court. The Court
stated that the legislative history indicated that Section
2(a) was intended to preclude the registration of a mark
which conflicted with another’s rights, even though not
Serial Nos. 75923398 and 75923399
20
founded on likelihood of confusion. There might be no
likelihood of confusion as the result of sponsorship or
endorsement, yet the right of privacy or the related right
of publicity might be violated under Section 2(a). This
right includes the right to control the use of one’s
identity, the Court stated.
In determining whether a mark falsely suggests a
connection with a person or institution, the Court stated,
217 USPQ at 509, that “the initial and critical requirement
is that the name (or an equivalent thereof) claimed to be
appropriated by another must be unmistakably associated
with a particular personality or ‘persona.’” The asserted
mark must point uniquely to the aggrieved person or
institution. In the Notre Dame case, the Court concluded
that this name served to identify a sacred religious
figure, the names of various churches, as well as the
University. The Court noted, therefore, at 217 USPQ 509:
This conclusion [of no false suggestion because
the mark does not point uniquely to one
institution] could be changed if the evidence
showed that [applicant] intended to identify the
University, as the University argues. Evidence
of such intent would be highly persuasive that
the public will make the intended false
association. The defense that the result
intended was not achieved would be hollow indeed.
Serial Nos. 75923398 and 75923399
21
There can be no doubt that the words Trinità dei
Monti identify a church and convent in Rome. First,
the fact that applicant’s marks (shown below) include
the word “de’” is insignificant because this word is
an abbreviation of “dei,” which means “of the.”6 The
use of the apostrophe demonstrates a contraction of
the word “dei.”
6 Cassell’s Italian Dictionary (1967).
Serial Nos. 75923398 and 75923399
22
Second, while applicant has noted that other places
bear this name, a close examination of this record
indicates that these other places are named after the
church of Trinità dei Monti because of their close
proximity to that church. For example, the Spanish Steps,
which the majority notes is a famous tourist spot in Rome,
is called Scalinata della Trinità dei Monti in Italian.7
This Italian name is literally translated as “Staircase (or
Flight of steps) of the Trinity of the Mountains” or
“Staircase of the Trinità dei Monti.”8 In other words, the
famous Spanish Steps are named in Italian after the church
at the top of those steps to which they lead.9 Indeed, the
Steps were built, according to material of record, to
provide access to that church. See the photo below from
this record, showing that the church of Trinità dei Monti
towers over the Spanish Steps. Applicant’s argument that
the public could associate Trinità dei Monti with the
Spanish Steps as well as other places, therefore, has no
merit. And to the extent that the not-insignificant number
of Italian-speaking people in this country know the Italian
name for the famous Spanish Steps, this awareness increases
7 The word “della” also means “of the”. Id.
8 Id.
9 Applicant’s attorney notes that the nickname of this staircase
is the “Spanish Steps” but that the formal name is “Scalinata
della Trinità dei Monti.”
Serial Nos. 75923398 and 75923399
23
the renown of the church after which the Steps are formally
named.
Also, the Piazza della Trinità dei Monti (“Square of
the Trinità dei Monti”) is located next to the church. The
Hotel Trinità dei Monti is located near the church in the
Piazza di Spagna (once called Piazza della Trinità dei
Monti) at the foot of the Spanish Steps, and the two
pilgrimage houses are undoubtedly located nearby as well.
Serial Nos. 75923398 and 75923399
24
In this regard, it is not uncommon for hotels and other
places of lodging to be named after nearby tourist
attractions. For example, a hotel located near the Eiffel
Tower in Paris may well include the phrase “Tour Eiffel” in
its name. This merely indicates to tourists the location
of the hotel and does not serve to detract from the
association of the name with the attraction. Accordingly,
and contrary to applicant’s argument that these uses of the
phrase Trinità dei Monti detract from the unique name of
the church, all of these usages not only refer to the
nearby church but also tend to popularize that institution.
This is especially the case with respect to the Spanish
Steps, itself bearing an Italian name after the church
Trinità dei Monti. Therefore, unlike the Notre Dame case,
where the words “Notre Dame” were not solely associated
with the University of Notre Dame, here there is no
evidence to suggest that Trinità dei Monti refers to
anything other than the famous historical church in Rome
that has existed for nearly 500 years. Except for these
nearby places (Staircase, Piazza, hotel and pilgrimage
houses), applicant has not pointed to any place or
institution named Trinità dei Monti.
Serial Nos. 75923398 and 75923399
25
Further, applicant contends that, because its marks
include other elements, such as a crest design, towers in
crown-like form and the letters TDM, applicant’s marks are
not the same name as the institution or church Trinità dei
Monti. First, it is clear that in one of applicant’s
marks, the words Trinità de’ Monti predominate. In the
other, the letters TDM have obvious reference to Trinità
dei Monti, and would readily be perceived as an
abbreviation for Trinità dei Monti. Moreover, I fully
agree with the Examining Attorney that more weight should
be given to the literal portion of the marks (Trinità dei
Monti) because that phrase is more likely to be impressed
on a purchaser’s memory and be used in calling for or
recommending the goods sold under these marks.
The Court in the Notre Dame case also noted that an
applicant’s intent in identifying the person or institution
would be highly persuasive that the public will make the
intended false suggestion. Here, there is absolutely no
indication that applicant independently came up with this
arbitrary name on its own for its goods. This name points
uniquely to and is unmistakably associated with the church.
As the Court stated, “The defense that the result intended
was not achieved would be hollow indeed.” Applicant’s
Serial Nos. 75923398 and 75923399
26
argument that these words in its marks do not solely point
to the church ring hollow indeed.
The majority concludes that the record does not
demonstrate that Trinità dei Monti “has sufficient fame or
reputation to consumers in the United States.” The record
belies this conclusion. The record includes 21
representative excerpts from the Nexis database, including
from such publications as The New York Times, The
Washington Post, USA Today, Chicago Tribune, Baltimore Sun,
Christian Science Monitor; three travel guides including
Fodor’s 2001-Europe, the Conde Nast Traveler travel
magazine and eight Web sites. Some of the excerpts
indicate the fame of this church. For example:
Who knows how many tourists have followed
the path of Audrey Hepburn as she skipped
down the Spanish Steps in Rome and into the
best holiday of her life? These steps,
presided over by the Trinita dei Monti
Church, are one of the icons, along with the
Trevi Fountain and the Pantheon, of the
Tridente, a triangular area in central Rome
recently declared an open—air museum by city
officials.
The New York Times, June 3, 2001
* * *
… And another imperial-Roman replica,
fake hieroglyphics and all, faces the
Church of Trinita dei Monti atop the
Spanish Steps. It forms part of a
celebrated view that like few others
conveys the essence of Rome.
Serial Nos. 75923398 and 75923399
27
The New York Times, January 14, 1996
* * *
City Hall and a private sponsor
recently spent nearly $1 million to
weed, wash and repair the grand
staircase, which rises steeply from the
piazza to the twin-spired church of the
Trinita dei Monti. Tourists, after
having been kept away by fencing for
seven months, were again free to
photograph themselves against a
backdrop that is as intimate a part of
the city's image as the Colosseum or
the Trevi Fountain. Balloons rose in
the clear winter air, and a band played
"Arrivederci Roma" as the steps
reopened.
The Washington Post, December 30, 1995
* * *
Let’s just assume, as millions of tourists
do every year, that the Spanish Steps are
the heart of Rome, and not just an 18th-
Century stairwell of spectacular grace and
Baroque beauty, leading from the Piazza di
Spagna up to the convent at Trinita dei
Monti.
Chicago Tribune, July 30, 1995
* * *
The church of the Trinita dei Monti,
the Spanish Steps, the fountain in the
Piazza di Spagna…these memories of my
first visit to Rome will remain with me
always.
The Christian Science Monitor, June 2, 1992
* * *
The steps, overlooking the central Piazza di
Spagna, rise to the Trinita dei Monti
church, where tourists for centuries have
enjoyed the views of Rome.
Serial Nos. 75923398 and 75923399
28
In recent years the Spanish Steps have
become a popular meeting place for the
city’s youngsters and backpackers, some of
whom have used them as an open-air dormitory
The Orange County Register, November 12,
1995
* * *
This piazza [Piazza di Spagna], church and
famous staircase (Scalinata della Trinita
dei Monti) have long provided a major
gathering place for foreigners.
Lonely Planet-Western Europe (4th ed.)
* * *
Scalinata di Trinitá dei Monti (Spanish
Steps). The 200-year old stairway got
its nickname from the nearby Spanish
Embassy to the Holy See (the Vatican),
though it was built with French funds
in 1723, as the approach to the French
church of Trinità dei Monti at the top
of the steps. Rome’s classic picture-
postcard view is even more lovely when
the steps are banked with blooming
azaleas, from mid-April to mid-May.
(Emphasis in original.)
Fodor’s 2001—Europe, p. 654.
* * *
Built on the still visible vestiges of
Ancient Rome, Trinita dei Monti has
gained enormous prestige through its
five-hundred year history. It was in
1495 that the king of France, Charles
VIII – acquired the land and founded a
convent of French Minim monks. The
monastery was built at the end of the
Italian Renaissance, thanks to the
generosity of the kings of France, who
involved other major patrons: princes,
cardinals and French ambassadors.
Under such prestigious protection,
Serial Nos. 75923398 and 75923399
29
Trinita dei Monti quickly became one of
the most important institutions of
pontifical Rome. While the great
artists of the century of Michelangelo
enriched the church and the convent
with major pictorial works, the monks
acquired an undeniable cultural
influence… After the Revolution, the
Minim monks, no longer able to ensure a
significant presence, were replaced by
the Religious of the Sacred Heart who
created a school intended to spread the
influence of the French culture among
the elite of Italy. To this day, they
still occupy this prestigious house.
myweb.worldnet.net
* * *
Trinita dei Monti’s famous cupolas overlook
the steps [text underneath photograph of
Trinita dei Monti church]. The public are
being allowed rare access to a 16th Century
convent full of Renaissance frescoes at the
top of Rome’s Spanish Steps. The
exhibition-which opened on Wednesday-at
Trinita dei Monti also features hundreds of
paintings, drawings and ancient manuscripts…
The public can tour the church, the cloister
and the refectory, which contain many
beautifully decorated murals. The complex
was started in 1502 by King Louis XII of
France… The church itself is already famous
for its frescoes…
news.bbc.co.uk
* * *
Famous all over the world as the Spanish
steps… The idea to create it was caused by
the necessity to make an appropriate access
to the French church of Trinita dei Monti.
www.italycyberguide.com
Moreover, it appears that applicant has conceded the
fame of the church. In its Request for Reconsideration, 6,
Serial Nos. 75923398 and 75923399
30
applicant states, “While the Examiner has provided
information indicating that the church is famous, there is
no evidence that the average American consumer would expect
fine household goods… to emanate from a church.”10
Applicant then went on to argue that there was no false
suggestion under the law because, among other things,
applicant’s marks included other elements rather than just
the name of the church, and that the phrase “Trinità dei
Monti” was not unmistakably associated or did not point
uniquely to the church. The fact that this church is the
French national church in Italy and is known as the Church
of the Kings of France undoubtedly increases the renown of
this church.
The Examining Attorney has represented, and applicant
has not refuted, that Rome is the third most popular
foreign tourist destination for U.S. travelers. While the
majority seems to minimize the importance of the mentions
of this church, finding references to it to be sometimes
“relatively tangential,” it is often mentioned in
conjunction with the admittedly famous Spanish Steps (known
by the Italian name “Scalinata della Trinità dei Monti”),
which is a well-known gathering place in Rome for natives
10 In its brief, 5, applicant states that “in this case [it] is
debatable whether the Examiner has established fame….”
Serial Nos. 75923398 and 75923399
31
and visitors alike. As shown in the photograph above, it
is difficult to believe that, while the Spanish Steps are
one of the prime tourist spots in Rome, the church which
towers above the Steps, to which the Steps lead and after
which they are formally named, is not also well-known.
Also, as indicated in the excerpts, the famous frescoes of
pupils of Michelangelo and Raphael draw many tourists to
the church. In my view, the record demonstrates a prima
facie case that the church is sufficiently famous that a
false connection with that church will be presumed by
applicant’s marks on merchandise bearing the name Trinità
De’ Monti.
The Examining Attorney’s position that it is not
uncommon for institutions or other organizations to license
their names for promotional merchandise is well taken. In
this case, the applications are based upon applicant’s
intention to use the marks set forth therein. We do not
yet know what images, if any, applicant may place on its
serving trays, vases, jugs, bowls, plates, cups, saucers,
coasters, etc. However, in view of the nature of the marks
applicant seeks to register, and the fact that there is no
other church or institution in the world bearing the words
Trinità dei Monti, at least as reflected by this record, I
believe that one may permissibly assume that images of the
Serial Nos. 75923398 and 75923399
32
church may appear on these goods. In any event, consumers
are likely to presume a false connection between
applicant’s goods and the church because of the name
Trinità De’ Monti on applicant’s goods.
In this regard, the majority appears to require the
Examining Attorney to prove elements not previously
required by judicial or TTAB authority. The majority
initially notes that, under existing Board precedent, the
Office must establish four elements, including that
applicant’s mark is the same as or a close approximation of
the aggrieved person’s or institution’s identity, and that
the name or identity is of sufficient fame or reputation
that when applicant’s mark is used on its goods, a
connection with the aggrieved person or entity would be
presumed. If it is the majority’s position that, in
addition, the Examining Attorney has failed to demonstrate
that consumers in this country would expect the church to
sell or sponsor goods of the nature produced by applicant,
I disagree. This is not a requirement of the claim being
asserted by the Examining Attorney as a ground for refusal
here. The Examining Attorney has refused registration on
the basis that applicant’s mark, when used, will falsely
suggest a connection with the church in Rome that operates
under the name Trinità dei Monti. Case law is now clear
Serial Nos. 75923398 and 75923399
33
that Section 2(a) embraces concepts of the right of privacy
(and publicity) which may be violated even in the absence
of likelihood of confusion. As the Court observed in Notre
Dame, 217 USPQ at 509, “There may be no likelihood of such
confusion as to the source of goods even under a theory of
‘sponsorship’ or ‘endorsement,’ and, nevertheless, one’s
right of privacy, or the related right of publicity, may be
violated.” By requiring more than the case law suggests
and by requiring the Examining Attorney to demonstrate
something akin to likelihood of confusion (that American
consumers would think that this Italian church would sell
or sponsor goods similar to applicant’s) when the ground is
false suggestion under Section 2(a), if that is what the
majority would require, I believe this incorrectly places
an unwarranted burden on the Office. Under the false
suggestion provision of Section 2(a), the church is
entitled to protect its right of privacy, its right of
publicity and the right to control the use of its identity,
which could include any right to royalties or fees for the
use of its name.11 As the Court indicated, the critical
11 While some of the evidence seems to indicate that private
companies, rather than the churches themselves, sell plates and
other souvenir objects, it is not at all clear that the churches
may not in fact receive some remuneration from the sale of these
objects. It is probably unlikely that a church would engage in
the manufacture of such goods on its own, but would more likely
have such goods made for it.
Serial Nos. 75923398 and 75923399
34
requirement under this part of Section 2(a) is that the
asserted word or words in question be unmistakably
associated with or point uniquely to a particular person or
institution. The Examining Attorney has prima facie
established this element, and applicant has not rebutted
it.
In sum, purchasers are likely to believe that the
religious institution Trinità dei Monti, of which
applicant’s goods bear the name, is in some way associated
with, sponsors, authorizes or licenses these goods, or
that, even aside from these considerations of sponsorship
or endorsement, the church’s right of privacy and the
related right to control its own identity has been
violated, contrary to the provisions of Section 2(a). This
is especially the case because Trinità dei Monti is an
active church and convent, not merely a famous historical
landmark. Because I believe that the name Trinità dei
Monti in applicant’s marks will falsely suggest a
connection with this uniquely named church in Rome, I would
affirm the refusals under Section 2(a) of the Act.