Joseph Nuzzolo

Trademark Trial and Appeal Board

Jan 19, 2001

No. 75345465 (T.T.A.B. Jan. 19, 2001)

1/19/01
Paper No.
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Joseph Nuzzolo
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Serial No. 75/345,465
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Yate K. Cutliff of Pendorf & Cutliff for Joseph Nuzzolo.
Shaunia P. Wallace, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Sams, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Applicant has appealed from the Examining Attorney’s
refusal to register, on the Supplemental Register, THE
SALVADOR DALI SOCIETY as a service mark for “art appraisal
services, namely, criticism, review, authentication and
valuation in the field of Salvador Dali artwork.”1 The
1 Application Serial No. 75/345,465, filed on the Principal
Register on August 22, 1997 and amended to the Supplemental
Register on October 13, 1998. Applicant has asserted first use
and first use in interstate commerce on March 7, 1997. It is
noted that applicant’s amendment to the Supplemental Register and
the identification of services, his disclaimer of SALVADOR DALI,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/345,465
2
words SALVADOR DALI have been disclaimed. Although the
examination of this application has been somewhat
complicated, registration has been finally refused pursuant
to Section 2(a), 15 U.S.C. 1052(a), on the ground that the
mark falsely suggests a connection with, as stated in the
Examining Attorney’s brief, the artist Salvador Dali; and
pursuant to Section 2(d), 15 U.S.C. 1052(d), on the ground
that applicant’s mark so resembles the mark SALVADOR DALI
MUSEUM, with the word MUSEUM disclaimed, previously
registered for “museum services; educational services,
namely, classes in fine art,”2 as to be likely to cause
confusion or mistake or to deceive.3
Applicant and the Examining Attorney have filed
briefs;4 an oral hearing was not requested.
and his withdrawal of the previously submitted disclaimer of
SOCIETY, all filed on October 13, 1998, had not been entered into
the U.S. Patent and Trademark Office’s data base. That oversight
has now been corrected.
2 Registration No. 1,692,000, issued June 9, 1992; Section 8
affidavit accepted; Section 15 affidavit received. The
registration was originally issued to The Salvador Dali
Foundation, Inc. and subsequently assigned to the Salvador Dali
Museum, Inc.
3 It is noted that the Examining Attorney originally cited three
additional registrations, all for SALVADOR DALI MUSEUM, and all
owned by the Salvador Dali Museum, Inc. Although the Examining
Attorney never formally withdrew these citations, applicant has
during the prosecution of his application and in his appeal brief
treated the Section 2(d) refusal as referring only to
Registration No. 1,692,000, and the Examining Attorney’s brief
makes clear that this is the sole basis for the Section 2(d)
refusal.
4 With his brief applicant submitted certain materials.
Trademark Rule 2.142(d) provides that the record in the
Ser No. 75/345,465
3
We turn first to the refusal pursuant to Section 2(a).
Section 2(a) prohibits, inter alia, the registration of a
mark which consists of or comprises matter which may
falsely suggest a connection with persons, living or dead,
or institutions.
As stated above, in her appeal brief the Examining
Attorney contends that applicant’s mark falsely suggests a
connection with the dead artist Salvador Dali. However, we
note that in the Office action in which the Examining
Attorney first raised the refusal she stated that
applicant’s mark created a false association with “the
registered marks.” Then, in the Office action making this
refusal final, the Examining Attorney stated that
applicant’s mark may falsely suggest a connection with the
marks of the registrant and Salvador Dali. (emphasis
added). In the paragraph explaining this refusal the
Examining Attorney asserted that “the fame of Salvador Dali
and the Salvador Dali Museum is so widely known that one
would associate THE SALVADOR DALI SOCIETY with the SALVADOR
DALI MUSEUM and foundation.” February 2, 2000 Office
action.
application must be complete prior to the filing of the appeal.
Accordingly, these untimely submissions have not been considered.
Ser No. 75/345,465
4
In support of the position taken in the February 2,
2000 Office action that applicant’s mark falsely suggests a
connection with the registrant as the Salvador Dali
Foundation or Salvador Dali museum, she submitted various
articles taken from the NEXIS data base about the Salvador
Dali Museum and the Gala-Salvador Dali Foundation.
However, we note that the SALVADOR DALI MUSEUM which the
NEXIS evidence refers to, and which the Examining Attorney
asserts is famous, is located in Fugueras, Spain, while the
registrant’s museum, as shown by the registration data and
the website evidence made of record by the Examining
Attorney, is located in St. Petersburg, Florida. Moreover,
the Gala-Salvador Dali Foundation, according to the NEXIS
evidence, is a Spanish government body that runs the museum
in Spain, while The Salvador Dali Foundation, which
obtained the cited registration, is an Ohio corporation.
In order to prove that a mark falsely suggests a
connection with a person or institution it must be shown
that the mark (or portion of it) points uniquely to that
entity. As the Court explained in University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 703 F.2d
1372, 217 USPQ 505, 598 (Fed. Cir. 1983), “the initial and
critical requirement is that the name (or an equivalent
thereof) claimed to be appropriated by another must be
Ser No. 75/345,465
5
unmistakably associated with a particular personality or
‘persona,’” (finding that NOTRE DAME is a name not solely
associated with the University, but identifies a famous
religious figure and is used in the names of churches
dedicated to Notre Dame).
The Examining Attorney has failed to show that THE
SALVADOR DALI SOCIETY points uniquely to the artist
Salvador Dali. In fact, her own statements raise a
question as to whether THE SALVADOR DALI SOCIETY points to
the artist, the registrant’s museum in Florida, the
registrant’s trademark, or the museum and foundation in
Spain. Based on this record, we cannot find that THE
SALVADOR DALI SOCIETY points uniquely to the artist, or
indeed to any single entity, and therefore the refusal
pursuant to Section 2(a) must be reversed.
This brings us to the refusal under Section 2(d) of
the Act. The Examining Attorney asserts that applicant’s
mark THE SALVADOR DALI SOCIETY for “art appraisal services,
namely, criticism, review, authentication and valuation in
the field of Salvador Dali artwork” is likely to cause
confusion with SALVADOR DALI MUSEUM for “museum services.”5
5 The registration also includes “educational services, namely,
classes in fine art” in its identification. However, because the
Examining Attorney has not discussed these services, we have
assumed that it is applicant’s use of its mark vis-à-vis the use
Ser No. 75/345,465
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In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Each of the
factors may from case to case play a dominant role.
Kellogg Company v. Pack’em Enterprises, Inc., 951 F.2d 330,
21 USPQ2d 1142 (Fed. Cir. 1991).
In this case, the sophistication of the consumers of
applicant’s services, and the care with which such services
are purchased, play a dominant role. Applicant’s services
are art appraisal services (criticism, review,
authentication and valuation) in the field of Salvador Dali
artwork. It is clear from the identification that
applicant appraises works created by, or purported to be
created by, the artist Salvador Dali. The consumers for
these services would typically be people who own art by
Salvador Dali and wish to have it valued, or people who are
interested in purchasing art by Salvador Dali and wish to
have it authenticated. Because of the cost/value of works
by Dali, the bona fides of an appraiser are very important,
and consumers for the appraisal services will be extremely
careful about selecting a person or company to appraise the
of the registered mark for museum services which she believes is
likely to cause confusion.
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art work. They are not likely to find an art appraiser by
simply looking in the yellow pages, but will make their
choice after careful research. Moreover, such consumers
will be knowledgeable about the art world in general and
about the works of Dali in particular. They are likely to
know of the SALVADOR DALI museum in Spain, as well as the
SALVADOR DALI MUSEUM in Florida, and know that they are run
by different entities. They are not likely to assume that
every mark that includes the words SALVADOR DALI indicates
a common source for the services with which the mark is
used, even if the services are related.
Moreover, the only words common to both marks,
SALVADOR DALI, are clearly descriptive of both registrant’s
and applicant’s services, as shown by the fact that the
registered mark was issued pursuant to the provisions of
Section 2(f), and applicant’s identification states that
his services relate to the artwork of Salvador Dali. (He
has also disclaimed these words). On the current record,
the registered mark cannot be considered a strong mark
which enjoys a broad scope of protection.
We recognize that the involved marks are similar, in
that they both contain the words SALVADOR DALI, and the
additional word in the registrant’s mark, MUSEUM, is
generic for its services, while in applicant’s mark the
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word SOCIETY has relatively little source-indicating
significance and the word THE has none. However, for the
reasons discussed above, when the marks are compared in
their entireties, the differences in the marks are
sufficient to avoid the likelihood of confusion.
We would point out that we have made our decision
based on the rather limited record before us in this ex
parte proceeding. On a more extensive record, such as may
be adduced in an inter partes proceeding, we might well
come to a different conclusion.
Decision: The refusals based on Section 2(a) and
Section 2(d) are reversed.