Portofino Sun Center Corp.v.Brigata Int’l., Inc.

Trademark Trial and Appeal Board

Feb 27, 2001

No. 91111788 (T.T.A.B. Feb. 27, 2001)

2/27/01
Paper No. 16
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Portofino Sun Center Corp.
v.
Brigata International, Inc.
_____
Opposition No. 111,788
to application Serial No. 75/318,322
filed on July 2, 1997
_____
Jay A. Bondell of Schweitzer Cornman Gross & Bondell LLP for
Portofino Sun Center Corp.
Joseph L. Strabala for Brigata International, Inc.
______
Before Cissel, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 2, 1997, applicant filed the above-referenced
application to register the mark “PORTOFINO” on the
Principal Register for “clothing; namely, men’s shirts,
jackets, suits, pants, blazers, shorts, t-shirts, under
garments, sleepwear, shoes, and socks,” in Class 25. The
basis for filing the application was applicant’s assertion
that it possessed a bona fide intention to use the mark in
commerce in connection with these goods.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,788
2
Following publication of the mark in accordance with
Section 12(a) of the Lanham Act, a timely Notice of
Opposition was filed by Portofino Sun Center Corp. on August
31, 1998. As grounds for opposition, opposer asserted that
since long prior to the filing date of the opposed
application, opposer has been engaged in the business of
providing artificial sun tanning services and related goods
and services; that opposer owns United States Registration
No. 1,527,489 for the mark “PORTOFINO SUN CENTER” and design
for artificial sun tanning services; that in connection with
providing these services, since prior to the filing date of
the opposed application, opposer has offered for sale, sold
and distributed sportswear clothing items, including t-
shirts, bearing the mark “PORTOFINO”; and that applicant’s
mark so resembles opposer’s mark that if applicant were to
use it in connection with the goods specified in the
application, confusion would be likely.
Applicant’s answer to the Notice of Opposition denied
the essential allegations therein.
A trial was conducted in accordance with the Trademark
Rules of Practice. Opposer took the testimony of its senior
vice president, Vittorio Assaf. Applicant did not provide
any testimony or exhibits. Opposer filed a brief with the
Board, but applicant did not. An oral hearing before the
Board was not requested.
Opposition No. 111,788
3
The issues before the Board in this proceeding are
priority and likelihood of confusion. The record clearly
establishes opposer’s priority and that confusion would be
likely if applicant were to use its mark in connection with
the goods set forth in the application.
In order to meet its burden of establishing priority
with respect to clothing in this proceeding, all opposer had
to do was to establish proprietary rights in “PORTOFINO”
before the filing date of the opposed application, July 2,
1997. Miller Brewing Co. v. Anheuser-Bush, Inc. 27 USPQ2d
1711 (TTAB 1983). The uncontroverted testimony of Mr. Assaf
establishes that opposer has used “PORTOFINO” in connection
with both tanning salon services and items of apparel,
including t-shirts, since the mid-1980s.
We thus turn to the issue of whether confusion would be
likely if applicant were to use the mark it seeks to
register in connection with the goods set forth in the
application. In the case of In re E. I. duPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the
predecessor of our primary reviewing court identified the
principal factors to be considered in determining whether
confusion is likely. Chief among these factors are the
similarities between the marks and the relationship between
the goods.
Opposition No. 111,788
4
In the instant case, opposer has used “PORTOFINO” by
itself and as the dominant component of several other marks.
The record shows that opposer has used “PORTOFINO,”
“PORTOFINO SUN CENTER” and “PORTOFINO CASUAL” in connection
with its goods and services. Opposer’s pleaded registered1
mark is shown below.
The mark applicant seeks to register is identical to
one of opposer’s marks and is the dominant component of the
others, so our inquiry must turn to the relatedness of the
goods and services of applicant and opposer in order to
determine if confusion would be likely.
Opposer has used its marks, as noted above, in
connection with its tanning salon services as well as with
items of apparel which have been both sold outright and
given away as promotional items in connection with the
tanning salon services. The record establishes that opposer
has used the same mark applicant seeks to register on the
same goods that are identified in the application, namely,
1 Reg. No. 1,527,489, issued on the Principal Register on Feb.
28, 1989; use since September, 1985 is claimed; “CENTER” is
Opposition No. 111,788
5
t-shirts, as well as on hats, sweat pants and jackets. As
of the time Mr. Assaf’s testimony was taken, opposer had
been using “PORTOFINO” on clothing items and in connection
with its services for about fifteen years.
Just as the goods identified in the application would
be sold to ordinary consumers through the usual channels of
trade for such products, opposer’s goods and services are
also provided to ordinary consumers at the retail level.
The fact that opposer offers a variety of goods, including
apparel, at its tanning salon locations shows that consumers
have a basis upon which to expect such products to be sold
in this way.
The marks of the parties are the same and/or
substantially similar and the goods are in part identical
and otherwise closely related. Plainly, if applicant’s t-
shirts bearing the mark “PORTOFINO” were to be sold at any
of the places where t-shirts are normally available,
consumers familiar with opposer’s use of the same mark on t-
shirts and in connection with tanning salon services would
be likely to assume, mistakenly, as it would turn out, that
applicant’s shirts and opposer's shirts emanate from the
same source, or that the makers or sellers of them are in
some way affiliated with each other.
disclaimed; affidavits under Sections 8 and 15 received and
acknowledged.
Opposition No. 111,788
6
The use by the parties of identical and/or
substantially similar marks in connection with identical
goods would not leave us with any doubt that confusion would
be likely, but even if this were a close case, we would have
to resolve it in favor of opposer as the prior user and
registrant, and against applicant, who, as the second comer,
had a duty to select a mark that is unlikely to cause
confusion with one that is already in use on the same or
related goods or services. Squirrel Brand
Co. v. Green Gables Investment Co., d.b.a. Green Gables Nut
Farms, 223 USPQ 154 (TTAB 1984).
Decision: The opposition is sustained and registration
to applicant is refused.